The matter at hand

The Japanese company Nintendo is active in the production and sale of video games and video game consoles, including the Wii video games console and its accessories. It is the holder of several registered Community designs relating to Wii accessories.

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 in France, Belgium and Luxembourg, as well as to its subsidiary, BigBen Germany. The latter sells the goods made by BigBen France via its website to consumers located in Germany and Austria. BigBen Germany does not have its own stock of goods. BigBen Germany and BigBen France also use images of goods corresponding to the protected designs held by Nintendo in the course of the lawful sale, including for the purposes of publicity, of certain other goods they sell.

Nintendo took the view that BigBen Germany and BigBen France’s sale of certain goods infringe its rights under the registered Community designs held by it. It also submitted 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), which held that there had been an infringement by BigBen Germany and BigBen France of Nintendo’s registered Community designs. However, it dismissed the actions in so far as they concerned the use of the images of the goods corresponding to those designs. All parties involved brought appeals against that judgment. The court of appeal had doubts as to whether the judgment is in conformity with EU law and referred several questions to the ECJ for a preliminary ruling.

The judgment of the ECJ

The first question which the referring court would like to get clarified is whether it has the authority to impose measures with a scope which extends throughout the European Union on BigBen France, whereas the German court's jurisdiction with regard to BigBen France is merely based on the fact that the claims on BigBen France are closely connected to the claims on BigBen Germany within the meaning of Article 6(1) of Brussels ICouncil Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters and not on the specific jurisdiction rules provided by the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs. In that regard, the ECJ points out that the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs does not specifically state what the territorial scope of a Community design court’s jurisdiction should be in a situation where the jurisdiction with regard to one defendant (BigBen Germany) is based on the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, whereas the jurisdiction with regard to the other defendant (BigBen France), who is not domiciled in the Member State of the forum, is based on the fact that the claims are closely connected. “However, it is apparent neither from the wording of Article 6(1) of [Brussels ICouncil Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters] nor the relevant case-law of the Court that courts seised validly pursuant to Article 6(1) should then see their territorial jurisdiction limited in respect of a defendant who is not domiciled in the Member State of the forum” (paragraph 63). Therefore, the ECJ holds that the territorial jurisdiction of a Community design court seised of an action for infringement, extends throughout the EU also in respect of the defendant who is not domiciled in the Member State of the forum.

The second question referred to the ECJ relates to the use of images of goods corresponding to Community designs. The referring court asked whether a third party may use such images, including via its website, 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. The ECJ concludes that this is allowed, considering 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 [the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs]” (paragraph 77), provided that the three cumulative conditions of that Article are met, namely that: (i) the reproduction is compatible with fair trade practices; (ii) the reproduction does not unduly prejudice the normal exploitation of the design; and (iii) mention is made of the source (paragraph 78).

With regard to the first condition the ECJ specifies that a reproduction is not compatible with fair trade practice “where it is done in such a manner that it gives the impression that there is a commercial connection between the third party and the holder of the rights conferred by those designs, or where the third party (…) infringes the rights conferred on the holder of the design protected by Article 19 of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, or where that third party takes unfair advantage of the holder’s commercial repute” (paragraph 80). With regard to the second condition, the ECJ holds that it “aims inter alia to prevent the act of reproduction for the purpose of making citations from negatively affecting the economic interests that the holder of the rights conferred by the Community designs may derive from a normal exploitation of those designs” (paragraph 82). As regards, thirdly, the requirement to mention the source, the ECJ notes that Article 20(1)(c) does not specify how it is to be mentioned.

Lastly, the referring court asked which law is applicable to the obligations arising from an infringement where each defendant is accused of several infringing acts committed in various Member States. The ECJ recalls that, pursuant to Article 8(2) of Rome IIRegulation [EC] of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations, infringements on intellectual property rights have to be dealt with according to the law of the country where the act of infringement was committed. The ECJ also notes that proceedings relating to intellectual property rights infringements are particularly complex. “It is not uncommon for the same defendant to be accused of several infringing acts, with the result that several places could constitute, as the place where the event giving rise to the damage occurred, the relevant connecting factor for determining the applicable law” (paragraph 99).

In such circumstances, “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” (paragraph 103). “Such an interpretation enables the court seised easily to identify the law applicable by using a single connecting factor linked to the place where the act of infringement at the origin of several acts alleged against a defendant was committed or threatened (…)” and “ensures the predictability of the law thus designated for all the parties to disputes concerning infringements of EU intellectual property rights” (paragraph 104). In circumstances where an economic operator is accused of offering alleged infringing goods for sale via its website, that site being accessible to consumers situated in various Member States, this means “the place where the event giving rise to the damage occurred within the meaning of Article 8(2) of [Rome IIRegulation [EC] of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations] is the place where the process of putting the offer for sale online by that operator on its website was activated” (paragraph 108).