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*PIL Case Law

Published on April 19th, 2018 | by efi kloyeri

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Summary: CJEU- Joined Cases C 24/16 and C 25/16, Regulation (EC) No 864/2007-Article 8(2): Jurisdiction and applicable law in non contractual obligations with more defendants

Key-words: Intellectual property-Regulation (EC) No 6/2002-Article 20(1)(c), Article 79(1) and Articles 82, 83, 88 and 89- Action for infringement- Limitation of the rights conferred by the Community design- Concept of ‘citations’- Regulation (EC) No 44/2001- Article 6(1)-Jurisdiction in respect of the co-defendant domiciled outside the Member State of the forum-Territorial scope of the jurisdiction of the Community design courts- Regulation (EC) No 864/2007-Article 8(2)- Law applicable to claims seeking the adoption of orders relating to sanctions and other measures

A) The facts in the main proceedings and the question referred

 Nintendo, a multinational company active in the production and sale of video games and video game consoles, holds many rights under the registered Community designs.It brought actions before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) against BigBen France as well as its subsidiary, BigBen Germany seeking a declaration that they had infringed the rights conferred upon by those designs. Th Court held that there had been an infringement by the defendants and ordered to cease using those designs throughout the European Union. Both parties brought appeals against that judgment before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf), which referred the following 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 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?

Β) Legal Context

Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, (articles 6, 20§1c, 79, 82, 88, 89), 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 as well as 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’).

C) Consideration of the questions referred

C1) regarding the first question:

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.

C2) regarding the second question:

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 authorised under that provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.

C3) regarding the third question:

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.

Angie-Eftihia Klogkiri

For further information: here

 





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