The matter at hand
The Italian company Acacia produces and distributes wheel rims in a number of Member States, including Germany. BMW started proceedings against Acacia in Germany, arguing that Acacia’s distribution of certain wheel rims constituted an infringement of BMW’s registered Community design. The German court in first instance held that Acacia committed the acts of infringement alleged by BMW, ordered that the infringement be brought to an end and, referring 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, applied German law to BMW’s supplementary claims.
In appeal before the Oberlandesgericht Düsseldorf (higher regional court Düsseldorf) Acacia disputed the infringement and took the view that the law applicable to BMW’s supplementary claims was Italian law.
As the referring court had doubts as to which national law applied to BMW’s supplementary claims, and the outcome of the dispute would depend on that question since the rules of German law on the provision of documents and the surrender of accounts differed from those of Italian law, the referring court asked the ECJ the question whether a court having international jurisdiction pursuant to Article 82(5) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs 6/2002 should apply its national law on topics that are not the subject of harmonization, or the law of ‘the initial place of infringement’ (as referenced in Case C‑24/16, Nintendo).
The judgment of the ECJ
Upon answering this question, the ECJ recalls that a Community design court before which a case has been brought pursuant to Article 82(5) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs 6/2002 is to have jurisdiction only in respect of acts of infringement committed or threatened within the territory of the Member State in which that court is situated (paragraph 35). Moreover, the ECJ refers to Article 88(2) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs 6/2002, in which it is stipulated that, in matters not covered by that regulation, the court’s national law shall be applied (paragraph 40).
The ECJ then continues by considering that, in a situation where the infringement is located within a single Member State, the latter rule cannot be understood as intending the law of another Member State or the law of a third country to apply. Since, 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, the applicable law is that which is in force at the place of such an infringement, in the case of an action for infringement brought pursuant to Article 82(5) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs 6/2002 and which therefore relates to acts of infringement committed or threatened within a single Member State, that applicable law is the same as the law of that Member State (paragraph 44).
The ECJ distinguishes the situation at issue in the main proceedings from that examined in the case C-256/21 (Nintendo), which was characterized by the fact that the same defendant was, in the context of the single legal proceedings, accused of acts of infringement committed in different Member States. The ECJ considers that “the interpretation provided in that judgment, according to which, in such circumstances, the expression ‘the law of the country in which the act of infringement [in question] was committed’, designates the law of the country in which the initial act of infringement was committed, makes it possible to ensure that a single law applies to all the claims supplementary to an action for infringement brought pursuant to Article 82(1), (2), (3) or (4) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs No 6/2002, since such an action allows, in accordance with Article 83(1) of that regulation, the court before which the case is brought to give a ruling on acts committed within the territory of any Member State” (paragraph 48). It is however held that “that interpretation cannot be transposed to a situation where the holder of a Community design does not bring an action pursuant to Article 82(1), (2), (3) or (4) but rather chooses to bring one or more targeted actions, relating to each of the acts of infringement committed or threatened within a single Member State, pursuant to paragraph 5 of that article. In the latter case, the court before which the action is brought cannot be required (i) to ascertain whether there is, within a Member State other than the Member State concerned by the action, an initial act of infringement and (ii) to rely on that act in order to apply the law of that other Member State, even though both that act and the territory of that Member State are not concerned by the dispute in question” (paragraph 49).