INTA Files Amicus Brief in Infringement Case Before Court of Justice of the EU

Published: February 10, 2021

Marina Perraki Tsibanoulis & Partners Law Firm Athens, Greece International Amicus Committee—Europe Amicus Subcommittee

INTA filed an amicus brief in an infringement case pending before the Court of Justice of the European Union (CJEU) concerning a registered Community design (RCD). A question at issue is what law should apply, from a private international law perspective, to the supplementary claims and remedies in an RCD infringement action. [Supplementary refers to those other than cease-and-desist actions.]

INTA filed its amicus brief with the CJEU for Case C – 421/20 ACACIA S.R.L v. Bayerische Motoren Werke Aktiengesellschaft (BMW) on December 24, 2020, in a preliminary ruling case referred by the Higher Regional Court Düsseldorf, Germany.

BMW brought the case before German courts in response to alleged RCD infringement committed by ACACIA S.R.L, an Italian company that exported infringing goods to Germany. The Düsseldorf Regional Court based its international jurisdiction on Article 82(5) of the Community Design Regulation (CDR) and found that the defendant had infringed the claimant’s RCD. It applied German law beyond what the CDR covers (damages, information, rendering of accounts, return of documents, and surrender of items for the purpose of destruction) in accordance with Article 8(2) of ROME II Regulation.

The defendant brought an appeal against that judgment before the Düsseldorf Regional Court. ACACIA S.R.L. submitted a legal opinion stating that the claimant has no right under Italian law to the rendering of accounts and return of documents (which are not covered by Directive 2004/48/EC of the European Parliament and of the Council of April 29 2004, on the enforcement of intellectual property rights and have therefore not been harmonized (Enforcement Directive)). Italian law does not provide for rendering of accounts and return of documents.

In this case, the court was asked to decide whether national or European Union (EU) law applied to the sanctions and measures at issue. EU law would apply if such measures fell within the scope of Article 89(1)(a)–(c) CDR whereas national law would be applicable if, instead, the measures fell under Article 89(1)(d) or Article 88(2) CDR.

In its amicus submission, INTA argued that:

  • Under Article 89(1)(d) CDR, German law should apply (for the reasons explained below); and
  • Under Article 88(2) CDR, German law should also apply as the lex fori.

The CJEU has previously clarified the meaning of Article 89(1)(d) CDR, noting in particular that “the law of the country in which the act of infringement was committed” must be understood as referring to the place where actions falling within the scope of the exclusive right take place. For example, this could be the country where goods infringing a design are sold, offered for sale, or advertised, as all these acts fall within the exclusive right to use, under Article 19(1) CDR.

In its brief, INTA maintained that in this case, Germany is the country where the act of infringement was committed. Therefore, under Article 89(1)(d) CDR, German law applies to the sanctions not provided for in the CDR.

In its brief, INTA cites Nintendo Co. Ltd v. BigBen Interactive GmbH, BigBen Interactive SA, (Joined Cases C24/16 ‑ C‑25/16, Nintendo, Sept. 27, 2017). In that case, there were two defendants, BigBen France, the parent company, and BigBen Germany, its subsidiary, and each sold products in different countries. The national (German) court ordered the defendant to disclose information, accounts, and documents, as well as to destroy/recall infringing stock, publish the judgment, and pay damages and costs. The German court held that it had international jurisdiction and ordered a pan-EU injunction.

The CJEU stated that (emphasis added):

Article 8(2) of … “Rome II” must be interpreted as meaning that the “country in which the act of infringement was committed” within the meaning of that provision refers to the country where the event giving rise to the damage occurred. Where the same defendant is accused of various acts of infringement in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it.

INTA’s position, as sustained in the brief, is that following the literal interpretation of the above provision, the place where the initial act of infringement was committed or threatened only comes into play “where the same defendant is accused of various acts of infringement in various Member States.” In all other instances, it said, the country where the act of infringement was committed should be taken into account. This includes where there is one defendant that is accused in only one member state in relation to acts committed in its territory, as in this case.

The brief contributors are: Thierry Calame (Lenz & Staehelin, Switzerland), Ilanah Fhima (University College London, UK), Andreas Lubberger (Lubberger ∙ Lehment, Germany), and Marina Perraki (Tsibanoulis & Partners, Greece) of the International Amicus Committee—Europe Amicus Subcommittee, with the support of Christian Spintig (Heuking Kühn Lüer Wojtek, Germany) of the Designs Committee.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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