1. The ECJ had to address the question whether a national court may within the scope of infringement proceedings concerning a Community Design also impose EU-wide sanctions against additional defendants domiciled in another member state, in addition to a defendant who was domiciled within the court’s jurisdiction.
The issue of the applicable law, which had to be addressed by the ECJ, concerned Art. 8 para. 2 of the Rome II Regulation, which stipulates that in case of non-contractual obligations in the context of an infringement of unitary Community intellectual property rights, the laws of the member state where the infringement was committed shall be applicable to matters which are not covered by the relevant EU legislative instrument. The specific issue that had to be addressed was how the location “where the infringement was committed” should be determined in Art. 8 para. 2 Rome II Regulation, if the infringer offers design-infringing goods for sale on a website and if this website is — also — aimed at other member states besides the one where the infringer is domiciled.
2. The ECJ ruling was pronounced in the context of two submissions from the Higher Regional Court (OLG) in Düsseldorf in the matter of “Fernbedienung für Videospielkonsolen” (“Remote Control for Video Consoles”) (GRUR 2016, 616) and “Balance Board” (GRUR-RS 2016, 02936). In both proceedings, Nintendo filed a Community Design action against BigBen, a company domiciled in France (BigBen France) and its affiliate domiciled in Germany (BigBen Germany). Both defendants distributed accessories for the game console “Wii” which is manufactured by Nintendo. The parent company BigBen France manufactured the accessories compatible with the Wii game console and directly offered these accessories for sale on its own website for consumers in France, Belgium, Luxemburg and other countries. BigBen Germany was in charge of selling and distributing these accessories in Germany and Austria via its own website. Orders placed by consumers with BigBen Germany were passed on to BigBen France and then delivered from France. As a consequence, Nintendo filed a suit against BigBen France and BigBen Germany at the Regional Court of Düsseldorf for injunctive relief, provision of information, disclosure of accounts, determination of liability for damages, destruction and recall of the contested goods, on charges of design infringement without any territorial restriction.
3. While the international competence and EU-wide competence to decide of the seized court for BigBen Germany followed clearly from Art. 82 para. 1, 83 para. 1 CDR, the international competence for claims against BigBen France was based on Art. 79 para. 1 CDR in conjunction with former Art. 6 no. 1 of the European Convention on Jurisdiction and the Enforcement of Judgements (ECJEJ) (regulation (EC) no. 44/2001). In cases with multiple defendants, the CDR does not stipulate any priority regulations, so the ECJEJ remains applicable (Art. 79 para. 1 CDR). This equally applies to EUTMR regulations (Art. 121 para. 1 EUTMR). Former Art. 6 no. 1 ECJEJ (now: Art. 8 no. 1 ECJEJ – regulation (EC) no. 2015/1215) provides that actions against joint defendants domiciled in different member states may be filed at the court of the location where one of the defendants is domiciled, provided that the individual lawsuits are closely related to each other to such an extent that joint proceedings and rulings seem warranted in order to avoid separate proceedings that might result in contradictory rulings.
Although the Regional Court of Düsseldorf affirmed its international competence for the French parent company pursuant former Art. 6 no. 1 ECJEJ, the court limited the scope of its ruling for secondary claims not directly covered by the CDR to acts carried out by the parent company BigBen France in connection with deliveries to BigBen Germany. This interpretation of former Art. 6 no. 1 ECJEJ, where the international competence regarding a defendant domiciled in another member state is affirmed while the scope of the ruling is limited to acts carried out in connection with the acts forming the base for the lawsuits, was rejected by the ECJ (para. 53 et seq.).
4. Referring to a court ruling still pronounced within the context of the former Community Trade Mark Regulation (regulation (EC) no. 40/94) in the matter “DHL Express France” (GRUR 2011, 518), the ECJ explains that the territorial scope of an injunctive relief based on a Community Trade Mark is limited by the territorial competence and by the territorial scope of the exclusive law applicable to the proprietor of the infringed Community Trade Mark (para. 53). Due to the similarities between the Community Trade Mark Regulation and the Community Design Regulation, the ECJ applies this approach directly to the EU-wide injunctive relief (Art. 89 para.1 lit. a CDR) in case of Community Design infringements (para.54).
The ECJ, however, goes further than that and also applies the same principles in determining the territorial scope for orders issued by a EU Trade Mark Court or a Community Design Court, respectively, regarding other sanctions and measures which are not directly derived from EU Law, but from national law (para. 55). Regarding the grounds of an internationally competent court’s EU-wide competence to decide even on any secondary claims governed by the national law of a member state, the ECJ refers in particular to the objective of the CDR, which is to effectively protect rights pertaining to Community Designs in the entire European Union. According to the ECJ, this objective, which follows from the 29th recital of the CDR, is of paramount importance since the Community Design is harmonised and has, pursuant to Art. 1 para. 2 CDR, the same effect in the entire EU. The system for the protection of an unitary right created by the CDR is implemented by a number of fundamental sanctions, which are regulated autonomously in the CDR and also through further, nationally regulated sanctions and measures (para. 56 + 57).
5. In order to assess the territorial scope of the competence of a Community Design Court where infringement proceedings are filed pursuant to Art. 81 CDR and whose international competence for at least one of the defendants is based on Art. 82 para. 1 CDR (domicile or establishment of the defendant within the national jurisdiction) and for the other defendant on the former Art. 6 no.1 ECJEJ in conjunction with Art. 79 para. 1 CDR, the ECJ holds that a Community Design Court’s competence to decide is not expressly governed by Art. 83 CDR in this case. In the ECJ’s view, neither from the wording of former Art. 6 no. 1 ECJEJ nor from any case law regarding this regulation does it follow that a lawfully seized court only has limited competence for a defendant who is not domiciled in the member state where the court is located (para. 63).
According to the ECJ, the territorial competence of a Community Design Court thus also extends to the entire EU even for defendants who are not domiciled in the member state where the court is located (para. 64).
6. This ECJ ruling is of importance not only for enforcing rights pertaining to a Community Design, but also directly for EU Trade Marks. The ECJ explained that the application of national law basically does not necessarily preclude the application of Art. 8 no. 1 ECJEJ if the core issue of the infringement act must be addressed in the exact same manner across the EU; otherwise this would run counter to the purpose of Art. 8 no. 1 ECJEJ which is to avoid contradictory rulings.
7. Concerning the issue of the applicable Substantive Law, which must be separated from the issue of international competence, the ECJ states in para. 93 that regarding sanctions and measures not covered by the relevant regulation, both the EUTMR and the CDR refer to the national law, including the provisions of Private International Law of the seized court (Art. 129 EUTMR; Art. 88 CDR).
Since for all EU member states (except for conflict-of-law provisions in the Kingdom of Denmark) the International Private Law was harmonized with regard to non-contractual obligations in civil and commercial matters, including obligations arising from the infringement of unitary intellectual property rights by the Rome II Regulation (regulation (EC) no. 864/2007), this reference must be interpreted as a reference to the Rome II Regulation insofar as it concerns International Private Law (para. 93).
8. The court holds that the purpose of the Rome II Regulations is to improve the predictability of court rulings within the EU through harmonized regulations and to provide appropriate reconciliation of interests between persons whose liability is enforced and the aggrieved party. For this purpose, the regulation generally refers to the rule embodied in Art. 4 para.1 of the Rome II Regulations which stipulates that the law of the member state where the damage is occured must be applied to non-contractual obligations (“lex loci damni”). The court further states that Art. 8 para. 2 of the Rome II Regulation represents a particular provision with priority over the fundamental rule for non-contractual obligations derived from infringements of unitary intellectual property rights (para. 96). Pursuant to Art. 8 para. 2 of the Rome II Regulation, in such cases the law of the state where the infringement was committed must be applied for matters not covered by a relevant EU legislative instrument.
9. The ECJ holds that in cases where the same defendant is accused of multiple infringement acts against unitary intellectual property rights committed in multiple member states, the determination of the event giving rise to the damage occured cannot be based on each individual alleged infringement act; rather, the defendant’s actions must be assessed overall in order to determine where the original infringement act on which the alleged action is based was committed or might be committed (para. 103).
The ECJ justifies this interpretation of Art. 8 of the Rome II Regulations by stating that this is the only manner in which the seized court is able to bring the applicable law in line with the objective and the purpose of the Rome II Regulation with a consistent connecting factor (the location where the infringement act was or might be committed and on which multiple acts allegedly committed by the defendant are based) (para. 104).
10. According to the ECJ, an event giving rise to damage claims due to the infringement of a unitary intellectual property right on a website which is aimed at consumers in multiple member states is constituted if an economic operator offers the contested goods for sale, in particular by publishing such an offer on its website. Pursuant to Art. 8 para. 2 of the Rome II Regulations, the location where the process of publishing the offer was started by the economic operator on its website is thus the location of the event giving rise to damage claims (para. 107 + 108).
11. In practice, this means that the plaintiff’s obligation to state the details of member state rights pertaining to secondary claims for infringements of a EU Trade Mark or a Community Design, respectively, with expensive legal opinions no longer applies, provided the contested infringement actions share a common context inside the state where the plaintiff is domiciled.
12. The ECJ ruling has direct consequences for the competence and the applicable law in infringement proceedings pertaining to a EU Trade Mark or a Community Design. Whether national courts actually apply the principles stipulated by the ECJ on infringements of national parts of a European patent remains to be seen. The fact that the European patent from the day of the relevant publication concerning its award in the European Patent Bulletin, (only) grants its owner the rights he would have been granted by a national patent award (Art. 64 para. 1 EPC) seems to speak against such application. The relevant publication concerning the patent award in the European Patent Bulletin does therefore not constitute an unitary intellectual property right, which means it is unlikely that Art. 8 para. 2 of the Rome II Regulation is relevant.
The question whether the former Art. 6 no.1 ECJEJ (now: Art. 8 no. 1 ECJEJ) applies within the context of lawsuits filed in multiple member states due to infringements of a European patent granted in each of these member states has already been addressed by the ECJ’s ruling in the “Roche Nederland” matter (GRUR 2007, 47). That ruling stipulates that each of these lawsuits must be examined solely pursuant to the national law which applies in the state for which the European patent was granted. The ECJ holds that any different rulings cannot be qualified as contradictory and that there was thus no connection pursuant to former Art.6 no.1 ECJEJ which would make a joint ruling seem expedient in order to avoid contradictory rulings by multiple courts.
