By order in Case 4 OB 169/25v, the Austrian Supreme Court (OGH) has referred the following question to the Court of Justice of the European Union for a preliminary ruling: does the use of a registered Austrian trade mark on an Austrian domain name still constitute trade mark infringement if the website in question is blocked to Austrian users by means of geo-blocking?
The background to the proceedings is a dispute between two Austrian cooperages. The claimant is the proprietor of an Austrian word mark, which is used by the defendant both for business activities and as a domain for email addresses. Following the issuance of an interim injunction, the defendant responded by implementing technical geo-blocking (within the meaning of the Geo-blocking Regulation) for Austrian IP addresses. In addition, a clear notice was posted on the website stating that the service was not directed at the Austrian market.
The Supreme Court primarily addressed the legal question, as yet unresolved under EU law, of whether a trademark infringement already existed in view of the indisputable Austrian connection, or whether the technical ‘defence mechanisms’ (geoblocking and disclaimer) were sufficient to justify a content-related exclusion under trademark law. This preliminary ruling thus touches upon the territoriality principle of trade mark law, according to which national trade marks are effective only within the respective state.
For companies with internationally oriented websites, the decision could have significant practical consequences. Should the CJEU follow the OGH and regard the use of an Austrian domain alone as a sufficient domestic connection, trademark owners could in future more easily defend themselves against the use of similar signs on the internet – even if the website is technically inaccessible in the country of protection. Should, on the other hand, it be confirmed that geo-blocking, disclaimers or similar technical measures are sufficient to effectively exclude the content-related connection, this would open up opportunities for companies to restrict online offerings specifically to certain markets and countries.