Forum shopping - competence of courts regarding Community and national designs

11 May 2005

Julia Pothmann

Previously, many cases of design right protection in German intellectual property law referred to product piracy. However, the German Design Act (in force since June 2004) sets lower requirements of protection and provides for a wider scope of protection of designs; the Community Design Regulation (the "Regulation") (in force since March 2002) offers Community-wide protection of registered and unregistered designs. As a consequence, design rights have become more attractive, and the number of design infringement cases and invalidity proceedings is likely to rise significantly.

The success of each party in such proceedings partly depends on the competency of the court deciding the case. Claimants should carefully consider which court, and maybe even which chamber of a court, should decide the case ("forum shopping"). In Community design issues there might even be a choice between jurisdictions.

Court competence for Community design issues
The Regulation provides for "Community design courts" (Art. 80), to be designated by the Member States. These courts have exclusive jurisdiction inter alia for:

  • actions for the infringement of a Community design, whether registered or unregistered;
  • actions for a declaration of invalidity of an unregistered Community design; and
  • counterclaims for a declaration of invalidity of a Community design (whether registered or unregistered), in the context of an infringement action (Art. 81).

Article 82 of the Regulation lays down rules to determine which Member State's Community design courts have jurisdiction in the proceedings (above). There are five basic jurisdiction rules, which prevail over each other in order. According to the rules, the courts of a Member State have jurisdiction:

  1. if the defendant is domiciled in that Member State;
  2. if the defendant has an establishment in that Member State;
  3. if the claimant is domiciled in that Member State;
  4. if the claimant has an establishment in that Member State; or
  5. in the Spanish courts (i.e. where the Office for the harmonisation of the Internal Market has its seat).

A Community design court has jurisdiction for actions anywhere within the territory of the Member States. It may also grant provisional and protective measures which are applicable in the territory of any Member State (Art. 90(3) CDR).

Alternatively, an infringement action may be filed in the Member State, in which the infringement is committed or threatened. This may be advantageous depending on the national law of the respective Member States. Particularly whether the laws of the Member States offer further protection for designs, e.g. under unfair competition law. The downside is that the effect of such a decision is limited to the respective Member State. For parallel infringement actions in other Member States, further claims would have to be filed. In Germany, specific Regional Courts have been selected as Community Design Courts (Sec. 63 German Design Act).

German national designs
For any claims under the German design law, the Regional Courts have exclusive jurisdiction (Sec. 52(1) German Design Act). As with Community designs, most of the German States have restricted courts’ competence for (national) design cases to specific regional courts. A claim which is not only based on the German Design Act but also on unfair competition law can also be brought before the respective Design Courts (Sec. 53 German Design Act).

Claims regarding a German design right can be filed either with the court of the defendant's domicile/establishment or, in infringement actions, the place where an act of infringement is committed/threatened. As design infringements are often committed Germany-wide, e.g. via the internet, television or supra-regional press, the claimant can usually choose the national court. The claimant generally has the choice between the chamber for civil law and that for commercial matters.

Furthermore, the jurisdiction of some courts may be more favourable to design right owners than that of other courts. A claimant may wish to choose or avoid a court that has already dealt with similar cases. Generally, claimants should choose courts with strong experience in design right issues, e.g. the Regional Court Cologne and the Regional Court Düsseldorf. The Regional Court Cologne is often chosen because of its experience in design right matters.