The matter at hand

Acacia brought an action against BMW before the Tribunale di Napoli (District Court of Naples) seeking, inter alia, a declaration of non-infringement of Community designs of which BMW is the proprietor. BMW contested the jurisdiction of the Italian courts and lodged before the Corte suprema di cassazione (Court of Cassation) an application for the question of jurisdiction to be settled as a preliminary issue. The Corte suprema di cassazione subsequently decided to stay the proceedings and to refer several questions of jurisdiction  to the ECJ for a preliminary ruling.

The judgment of the ECJ

The first question relates to the interpretation of Article 24 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, which provides that a court of a Member State before which a defendant enters an appearance shall have jurisdiction, except (inter alia) if the defendant appears in order to contest jurisdiction. The referring court asked whether this exception applies in a situation where, in its first submission, the defendant contests jurisdiction in the alternative to other objections of procedure raised in the same submission. The ECJ answers this question in the affirmative, considering that “the challenge to the jurisdiction of the national court prevents prorogation where the applicant and the court seised are able to ascertain from the first defence that it is intended to contest the jurisdiction of the court. That is also the case where the first defence contains submissions on the substance of the dispute as well as submissions on the jurisdiction of the court” (paragraph 33).

By its second, third and fourth question, the referring court asked whether Article 82 of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs must be interpreted to the effect that, if the defendant is domiciled in an EU Member State, actions for declaration of non-infringement may be brought before the Community design courts of that Member State alone, and that in such cases jurisdiction cannot be based on other instruments such as Article 5(3) 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 which stipulates, inter alia, that in matters relating to tort, a person domiciled in a Member State may be sued in another Member State in the courts for the place where the harmful event occurred or may occur.

In that regard, the ECJ first of all notes, with reference to Coty (C-360/12) and Hummel (C-617/15, summarized in this book as well) that the jurisdiction rules of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs have the character of lex specialis in relation to the rules provided for by 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 (paragraph 39). This means that, in principle, the jurisdiction rules 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 may not be applied in actions for declaration of non-infringement under the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs.

Secondly the ECJ refers to the wording of Article 82 of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, which provides that actions for declaration of non-infringement 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 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 (paragraph 40).

Therefore, Article 82 of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs must be interpreted to the effect that that such actions must be brought before the Community design courts of the Member State in which the defendant is domiciled, except where there is prorogation of jurisdiction within the meaning of Article 23 or 24 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 with the exception of the cases of litis pendens and related actions referred to in the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs and 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 (paragraph 42).

Finally, by its fifth and sixth questions, the referring court asked whether Article 5(3) 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 may nevertheless be applied to claims 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 claims presupposes that the action for a declaration of non-infringement is allowed. The ECJ answers this question in the negative, considering that “in such circumstances, those claims are founded in essence on the argument, submitted in the context of the action for a declaration of non-infringement, that the manufacturing of replicas does not constitute an infringement, with the result that the proprietor of the Community design must accept competition by those replicas. To determine, in those circumstances, the court with jurisdiction on the basis of the rule set out in Article 5(3) 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] would compromise the effectiveness of Article 79(3)(a) of [the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs], which is specifically designed to set aside that rule with regard, in particular, to disputes between manufacturers of replicas and proprietors of Community designs that relate to the question whether the proprietor of the Community design at issue may prohibit the manufacture of the replicas at issue” (paragraph 50)