Opinion of Advocate General Bot delivered on 1 March 2017.

• Jurisdiction: European Union
• Court: Court of Justice (European Union)
• Date: 01 March 2017

OPINION OF ADVOCATE GENERAL

BOT

delivered on 1 March 2017 ( 1 )

Joined Cases C‑24/16 and C‑25/16

Nintendo Co. Ltd

v

BigBen Interactive GmbH,

BigBen Interactive SA

(Request for a preliminary ruling

from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany))

(Reference for a preliminary ruling — Regulation (EC) No 44/2001 — Jurisdiction and enforcement of judgments — Regulation (EC) No 6/2002 — Protection of Community designs — Regulation (EC) No 864/2007 — Applicable law — Territorial scope of decisions concerning claims supplementary to an action for infringement — Concepts of ‘other sanctions’ and ‘acts of reproduction for the purpose of making citations’)

1. The present case referred to the Court gives it an opportunity to determine the territorial scope of a decision adopted by a court of a Member State in respect of two co-defendants domiciled in two different Member States concerning claims supplementary to an action for infringement brought before that court.

2. The Court is also asked whether the concept of ‘other sanctions’ within the meaning of Article 89(1)(d) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs ( 2 ) covers claims supplementary to an action for infringement, such as the provision of accounting documents, the award of financial compensation, reimbursement of lawyers’ fees, the destruction of the infringing goods, the recall of those goods and publication of the judgment. In addition, the referring court wishes to know, in order to determine the law applicable to such claims, what criteria are to be taken into consideration.

3. Lastly, the Court will be required to clarify whether the concept of ‘acts of reproduction for the purpose of making citations’ within the meaning of Article 20(1)(c) of that regulation includes use by a third party of the image of goods incorporating protected Community designs for purposes of selling its own goods.

4. In this Opinion, I will explain why I consider that Article 79(1) of Regulation No 6/2002 in conjunction with Article 6(1) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters ( 3 ) is to be interpreted to the effect that decisions adopted by a national court in response to claims supplementary to an action for infringement in respect of two co-defendants domiciled in two different Member States, such as compensation for damage, the destruction or recall of the infringing goods, reimbursement of lawyers’ fees or publication of the judgment, have legal effect throughout the entire territory of the Union.

5. I will then explain why, in my view, Article 89(1)(d) of Regulation No 6/2002 is to be interpreted to the effect that the concept of ‘other sanctions’ refers to claims such as the destruction of the infringing goods, the recall of those goods and publication of the judgment. On the other hand, that concept does not cover claims relating to compensation for damage, disclosure of company accounting information or reimbursement of lawyers’ fees.

6. I will also propose that the Court rule that that provision 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 ( 4 ) are to be interpreted to the effect that the law applicable to claims that are supplementary to an infringement action, relating to the destruction of the infringing goods, the recall of those goods, publication of the judgment, compensation for damage, disclosure of company accounting information and reimbursement of lawyers’ fees is the law of the Member State where the act giving rise to the alleged infringement occurred or may occur. In the present case, the act giving rise to the alleged infringement is the manufacture of the infringing goods.

7. Lastly, I will explain why I consider that Article 20(1)(c) of Regulation No 6/2002 is to be interpreted to the effect that the concept of ‘acts of reproduction for the purpose of making citations’ includes use by a third party of the image of goods incorporating protected Community designs for purposes of selling its own goods. It is for the national court to ascertain that this act of reproduction is compatible with fair trade practice, that it does not unduly prejudice the normal exploitation of those designs and that mention is made of the source.

I – Legal context

A – Regulation No 44/2001

8. The purpose of Regulation No 44/2001 is to unify the rules of conflict of jurisdiction in civil and commercial matters and to simplify the formalities with a view to rapid recognition and enforcement of judgments from Member States.

9. Article 2(1) of that regulation provides that ‘[s]ubject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State’.

10. Under Article 6(1) of the regulation, ‘[a] person domiciled in a Member State may also be sued … where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings’.

B – Regulation No 6/2002

11. The purpose of Regulation No 6/2002 is to provide uniform protection to Community designs in the territory of the Union and to ensure that the rights conferred by Community designs can be enforced.

12. According to recital 22 of that regulation, ‘[t]he enforcement of these rights is to be left to national laws. It is necessary therefore to provide for some basic uniform sanctions in all Member States. These should make it possible, irrespective of the jurisdiction under which enforcement is sought, to stop the infringing acts’.

13. Article 1(3) of that regulation provides that ‘[a] Community design shall have a unitary character. It shall have equal effect throughout the Community. It shall not be registered, transferred or surrendered or be the subject of a decision declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle and its implications shall apply unless otherwise provided in this Regulation’.

14. Under Article 19(1) of Regulation No 6/2002: ‘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.’

15. Article 20(1) of that regulation introduces certain limitations on the rights conferred by the Community design and provides: ‘The rights conferred by a Community design shall not be exercised in respect of: (a) acts done privately and for non-commercial purposes; (b) acts done for experimental purposes; (c) acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.’

16. Under Article 79(1) of the regulation: ‘Unless otherwise specified in this Regulation, the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, signed in Brussels on 27 September 1968, ( 5 ) … shall apply to proceedings relating to Community designs and applications for registered Community designs, as well as to proceedings relating to actions on the basis of Community designs and national designs enjoying simultaneous protection.’

17. Under Article 82(1) and (5) of Regulation No 6/2002: ‘1. Subject to the provisions of this Regulation and to any provisions of the Convention on Jurisdiction and Enforcement applicable by virtue of Article 79, 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. … 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.’

18. Article 83 of that regulation states: ‘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.’

19. Article 88(2) of that regulation reads as follows: ‘On all matters not covered by this Regulation, a Community design court shall apply its national law, including its private international law.’

20. Under Article 89(1) of Regulation No 6/2002: ‘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...