• Judgment of 13 July 2017, C-433/16, Bayerische Motoren Werke AG v. Acacia Srl

Acacia manufactures and markets alloy rims for automobile wheels. The case file before the Court shows that those rims are replicas of alloy rims produced by automobile manufacturers and marketed under the trade mark WSP Italy, the acronym WSP signifying ‘Wheels Spare Parts’ (‘the replica rims’). In so far as the rims produced by automobile manufacturers are registered as Community designs, Acacia considers that its replica rims fall under the ‘reparation clause’ provided for in Article 110(1) of Regulation No 6/2002. By application allegedly lodged on 21 January 2013, Acacia brought an action against BMW before the Tribunale di Napoli (District Court of Naples (Italy)) seeking a declaration of non-infringement of Community designs, of which BMW is the proprietor, for alloy rims for automobile wheels, as well as a declaration of abuse of a dominant market position and unfair competition by BMW. Acacia also sought an injunction to prevent BMW from taking any action hindering the marketing of the replica rims. BMW entered an appearance by lodging a defence before that court. In that defence, it raised, as preliminary points, the objections that the notification of the application was non-existent or void, as was the mandate of Acacia’s counsel. In the alternative, but still as a preliminary matter, BMW also contested the jurisdiction of the Italian courts. In the further alternative, were those objections to be rejected, it claimed that Acacia’s applications should be rejected as having no basis in fact or in law. In that defence, BMW argued as follows: ‘BMW … as a mere procedural consequence of the material reception of a document appearing to have legal value, in order to avoid running the risk of a declaration of wrongful failure to appear, files this document for the sole purpose of claiming, on the one hand, that no notification was made by [Acacia] and, on the other hand, if, as is highly improbable, the Court were to declare the application validly lodged, that the Italian courts do not have jurisdiction and that the German courts have jurisdiction to hear the case brought by Acacia.’ At a hearing held on 27 May 2014, the Tribunale di Napoli (District Court of Naples) set time limits for lodging further submissions on questions of procedure. On 3 October 2014, BMW lodged before the referring court, the Corte suprema di cassazione (Court of Cassation, Italy), an application for the question of jurisdiction, still pending before the Tribunale di Napoli (District Court of Naples), to be settled as a preliminary issue. It repeated its argument that the Italian courts have no jurisdiction to hear the case brought by Acacia. Acacia, for its part, contends that the jurisdiction of the Italian courts was tacitly accepted by BMW given that, after raising the objection that notification of Acacia’s application was non-existent or void, as was the mandate of its counsel, before the Tribunale di Napoli (District Court of Naples), BMW raised the objection that the Italian courts had no jurisdiction to hear the case only in the alternative.

The referring court asks, in essence, whether Article 24 of Regulation No 44/2001 must be interpreted to the effect that an objection alleging lack of jurisdiction of the court seised, raised in the defendant’s first pleadings in the alternative to other objections of procedure raised in those same pleadings, may be considered to be acceptance of the jurisdiction of the court seised, therefore resulting in prorogation of jurisdiction by virtue of that article.

By its second and third questions, which it is appropriate to consider together, the referring court asks, in essence, if Article 82 of Regulation No 6/2002 must be interpreted to the effect that actions for declaration of non-infringement referred to in Article 81(b) of that regulation may be brought, where the defendant is domiciled in an EU Member State, before the Community design courts of that Member State alone.

By its fourth question, the referring court asks, in essence, whether the rule on jurisdiction in Article 5(3) of Regulation No 44/2001 may apply to actions for declaration of non-infringement under Article 81(b) of Regulation No 6/2002.

By its fifth and sixth questions, which it is appropriate to consider together, the referring court asks, in essence, whether actions for a declaration of abuse of a dominant position and of unfair competition that are connected to actions for declaration of non-infringement, in so far as granting those applications presupposes that the action for a declaration of non-infringement is allowed, fall within the scope of the rule on jurisdiction set out in Article 5(3) of Regulation No 44/2001 or within the scope of the jurisdiction regime established by Regulation No 6/2002. Assuming that the rule on jurisdiction set out in Article 5(3) of Regulation No 44/2001 were applicable in respect of such actions for a declaration of abuse of a dominant position and of unfair competition, that court, furthermore, questions whether the rules on related actions set out in Article 28 of Regulation No 44/2001 may be given a ‘broad’ interpretation, to the effect that the applicant would be free to bring an action before a court with potential international jurisdiction to hear those claims on the basis of that Article 5(3), not only in order to bring those claims, but also to bring the action for a declaration of non-infringement of a Community design mentioned above.

The court ruled that Article 24 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 to the effect that a challenge to the jurisdiction of the court seised, raised in the defendant’s first submission in the alternative to other objections of procedure raised in the same submission, cannot be considered to be acceptance of the jurisdiction of the court seised, and therefore does not lead to prorogation of jurisdiction pursuant to that article. The court also considers that Article 82 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted to the effect that actions for declaration of non-infringement under Article 81(b) of that regulation must, when the defendant is domiciled in an EU Member State, be brought before the Community design courts of that Member State, except where there is prorogation of jurisdiction within the meaning of Article 23 or Article 24 of Regulation No 44/2001, and with the exception of the cases of litis pendens and related actions referred to in those regulations. The court also considers  that the rule on jurisdiction in Article 5(3) of Regulation No 44/2001 does not apply to actions for a declaration of non-infringement under Article 81(b) of Regulation No 6/2002. Finally, according to the court, the rule on jurisdiction set out in Article 5(3) of Regulation No 44/2001 does not apply to actions for a declaration of abuse of a dominant position and of unfair competition that are connected to actions for declaration of non-infringement, in so far as granting those applications presupposes that the action for a declaration of non-infringement is allowed.

• Judgment of 27 September 2017, Nintendo Co Ltd v BigBen Interactive GmbH

Nintendo is a company active in the production and sale of video games and video game consoles, including the Wii video games console and its accessories, for which it holds a portfolio of Community designs. BigBen France makes remote controls and other accessories compatible with the Wii video games console and sells them via its website directly to consumers located inter alia in France, Belgium and Luxembourg, as well as to its subsidiary, BigBen Germany.  BigBen Germany does not have its own stock of goods. Thus, it forwards the orders it receives from consumers to BigBen France. Supply of the allegedly infringing goods is therefore carried out from France.  Nintendo takes the view that BigBen Germany and BigBen France’s sale of certain goods made by BigBen France infringes its rights under the registered Community designs held by it. It also submits that those two companies cannot be recognised as having the right to use the images of the goods corresponding to those designs for their commercial activity. Consequently, it brought actions before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) against BigBen Germany and BigBen France seeking a declaration that they had infringed the rights conferred upon it by those designs.

The case was appealed in front of the Higher Regional Court of Dusseldorf by both litigants. The Higher Regional Court referred to the European Court of Justice.  Firstly, it asked whether the Regulation No 6/2002, read in conjunction with Article 6(1) of Regulation No 44/2001, must be interpreted as meaning that 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, as the case may be, a scope which extends throughout the European Union. The Court held that Regulation No 6/2002, read in conjunction with Article 6(1) of Regulation No 44/2001, 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.

Secondly, the Court asked whether 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) and, if so, under which circumstances such an act of reproduction may be accepted. In that question, the General Court held that a third party that lawfully sells goods intended to be used with specific goods corresponding to Community designs and reproduces the latter in order to explain or demonstrate the joint use of the goods it sells and a product corresponding to a protected design carries out an act of reproduction for the purpose of making ‘citations’ within the meaning of Article 20(1)(c) of Regulation No 6/2002. Therefore, the limitation of article 20(1) is subject to three cumulative conditions; the compatibility of the acts of reproduction with fair trade practice, the absence of undue prejudice to the normal exploitation of the design on account of such acts and mention of the source.