Non-infringement declaration for alleged design infringement in Germany: not in Italy, says Italian Supreme Court

 

On 17 May 2023, the Italian Supreme Court ruled on the lack of jurisdiction of Italian courts regarding requests for declaration of non-infringement of International Registered Designs (IRDs) as well as for declaration on non-infringement of unfair competition rules in relation to an alleged infringement occurred outside of Italy – specifically: Germany.

 An Italian cat reflecting on jurisdiction

Background

On 13 January 2021, German company Bulthaup GmbH & Co. KG sent a warning letter to German company Nobilia-Werke J. Stickling GmbH & Co. KG alleging the infringement of the IRD No. DM045.247 relating to its “B3” tap by the tap “Alila” marketed in Germany by German company Nobilia-Werke J. Stickling GmbH & Co. KG and manufactured by Italian company Gessi S.p.A..

After an exchange of correspondence involving Gessi S.p.A., the latter sued Bulthaup GmbH & Co. KG and its Italian subsidiary Bulthaupt Italia S.r.l. before the Court of Milan (first instance) seeking a declaration of invalidity of the Italian portion of the IRD and a declaration of non-infringement of said IRD as well of non-infringement of unfair competition rules.

The defendants objected, on a preliminary basis, to the jurisdiction of the Italian court in relation to non-infringement claims, as these would only relate to the German territory.

The Court of Milan, without addressing the merits of the case, decided on the claimed lack of jurisdiction. The applicant appealed to the Supreme Court to provide guidance on the question of jurisdiction.

The decision of the Italian Supreme Court

The Italian Supreme Court declared the lack of jurisdiction of Italian courts, except for the claim on invalidity of the Italian portion of the IDR not contested among the parties.

The Supreme Court set the following principles.

(i) Pursuant to the general rule in Article 4 of Regulation (EU) No 1215/2012, an Italian court has no jurisdiction over claims brought against German companies established in Germany.

ii) As to Article 7 of the same Regulation, according to the case law of the Court of Justice of the European Union (CJEU) for the purposes of the correct identification of the "place where the harmful event occurred or may occur" (C-375/13, C-12/15, C-27/17, C-451/18), the concept of "initial damage" cannot be expanded so as to include any place where the negative consequences of damage could be suffered in consideration of a damage suffered elsewhere (C-168/02). During the exchange of correspondence between the lawyers of the parties, the plaintiff had joined in, but only for the purpose of evaluating a possible amicable solution to the matter. Therefore, the mere inclusion of an Italian company in the course of an exchange of correspondence for the purpose of negotiating an amicable settlement of the dispute should not be treated as a letter of formal warning.

(iii) With regard to Article 8 of the aforesaid Regulation, Italian courts’ jurisdiction cannot be validly established simply by the summoning of the Italian subsidiary of the German defendant company, since that Italian company resulted as a disinterested and silent party in the dispute and is therefore deemed to be a fictitious defendant (see decision 19 February 2019 no. 4884 Italian Supreme Court).

Comment

The issue related to claims for declaration of non-infringement, especially on an interim basis, has been discussed for a long time and has come under the scrutiny of courts multiple times.  Italian case law has become stringent in the evaluation of the pre-requisites(see the IPKat here), such as the legitimate interest, the date of assessment for whether there is a legitimate interest, whether a warning letter or an objection has a necessary condition of legitimate interest and the burden of proof. All these evaluations reflect on the assessment on jurisdiction, essentially in order to avoid (as it was in this case) the use of fictional plaintiffs or defendants.

The place where damage has occurred is not always easy to determine. It implies a correct identification of the country where the jurisdictionally significant harm has occurred, or where damage has occurred which is closest in causal proximity to the harmful event. This notion has been the subject of several CJEU decisions but needs in any event to be ascertained on case-by-case basis. The decision of the Italian Supreme Court warrants a cautious approach, also to avoid conferring too broad of a jurisdiction.

 

Picture courtesy of Antonio D’Agostino