CJEU: Law of country where infringing act occurred applies to ancillary claims limited to territory30-06-2022 Print this page
Community court of Member State where (threatened) infringement takes place by offering for sale and delivery in advertising (not cross-border) competent (Article 82(5) CD-Regulation): such acts may be the subject of an action for infringement which targets, in accordance with Article 82(5) of Regulation No 6/2002, a single Member State. The fact that the defendant took decisions and steps in another Member State to bring about those acts does not preclude such an action from being brought (see, by analogy, judgment of 5 September 2019, AMS Neve and Others, C‑172/18, EU:C:2019:674, paragraph 65). Applicable law ancillary claims: law of Member State where (threatened) infringement occurs ("lex loci delicti") applicable to claims for destruction of infringing products ("other appropriate sanction", Article 89(1)(5) CD-Regulation). Law of that Member State applicable to claims for compensation and for the provision of (accounting) information and documents ("lex fori")("matters not regulated by the Regulation", Article 88(2) CD-Regulation). If (imminent) infringement takes place on the territory of one Member State, the law of that Member State shall be the law applicable in accordance with Article 8(2) Rome II.
From the abstract: Acacia is a company incorporated under Italian law which produces, in Italy, wheel rims for motor vehicles and distributes them in a number of Member States. Taking the view that Acacia’s distribution of certain wheel rims in Germany constituted an infringement of its registered Community design, Bayrische Motoren Werke AG brought an action for infringement before a Community design court designated by Germany.
That court held that Acacia had committed the acts of infringement alleged and ordered that the infringement be brought to an end. As regards the ‘supplementary’ claims seeking damages, the provision of information, the provision of documents, the surrender of accounts and the handing over of infringing products with a view to their being destroyed, it applied German law and upheld those claims.
On appeal, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) stated that the jurisdiction of the Community design courts designated by Germany arises, in the present case, from Article 82(5) of Regulation No 6/2002 and that Acacia had committed the acts of infringement alleged. As regards the supplementary claims, Acacia submitted that the applicable law was Italian law. The Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) therefore requested an interpretation of EU law from the Court of Justice, so that it could determine the law applicable to those supplementary claims.
The Court finds that the court before which an action for infringement of a Community design pursuant to Article 82(5) of Regulation No 6/2022 is brought concerning acts of infringement committed within a single Member State, must examine claims supplementary to that action on the basis of the law of that Member State.
Findings of the Court
First of all, the Court states that the Community design court before which a case has been brought pursuant to Article 82(5) of Regulation No 6/2022 is to have jurisdiction only in respect of acts of infringement committed or threatened within the territory of the Member State in which that court is situated. That provision enables the proprietor of a Community design to bring one or more targeted actions, each relating specifically to the acts of infringement committed or threatened within a single Member State.
Next, the Court holds that the Rome II Regulation applies, as it is included in the rules of private international law of the Member State concerned. That regulation provides that in the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable is, for any question that is not governed by the relevant Community instrument, to be ‘the law of the country in which the act of infringement was committed’.
In a situation where the infringement which may be examined is located within a single Member State, the applicable law, according to the Rome II Regulation, is the law which is in force at the place of such infringement. Accordingly, the applicable law is the same, in the case of an action for infringement brought pursuant to Article 82(5) of Regulation No 6/2002 and which therefore relates to acts of infringement committed within a single Member State, as the law of that Member State.
Possible infringements of the Community design in question in other Member States or in third countries are not the subject of the action brought pursuant to Article 82(5) of Regulation No 6/2002. The words ‘country in which the act of infringement [of the Community design relied on] was committed’ cannot be interpreted as designating a country in which acts of infringement which are not the subject of action in question took place. Furthermore, interpreting those words as designating the country on whose sole territory the applicant invokes, in support of his action for infringement, the Community design at issue makes it possible to preserve the principle of ‘lex loci protectionis’, which is particularly important in the area of intellectual property.
Finally, the Court adds that the holder of the Community design cannot, in relation to the same acts of infringement, bring actions based on Article 82(5) of Regulation No 6/2002 simultaneously with those based the other paragraphs of that article. There is therefore no risk of a situation occurring in which claims supplementary to an infringement action with the same subject matter would be examined in a number of different proceedings on the basis of different laws.
1. In proceedings for an infringement of Community designs, can the national court dealing with the infringement proceedings having international jurisdiction pursuant to Article 82(5) of [Regulation No 6/2002] apply the national law of the Member State in which the court dealing with the infringement proceedings is situated (lex fori) to [supplementary] claims in relation to the territory of its Member State?
2. If Question 1 is answered in the negative: Can the “initial place of infringement” for the purposes of the [Court in judgment of [27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724)] regarding the determination of the law applicable to [supplementary] claims under Article 8(2) of [Regulation No 864/2007] also lie in the Member State where the consumers to whom internet advertising is addressed are located and where goods infringing designs are put on the market within the meaning of Article 19 of [Regulation No 6/2002], in so far as only the offering and the putting on the market in that Member State are challenged, even if the internet offers on which the offering and the putting on the market are based were launched in another Member State?
Court of Justice:
Article 88(2) and Article 89(1)(d) of Council Regulation (EC) No 6/2002 of 12 December 2001 of Community designs, and 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 Community design courts before which an action for infringement pursuant to Article 82(5) of Regulation No 6/2002 is brought concerning acts of infringement committed or threatened within a single Member State must examine the claims supplementary to that action, seeking the award of damages, the submission of information, documents and accounts and the handing over of the infringing products with a view to their being destroyed, on the basis of the law of the Member State in which the acts allegedly infringing the Community design relied upon are committed or are threatened, which is the same, in the circumstances of an action brought pursuant to that Article 82(5), as the law of the Member State in which those courts are situated.