Acacia Srl v Bayerische Motoren Werke AG.

• Jurisdiction: European Union
• ECLI: ECLI:EU:C:2022:152
• Docket Number: C-421/20
• Date: 03 March 2022
• Celex Number: 62020CJ0421
• Procedure Type: Reference for a preliminary ruling
• Court: Court of Justice (European Union)

Provisional text

JUDGMENT OF THE COURT (Fifth Chamber)

3 March 2022 (*)

(Reference for a preliminary ruling – Intellectual property – Community designs – Regulation (EC) No 6/2002 – Article 82(5) – Action brought before the courts of the Member State in which an act of infringement has been committed or threatened – Claims supplementary to the action for infringement – Applicable law – Article 88(2) – Article 89(1)(d) – Regulation (EC) No 864/2007 – Law applicable to non-contractual obligations (Rome II) – Article 8(2) – Country in which the intellectual property right was infringed)

In Case C‑421/20,

REQUEST for a preliminary ruling under Article 267 TFEU from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), made by decision of 31 August 2020, received at the Court on 8 September 2020, in the proceedings

Acacia Srl

v

Bayerische Motoren Werke AG,

THE COURT (Fifth Chamber),

composed of E. Regan, President of the Chamber, K. Lenaerts, President of the Court, acting as a Judge of the Fifth Chamber, C. Lycourgos (Rapporteur), President of the Fourth Chamber, I. Jarukaitis and M. Ilešič, Judges,

Advocate General: M. Szpunar,

Registrar: M. Krausenböck, Administrator,

having regard to the written procedure and further to the hearing on 8 July 2021,

after considering the observations submitted on behalf of:

– Bayerische Motoren Werke AG, by R. Hackbarth and F. Schmidt-Sauerhöfer, Rechtsanwälte,

– European Commission, initially by T. Scharf, É. Gippini Fournier and M. Wilderspin, subsequently by T. Scharf, É. Gippini Fournier and D. Triantafyllou, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 28 October 2021,

gives the following

Judgment

1 This request for a preliminary ruling concerns the interpretation of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) and 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) (OJ 2007 L 199, p. 40).

2 The request has been made in proceedings between Acacia Srl and Bayerische Motoren Werke AG (‘BMW’) in relation to alleged infringement of a Community design of which BMW is the holder.

Legal context

Regulation No 6/2002

3 Article 19 of Regulation No 6/2002, entitled ‘Rights conferred by the Community design’, states in paragraph 1:

‘A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.’

4 Article 80 of that regulation, entitled ‘Community design courts’, provides, in paragraph 1:

‘The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance (Community design courts) which shall perform the functions assigned to them by this Regulation.’

5 Article 81 of that regulation, entitled ‘Jurisdiction over infringement and validity’, provides:

‘The Community design courts shall have exclusive jurisdiction:

(a) for infringement actions and – if they are permitted under national law – actions in respect of threatened infringement of Community designs;

(b) for actions for declaration of non-infringement of Community designs, if they are permitted under national law;

(c) for actions for a declaration of invalidity of an unregistered Community design;

(d) for counterclaims for a declaration of invalidity of a Community design raised in connection with actions under (a).’

6 Article 82 of that regulation, entitled ‘International jurisdiction’, provides:

‘1. Subject to the provisions of this Regulation …, proceedings in respect of the actions and claims referred to in Article 81 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment.

2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment.

3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat.

…

5. Proceedings in respect of the actions and claims referred to in Article 81(a) and (d) may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened.’

7 Under Article 83 of Regulation No 6/2002, entitled ‘Extent of jurisdiction on infringement’:

‘1. A Community design court whose jurisdiction is based on Article 82(1), (2) (3) or (4) shall have jurisdiction in respect of acts of infringement committed or threatened within the territory of any of the Member States.

2. A Community design court whose jurisdiction is based on Article 82(5) shall 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.’

8 Article 88 of that regulation, entitled ‘Applicable law’, states:

‘1. The Community design courts shall apply the provisions of this Regulation.

2. On all matters not covered by this Regulation, a Community design court shall apply its national law, including its private international law.

3. Unless otherwise provided in this Regulation, a Community design court shall apply the rules of procedure governing the same type of action relating to a national design right in the Member State where it is situated.’

9 Article 89 of that regulation, headed ‘Sanctions in actions for infringement’, provides in paragraph 1:

‘Where in an action for infringement or for threatened infringement a Community design court finds that the defendant has infringed or threatened to infringe a Community design, it shall, unless there are special reasons for not doing so, order the following measures:

(a) an order prohibiting the defendant from proceeding with the acts which have infringed or would infringe the Community design;

(b) an order to seize the infringing products;

(c) an order to seize materials and implements predominantly used in order to manufacture the infringing goods, if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circumstances;

(d) any order imposing other sanctions appropriate under the circumstances which are provided by the law of the Member State in which the acts of infringement or threatened infringement are committed, including its private international law.’

10 Article 110 of that regulation, entitled ‘Transitional provision’, provides in paragraph 1:

‘Until such time as amendments to this Regulation enter into force on a proposal from the [European] Commission on this subject, protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance.’

Regulation No 864/2007

11 Recitals 14, 16, 17, 19 and 26 of Regulation No 864/2007 state as follows:

‘(14) The requirement of legal certainty and the need to do justice in individual cases are essential elements of an area of justice. This Regulation provides for the connecting factors which are the most appropriate to achieve these objectives. …

…

(16) Uniform rules should enhance the foreseeability of court decisions and ensure a reasonable balance between the interests of the person claimed to be liable and the person who has sustained damage. A connection with the country where the direct damage occurred (lex loci damni) strikes a fair balance between the interests of the person claimed to be liable and the person sustaining the damage, and also reflects the modern approach to civil liability and the development of systems of strict liability.

(17) The law applicable should be determined on the basis of where the damage occurs, regardless of the country or countries in which the indirect consequences could occur. …

…

(19) Specific rules should be laid down for special torts/delicts where the general rule does not allow a reasonable balance to be struck between the interests at stake.

…

(26) Regarding...