Press release dated October 10, 2017

A. Executive summary

In a landmark ruling pronounced on September 27, 2017, the Court of Justice of the European Union (“CJEU”), faced with questions arising in a multi-state infringement action based on EU-wide protected registered Community designs, confirmed EU-wide jurisdiction over a co-defendant joined with the principal defendant and also came out in favor of applying a single set of laws to claims for relief not provided for in the applicable EU legislation, such as claims for damages (Joined Cases C-24/16 and 25/16 – Nintendo v Bigben). 

B. Facts and proceedings, questions and answers

The case arose from actions for the infringement of registered Community designs brought in Germany (Düsseldorf District Court) by Nintendo Co. Ltd. (Nintendo), a Japanese company represented by BARDEHLE PAGENBERG, against Bigben Interactive GmbH (Bigben Germany), the German distributor of Bigben Interactive SA, established in France (Bigben France).

Under the applicable legislation, the Düsseldorf District Court had EU-wide jurisdiction over Bigben Germany, as the domicile of the defendant.  Nintendo had joined Bigben France as co-defendant under the applicable rules of Article 6 No. 1 Regulation 44/2001.

In addition to the prohibition of specific Bigben products infringing Nintendo registered Community designs, the acts of infringement sought to be prevented included also the use of pictures of products protected by Nintendo registered Community designs on the packaging of Bigben goods containing accessories to be used together with the represented Nintendo products.  Nintendo also claimed an accounting for damages and additional supplemental relief (recall, destruction of infringing products, etc.).

The Düsseldorf District Court had issued EU-wide injunctions against both Bigben Germany and Bigben France but limited supplementary claims against Bigben France to the territory of the specific supply chain, i.e., goods supplied by Bigben France to Bigben Germany. The Düsseldorf District Court also held that Bigben could rely on the “citation” defense, as provided for in Article 20 (1) lit c Regulation 6/2002 for the use of pictures of Nintendo products on their product get-up.

Both parties appealed. The Düsseldorf Appeal Court, having doubts as to the scope of jurisdiction over Bigben France, the applicability of the citation defense, and the law applicable to supplementary claims, referred the following three questions to the CJEU:

(1) In connection with a trial to enforce claims under a Community design, can the court of a Member State whose jurisdiction with respect to a defendant is based solely on Article 79 (1) of [Regulation No 6/2002] in conjunction with Article 6 (1) of [Regulation No 44/2001], on the basis that this defendant, which is domiciled in another Member State, supplied the defendant domiciled in the pertinent Member State with goods that may infringe intellectual property rights, adopt measures against the first mentioned defendant that are applicable throughout the EU and extend beyond the supply relationships on which jurisdiction is based?

(2) Is [Regulation No 6/2002], particularly Article 20 (1) (c), to be interpreted as meaning that a third party may depict a Community design for commercial purposes if it intends to sell accessory items for the right holder’s goods corresponding to the Community design? If so, what criteria apply to this?

(3) For the purposes of Article 8 (2) of [Regulation No 864/2007], how is the place “in which the act of infringement was committed” to be determined in cases in which the infringer:

(a) offers goods that infringe a Community design on a website and that website is also directed at Member States other than the one in which the [infringer] is domiciled, and/or;

(b) has goods that infringe a Community design shipped to a Member State other than the one in which it is domiciled?

Is Article 15 (a) and (g) of the Rome II Regulation to be interpreted as meaning that the law determined in this manner is also applicable to participatory acts of other persons?’

In its judgment of September 27, 2017, the CJEU gave the following answers:

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 authorized 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.

C. Scope of jurisdiction over co-defendants

The answer to the first question significantly strengthens the position of the proprietor of an IP right protected as unitary EU right (EU trademark or Community design or even Community plant variety right).

A co-defendant joined under Article 6 No. 1 Regulation 44/2001 (or today under Article 8 No. 1 Regulation 1215/2012) will be judged with respect to the entire territory of the European Union and cannot invoke a limitation to the relationship with the principal defendant.  The Court justifies this result by pointing out the unitary character of EU-wide protected rights and the absence of any limitation in the scope of jurisdiction of the national court except where the jurisdiction is based on acts of infringement in the respective Member State, as provided for in Article 82 (5) Regulation 6/2002. The Court also confirms that the presence of the same legal situation, required for affirming the connexity between the cases under Article 6 No. 1 Regulation 44/2001, cannot be denied because to some extent national law may have to be applied to some of the claims of the proprietor.

D. Law applicable to supplementary claims

Perhaps of even greater significance for the enforcement of EU-wide IP rights against multi-state infringements is the answer to the third question.

While injunctive relief is available on the basis of the Regulation 6/2002 itself, a widely held opinion among courts and commentators considered the correct approach to be applied as regards claims not provided in the Regulation 6/2002 but to be determined by the applicable national law by the so-called “mosaic theory”, which would require applying the laws of each of the Member States where infringing goods are on the market.

As against this theory, which in practice would make enforcing supplement claims such as damages against multi-state infringers extremely difficult if not impossible, Nintendo argued in favor of applying the law of the Member State where the accused infringer had its center of activity, in the present case French law vis-à-vis Bigben France.

In effect, this is the approach adopted by the CJEU, by requiring 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 (…).”  The Court points out that the infringing “use”, which can be prohibited under Article 19 Regulation 6/2002, should not be divided up in various acts of infringement such as making, offering, placing on the market, etc., which would then be subject to the laws of different Member States.  The Court confirms this with respect to the specific instances referred to in Question 3, namely website advertising and delivering goods to its subsidiary or other distributors. 

E. Right to make “citations”

While the reaction to the answers to Questions 1 and 3 is thus entirely positive, not only for the claimant in the present case but for proprietors of EU-wide IP rights generally, the answer to the second question, the “citation” issue, is a disappointment, significantly limiting the exclusive rights of design proprietors.

The case will now be returned to the Düsseldorf Appeal Court for further prosecution.

Representatives of Nintendo Co. Ltd.: BARDEHLE PAGENBERG (Munich)
Dr. Henning Hartwig (Attorney-at-Law, Partner)
Prof. Dr. Alexander von Mühlendahl, LL.M. (Attorney-at-Law)
Inhouse: Koni Nishiura (Kyoto), Dr. Peggy Müller (Frankfurt am Main)

Representatives of Bigben Interactive SA and Bigben Interactive GmbH: KLAKA (Munich)
Dr. Wolfgang Götz, Dr. Carola Onken and Dr. Constantin Kurtz (Attorneys-at-Law)

Court of Justice of the European Union (Second Chamber):
Professor Dr. Marko Ilešič (Presiding Judge and Rapporteur)

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