CJEU: law of Member State where Community design infringement took place determines applicable law to supplementary claims as well

Under the Community Design Regulation (EC 6/2002), an owner of a Community design right has several options when bringing an infringement case. It can, inter alia, bring an infringement claim in the courts of the Member State where the defendant is domiciled or, as Article 82(5) of the Regulation provides, the Member State where the infringement took place (or is threatening to take place). 

With regard to applicable law, the Regulation can become quite a puzzle. As a primary rule, article 88(1)  stipulates that the Community design courts shall apply the provisions of the Regulation on the matters covered thereby. The usual main claims, such as a prohibition order to stop the infringement, are covered by the Regulation. Other supplementary claims, such as handing over information on the chain of trade, are not specifically covered by the Regulation. Accordingly, article 88(2) provides that to these claims, the Community design courts should apply their national law including their private international law.

However, if supplementary claims have the nature of ‘sanctions’, article 89(1)(d) of the Regulation states that a claimant can seek ‘other sanctions’ as provided for by the law of the Member State where the infringement took place (or is threatening to take place). 

Although 88(2) and 89(1)(d) of the Regulation appear to be similar, they can lead to a different outcome. The Member State where the Community design court is ruling over a case, does not necessarily has to be the same Member State where the infringement took place. When a claimant brings forward a set of supplementary claims that are partially sanctions and partially other measures, a Community design would be required to apply multiple applicable laws. In a recent decision, the CJEU gave an interesting ruling on this issue.

Applicable law can be a puzzling affair

Background of the case 

BMW is the holder of a registered Community design. Acacia is an Italian company that produces and distributes wheel rims, which were advertised and sold in Germany, alongside several other Member States.

BMW alleged that by selling these wheel rims Acacia infringed its design rights and brought an action for infringement before a German Community design court (on the basis of Article 82(5) of the Regulation). Next to its infringement claim, BMW also brought various supplementary claims, such as the provision of information, the surrender of accounts and the handing over of infringing goods. The German Community design court ruled it had jurisdiction to the main claim, held that Acacia had indeed infringed the design rights of BMW and, after applying German law to the supplementary claims, awarded those as well. 

In appeal before the Higher Regional Court in Düsseldorf, Germany (Oberlandesgericht Düsseldorf), Acacia took the position that the supplementary claims were governed by Italian law as Italy was also one of the countries where the infringement had taken place. This caused the appellate court to be uncertain how to interpret the provisions on applicable law under the Regulation, also taking into account that German and Italian law differed on the handing over of documents and surrender of accounts.  Given the differences between German and Italian law, the application of one law or the other could lead to different outcomes of the dispute. It therefore stayed the proceedings and referred two questions to the CJEU.

The decision by the CJEU

The CJEU firstly recalls that with respect to an action for infringement pursuant to Article 82(5), the appointed ‘alternative’ Community design court only has jurisdiction vis-à-vis infringements committed within the territory of the Member State where that court is situated. Considering that the acts of infringements are thus territorially limited to that Member State alone, the CJEU holds that the national law of this Member State will apply to the main infringement claim.

The CJEU reaches the same conclusion with regard to 'other sanctions' under Article 89(1)(d) of the Regulation, despite that article referring to 'the law of the Member State where the infringement took place'. The CJEU clarifies that for the purpose of the alternative forum under Article 82(5), the place where the infringement took place is the same as the Member State where the Community design court is situated. This is also the case for supplementary claims that are not specifically governed by the Regulation and therefore fall under article 88(2), such as claims for submission of information, documents and accounts.

So far, so good. The complexity starts when the applicable law contains rules of private international law on its own, which in turn may appoint different law to be applicable to a certain issue. The CJEU acknowledges that private international law of a Member State, in accordance with both Article 88(2) and Article 91(1)(d) of the Regulation, forms an integral part of the overall applicable law. For the case at hand, this means that the private international law is governed by the Rome II Regulation.

A wheel rim taking a pause at the border

As the CJEU observes, difficulties may arise in applying the Rome II Regulation in conjunction with the Regulation. Article 8(2) of the Rome II Regulation stipulates that in the case of infringement of a unitary Community intellectual property right, the applicable law to any question or claim that is not specifically governed by the relevant Community instrument, is the law of the country where the infringement was committed. This causes uncertainty as to what law should apply if there is a number of infringements in a number of countries and thus several 'countries where the infringement was committed'. 

The CJEU gives further guidance on that question. Firstly, if there is only an infringement in a single Member State, the purpose of Article 8(2) of the Rome II Regulation cannot be that the law of another Member State or a third country applies. Consequently, the applicable law is the same as the law of the Member State where the infringement takes place. 

Secondly, due to the territorial limitation of the alternative forum under Article 82(5) of the Regulation, the Community design court will deal with infringement claims of that Member State alone. Therefore, the sentence 'country where the infringement was committed' cannot be understood as relating to infringements in another Member State that are not dealt with by the alternative forum. In other words, the Community design court does not have to take into account infringements in other Member States in determining the applicable law to supplementary claims. 

Applied to the case at hand, Acacia could not argue that due to there also being infringement in Italy, Italian law should apply to the supplementary claims. Instead, as Germany was the country where the infringement claim was brought, German law equally applied to the supplementary claims.

With respect to the questions referred, the CJEU's operative ruling is:

“Article 88(2) and Article 89(1)(d) [CDR]  and Article 8(2) [Rome II Regulation] must be interpreted as meaning that the Community design courts before which an action for infringement pursuant to Article 82(5) of Regulation No 6/2002 is brought concerning acts of infringement committed or threatened within a single Member State must examine the claims supplementary to that action, seeking the award of damages, the submission of information, documents and accounts and the handing over of the infringing products with a view to their being destroyed, on the basis of the law of the Member State in which the acts allegedly infringing the Community design relied upon are committed or are threatened, which is the same, in the circumstances of an action brought pursuant to that Article 82(5), as the law of the Member State in which those courts are situated.”

Comment

In this rather complex judgement, the CJEU adopts a pragmatic approach to supplementary claims. If an alternative forum is being used for infringement claims, the claims brought are limited to the country of that forum. Therefore, it does not make sense if the Community design court ruling over the dispute would be required to treat the main claim and supplementary claim differently due to different law applying to them. Moreover, this could give rise to undesired procedural strategies; a defendant will argue that the law of a Member State applies where the supplementary claims would have less of an impact to them.

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