Background
The claimant owns the EU word marks “LA BIOSTHETIQUE PARIS” and “LA BIOSTHETIQUE MARCEL CONTIER” for cosmetics and sells, among other channels, via an online shop. The defendant, established in Denmark, operated a website under a “.de” domain and offered numerous cosmetic items, including 71 products bearing the claimant’s marks. Some were shown as available; many listings lacked product images as well as detailed descriptions and instructions for use. Discounts were visually highlighted and struck-through prices were presented as “RRP”, partly deviating from the manufacturer’s RRP.
The goods had been placed on the market in the EU with the claimant’s consent (exhaustion). However, the claimant considered the specific manner of presentation damaging to the brand’s image and, after an unsuccessful cease-and-desist demand, sought injunctive relief and information. In the appeal on points of law, the dispute was limited to whether the defendant also had to disclose names and addresses of suppliers and other prior owners.
Decision
International jurisdiction: target market rather than server/seat
The BGH confirmed international jurisdiction of German courts under Art. 125(5) EUTMR where the challenged online advertising and offers are directed at consumers or traders in Germany. The decisive factor is therefore where the addressed audience is located (target market), regardless of where the defendant is established, where the server is located, or where the advertised goods are situated. The BGH follows CJEU case law and abandons its earlier approach (“Parfümmarken”).
In “LA BIOSTHETIQUE”, the targeting of Germany was supported, inter alia, by the “.de” domain and the German-language website.
Information claims under Sec. 19 MarkenG: exhausted goods may still qualify as “unlawfully marked”
The BGH also confirmed that “unlawfully marked goods” within the meaning of Sec. 19 MarkenG may include goods for which trade mark rights are exhausted, but whose further marketing the proprietor may oppose for legitimate reasons(here: the challenged presentation/marketing modalities).
Proportionality: no supplier/prior-owner disclosure in an exceptional scenario
Even where an information claim exists in principle, it is excluded under Sec. 19(4) MarkenG if asserting it is disproportionate. The BGH upheld the OLG’s limitation: where (1) the goods are exhausted, (2) the infringement lies solely in the seller’s manner of presentation, and (3) involvement of suppliers/prior owners in that specific infringement is not established, an information request aimed at suppliers/prior owners is regularly disproportionate.
Practical Implications
For trade mark owners and e-commerce operators, the decision highlights two key points:
- Forum & enforcement: If online offers are targeted at Germany, EU trade mark claims can be brought before German courts—even where the seller is based elsewhere in the EU.
- Information & supply chain: Information claims are powerful but not unlimited. If the allegation concerns “only” marketing modalities (e.g., image-damaging presentation) for exhausted goods, reaching into the supply chain may fail on proportionality grounds—especially where there are no indications that upstream actors contributed to the specific infringement.
To the point
- Jurisdiction for infringing online advertising follows the target market (country of the addressed audience), not server/seat.
- The BGH abandons its earlier approach (“Parfümmarken”) in line with CJEU case law.
- “Unlawfully marked goods” may include exhausted goods where legitimate reasons exist against the specific marketing.
- Supplier/prior-owner disclosure may exceptionally be disproportionate where the infringement lies solely in presentation.
- For businesses: targeting and shop presentation shape not only conversion, but also forum risk and enforcement exposure.