Court of Justice EU about Private International Law issues regarding accused design infringers in different memberstates

The Community design court can, in cases where the jurisdiction towards one defendant is based on Article 82(1) Community Designs Regulation (CDR) and jurisdiction towards a second defendant established in another Member State is based on Article 6(1) Brussel 1 Regulation and Article 79(1) of the CDR, because the second defendant makes and supplies goods to the first defendant, adopt orders concerning measures falling under Article 89(1) and Article 88(2) CDR also covering the second defendant’s conduct other than that relating to the supply chain and with a scope which extends throughout the European Union. Concept “country in which the act of infringement was committed” from Article 8(2) Rome II Regulation refers to the country where the event giving rise to the damage occurred. Where the same defendant is accused of various acts of infringement in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it.Third party that, without consent of the holder of rights of a design, uses images of goods corresponding to a Community design when lawfully offering for sale goods intended to be used as accessories to specific goods of the holder of the rights of those designs in order to explain the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an authorised “reproduction for the purpose of making citations” within the meaning of Article 20(1)(c) CDR, as long as it fulfils the cumulative conditions laid down therein, provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.

PRIVATE INTERNATIONAL LAW - DESIGN LAW

Nintendo holds several Community designs which relate to accessories such as ‘Nunchuks’, ‘Balance Boards’ and remote controls. BigBen Interactive has various European subsidiaries in different Member States and manufactures the same accessories as those mentioned above, which are compatible with the Wii video game console and which it sells to various customers in Belgium, France and Luxembourg and to its German subsidiary, BigBen Interactive GmbH. Nintendo asserts that these goods infringe its registered Community designs. The Landgericht Düsseldorf recognised an infringement of Nintendo’s Community designs by BigBen France and BigBen Germany. The Oberlandesgericht Düsseldorf decided to stay its proceedings and referred several questions to the Court for a preliminary ruling.

The Court of Justice EU rules: 

"1. Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, read in conjunction with Article 6(1) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, must be interpreted as meaning that in circumstances such as those in the main proceedings where the international jurisdiction of a Community design court seised of an action for infringement is based, with regard to one defendant, on Article 82(1) of Regulation No 6/2002 and, with regard to a second defendant established in another Member State, on that Article 6(1) read in conjunction with Article 79(1) of Regulation No 6/2002, because the second defendant makes and supplies to the first defendant the goods that the latter sells, that court may, on the applicant’s request, adopt orders in respect of the second defendant concerning measures falling under Article 89(1) and Article 88(2) of Regulation No 6/2002 also covering the second defendant’s conduct other than that relating to the abovementioned supply chain and with a scope which extends throughout the European Union.

2. Article 20(1)(c) of Regulation No 6/2002 must be interpreted as meaning that a third party which, without the consent of the holder of the rights conferred by a Community design, uses, including via its website, images of goods corresponding to such designs when lawfully offering for sale goods intended to be used as accessories to the specific goods of the holder of the rights conferred by those designs, in order to explain or demonstrate the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an act of reproduction for the purpose of making ‘citations’ within the meaning of Article 20(1)(c), such an act thus being authorised under that provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.

3. Article 8(2) of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (‘Rome II’) must be interpreted as meaning that the ‘country in which the act of infringement was committed’ within the meaning of that provision refers to the country where the event giving rise to the damage occurred. Where the same defendant is accused of various acts of infringement in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it."

IPPT20170927, CJEU, Nintendo v BigBen

C-24/16 / C-25/16 - ECLI:EU:C:2017:724