Two recent CJEU cases, spanning both copyright and trade mark law, show that geo-blocking remains a live issue for businesses that rely on digital borders to manage their intellectual property rights.
What is geo-blocking and why does it matter for IP rights?
Geo-blocking is the practice of restricting or preventing internet users from accessing online content based on their geographic location, typically identified by their IP address. It has become an important tool for IP rights holders and online publishers seeking to make a borderless website work with intellectual property rights that are territorial in scope.
A recent decision of the CJEU concerning Anne Frank’s diary and manuscripts (C‑788/24) provides important guidance on territorial restrictions and copyright-protected content but the debate around geo-blocking is far from over. In a recent Austrian reference (C‑584/26) the CJEU has been asked to consider geo-blocking in the context of trade marks, specifically whether a domain name can infringe a national trade mark where the associated website cannot be accessed in the territory where that trade mark is protected.
Anne Frank’s diary and manuscripts – geo-blocking and online infringement
Earlier this summer the CJEU handed down its judgment in Case C-788/24, providing important guidance on when geo-blocking will defeat a claim of online copyright infringement. The case concerned a scholarly edition of Anne Frank’s diary and manuscripts, published free of charge on the initiative of a Dutch foundation and academy, together with a Belgian association, on a website that used geo-blocking to prevent access from the Netherlands, where the manuscripts remain protected by copyright until 2037. In many countries, including Belgium, those works are in the public domain as the copyright has expired. The Anne Frank Fund, the Dutch rights holder, argued that the site nonetheless infringed its copyright, given that the geo-blocking could be circumvented using a VPN.
The CJEU ruled that a state-of-the-art geo-blocking measure can prevent a finding of ‘communication to the public’ even if it remains technically possible for a determined user to circumvent it using a VPN or similar service. The mere possibility of circumvention does not, in itself, render an otherwise effective measure ineffective. Where a geo-blocking measure is found not to be effective, responsibility for the resulting infringement rests with the person who put the work online, not the provider of the VPN or similar service used to circumvent it.
PAUSCHA trade mark dispute – geo-blocked domain names and national IP rights
The CJEU has been asked to consider the intersection of trade mark territoriality and online commerce: can the use of a domain name infringe a national trade mark where the associated website is geo-blocked from the protected territory and inaccessible to consumers there?
Background
Both parties operate cooperage businesses in Austria. The applicant is the proprietor of two Austrian national trade marks, ‘PAUSCHA’ and ‘KLAUS PAUSCHA’, registered in 2019 and covering wooden barrels and related cooperage goods and services.
After the applicant was granted an interim injunction restraining the use of the sign ‘PAUSCHA’ (or ‘PAUSCHA AUSTRIA’) in Austria, the defendant geo-blocked Austrian IP addresses from its website, and added a German-language disclaimer stating that the site was not intended for the Austrian market, which would be visible to Austrian users who managed to access the website using technical workarounds. The applicant subsequently sought to extend the injunction to effectively prohibit the use of the domain name “pauscha.at” both inside and outside of Austria, as well as the defendant’s use of an email address containing the element “pauscha.at”.
The Austrian Court has asked the CJEU the following question (translated from German):
“Do the principle of territoriality in trade mark law and Article 10(2) and (3) of Directive (EU) 2015/2436 (Trade Mark Directive) preclude a cease-and-desist order issued by a national court prohibiting a defendant based in Austria from using a sign protected as a national trade mark for the applicant, who is also based in Austria, as a domain name with the country code of the country of protection and on the website, even if the website hosted under that domain name is not accessible in the country of protection due to geo-blocking and the website also contains a disclaimer that the offer is not directed at customers in the country of protection?”
What key legal principles of EU trade mark law were identified in the PAUSCHA case?
In referring the question, the Austrian Supreme Court identified several key principles of EU trade mark law, requiring the CJEU to consider how they interact in the context of geo-blocking and online enforcement:
- the territoriality principle: national trade mark protection is, in principle, confined to the territory of registration, so a proprietor cannot generally rely on it for acts occurring, or targeted, outside that territory;
- what counts as ‘use’ of a sign under Article 10(2) and (3) of the Trade Mark Directive (Directive (EU) 2015/2436);
- whether the CJEU’s decision in L’Oréal v eBay (C‑324/09) applies by analogy. In that case, the CJEU held that online advertising infringes a trade mark only where it is directed at consumers in the territory protected by that trade mark. Here, the defendant’s website was geo-blocked from Austria and expressly excluded Austrian customers. If the L’Oréal targeting test applies, that may cast doubt on whether the website was directed at Austrian consumers at all and whether it constitutes use within Austria;
- the relevance of the CJEU’s reasoning in Tradeinn (C‑76/24), which recognises that trade mark protection extends beyond the principle of territoriality to safeguard a mark’s origin, quality, communication, investment and advertising functions, and whether those considerations should apply equally in the converse situation arising on the facts of this case; and
- whether the defendant’s geo-blocking measure is contrary to Article 3(1) and 3 (2) of the Geo-Blocking Regulation (Regulation (EU) 2018/302) which prohibits traders from blocking or limiting a customer’s access to their online interface based on the customer’s nationality, residence or establishment, or falls within the derogation under Article 3(3) where blocking is necessary to comply with a legal requirement under EU or Member State law.
What this means for businesses using geo-blocking
The Anne Frank decision provides important clarity for businesses making copyright-protected content available online. A publisher cannot simply rely on a disclaimer stating that users in protected territories are not intended to access the content.
Although the assessment of whether geo-blocking measures are “state of the art” is necessarily fact-specific, and the threshold for establishing that a geo-blocking measure is “effective” is high, the court made it clear that rights holders cannot insist on measures that are impossible to circumvent.
Whether the CJEU will provide similar clarity in the PAUSCHA case on the interaction between territorial trade mark rights, country-code top-level domains and the effectiveness of geo-blocking measures and disclaimers remains to be seen.
Contact us
If you would like to discuss any of the issues discussed in this insight, please contact Matheson partner Charleen O’Keeffe or your usual Matheson contact.
