The European Court of Justice (ECJ) has considered issues of jurisdiction and the defence of citation in relation to the infringement of registered Community designs.
Where there are several defendants, each may be sued in the courts of the EU member state where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear them together to avoid the risk of irreconcilable judgments resulting from separate proceedings (Article 6(1), Brussels Regulation (44/2001/EC)) (Article 6(1)).
Proceedings relating to the infringement and validity of Community-registered designs fall primarily within the international jurisdiction of the courts of the member state in which the defendant is domiciled or has an establishment (Article 82(1), Community Designs Regulation (6/2002/EC)) (2002 Regulation) (Article 82(1)).
A Community design court whose jurisdiction is based on Article 82(1) shall have jurisdiction in respect of acts of infringement committed or threatened within the territory of any of the member states (Article 83(1), 2002 Regulation).
In the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable shall, if not governed by the relevant Community instrument, be the law of the country in which the act of infringement was committed (Article 8(2), Rome II Regulation on the Law Applicable to Non-Contractual Obligations (864/2007/EC)) (Article 8(2)).
Article 20 of the 2002 Regulation provides a defence to infringement of a Community design in respect of an act of reproduction for the purpose of making citations.
N owned registered Community designs for Wii console accessories. A French company, B, made video game accessories compatible with the Wii console and sold them via its website to consumers in France, Belgium and Luxembourg, and to its German subsidiary, BG. BG sold the goods made by B via its website to consumers in Germany and Austria. BG did not stock any goods but forwarded orders to B. So the supply of the allegedly infringing goods was carried out from France. N brought infringement proceedings against B and BG.
The German court held that it had jurisdiction over both companies, and that B and BG had infringed N's designs, but dismissed the claim in relation to B’s use of images of N’s goods in its web advertising. The court ordered EU-wide injunctions against B and BGN and B both appealed. B argued that the German court lacked jurisdiction to grant a pan-European injunction against it. N argued the injunction should not be limited to goods in the supply chain between B and BG, and should also extend to the website images corresponding to its designs. The court stayed the proceedings and referred questions on jurisdiction and citation to the ECJ.
The ECJ held that where a seller is sued for Community design infringement in one member state, and a manufacturer based elsewhere is a co-defendant, Article 82(1) applies to the seller and Article 6(1) applies to the manufacturer, so that the national court would have jurisdiction in relation to both of them.
The Community registered design has unitary character in the EU. Where companies in the same group act in an identical or similar manner in accordance with a common policy, as here, this should be regarded as the same situation of fact. So there was sufficient connection for Article 6(1) to apply. Therefore, the territorial jurisdiction of the German court extended throughout the EU in respect of a defendant, such as B, which is domiciled in another member state in respect of acts of infringement committed or threatened in that or any other member state (Article 83(1); Article 82(1)).
Remedies such as the provision of information, accounts and documents, damages and legal costs, destruction and recall of goods, and publication of judgments, if available under the national law of a member state with jurisdiction, could also extend to the whole of the EU.
When a person lawfully sells goods for use with goods embodying a Community design, and reproduces images of that design in order to explain or demonstrate the joint use of the goods it sells, this falls within the concept of citation if the reproduction:
- Is compatible with fair trade practice in that it does not give the impression of a commercial connection, infringe the design itself, or take unfair advantage of the commercial repute of the design holder.
- Does not cause undue prejudice to the normal exploitation of the design or adversely affect the economic interests of the design holder.
- Mentions the source of the design.
When infringement is committed using a website outside the court's jurisdiction, under Article 8(2), the country in which the act of infringement was committed is the country where the event giving rise to the damage occurred. Where B offered goods for sale via a website accessible to consumers in more than one member state, the place of the event giving rise to the damage was the place where the website operator activated the process of putting the offer for sale online.
Where the same defendant is accused of various acts of infringement in various member states, the court should 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. Where B used a shipping agent to take goods to another member state, the court would have to apply the overall assessment test to determine where the initial act of infringement at the origin of that conduct was committed or threatened.
This decision has confirmed, in the context of registered Community designs, that the national court of one member state can grant orders relating to a defendant outside that member state, covering conduct going beyond the supply chain and extending to the whole of the EU. Supplementary remedies under national laws not stemming from the 2002 Regulation can also form part of an EU-wide order. The ruling on the appropriate place for proceedings relating to reproduction of designs on multi-jurisdictional websites is also helpful to proprietors of Community designs.
The decision also clarifies that the citation defence under the 2002 Regulation should include the advertising of compatible products. Proceedings relating to citation of a registered design are likely also to include claims for trade mark infringement if the defendant has used the name or logo of the product for which its spare part or accessory is designed. It will be helpful that the test of what is fair trade practice is similar to the test of honest practices in industrial or commercial matters under the EU Trade Mark Regulation (207/2009/EC).
Case: Nintendo Co Ltd v BigBen Interactive GmbH and another C-25/16.
First published in the November 2017 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.