The Advocate-General of the European Court Y. BOT gave its opinion on cases C‑24/16 and C‑25/16 Nintendo Co. Ltd against BigBen Interactive GmbH, BigBen Interactive SA. Both cases concern the following:
Nintendo Co. Ltd, a Japanese undertaking which sells the Wii video game console, (6) holds several Community designs which relate to accessories such as ‘Nunchuks’, ‘Balance Boards’ and remote controls.
BigBen Interactive SA (‘BigBen France’), which is now a European market leader in the design and distribution of video game accessories for smartphones and tablets, has various European subsidiaries in different Member States. The undertaking manufactures the same accessories as those mentioned above, which are compatible with the Wii video game console and which it sells to various customers in Belgium, France and Luxembourg and to its German subsidiary, BigBen Interactive GmbH (‘BigBen Germany’), which operates on the German and Austrian markets.
Nintendo asserts that these goods thus placed on the European market infringe its registered Community designs. For that reason, it is claiming that the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) should order that the defendants cease the manufacture, import and export of the goods considered to be in dispute and prohibit the depiction and use of the image of the goods incorporating the protected Community designs. By its supplementary claims, Nintendo is requesting the provision of accounting documents from BigBen France and BigBen Germany, financial compensation, reimbursement of lawyers’ fees, publication of the judgment and the destruction and recall of all the disputed goods.
In the orders made by it at first instance, the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) recognised an infringement of Nintendo’s Community designs by BigBen France and BigBen Germany and therefore ordered them to cease using those designs. However, the use of images of the goods corresponding to those designs on websites was not declared unlawful by that court.
III – The questions referred for a preliminary ruling
The Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf), which has doubts as to the interpretation to be given to EU law, decided to stay its proceedings and to refer the following questions to the Court for a preliminary ruling:
(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 the Rome II Regulation, 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 person damaged by the infringement 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?’
The Advocate General’s opinion:
1. Article 79(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs 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 is to be interpreted to the effect that decisions adopted by a national court in response to claims that are supplementary to an action for infringement in respect of two co-defendants domiciled in two different Member States, such as compensation for damage, the destruction or recall of the infringing goods, reimbursement of lawyers’ fees or publication of the judgment, have legal effect throughout the entire territory of the Union.
2. Article 89(1)(d) of Regulation No 6/2002 is to be interpreted to the effect that the concept of ‘other sanctions’ refers to claims such as the destruction of the infringing goods, the recall of those goods and publication of the judgment. On the other hand, that concept does not cover claims relating to compensation for damage, disclosure of company accounting information or reimbursement of lawyers’ fees.
3. Article 89(1)(d) of Regulation No 6/2002 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 is to be interpreted to the effect that the law applicable to the claims that are supplementary to an action for infringement relating to the destruction of the infringing goods, the recall of those goods, publication of the judgment, compensation for damage, disclosure of company accounting information and reimbursement of lawyers’ fees is the law of the Member State where the act giving rise to the alleged infringement occurred or may occur. In the present case, the act giving rise to the alleged infringement is the manufacture of the infringing goods.
4. Article 20(1)(c) of Regulation No 6/2002 is to be interpreted to the effect that the concept of ‘acts of reproduction for the purpose of making citations’ includes use by a third party of the image of goods incorporating protected Community designs for purposes of selling its own goods. It is for the national court to ascertain that this act of reproduction is compatible with fair trade practice, that it does not unduly prejudice the normal exploitation of those designs and that mention is made of the source.