Wii console accessories: private international law issues and a community design infringement


By Jorge Llevat, Cuatrecasas
By Jorge Llevat, Cuatrecasas

By Jorge Llevat.

On March 1, Yves Bot, advocate general at the Court of Justice of the European Union, presented his conclusions to the questions the Higher Regional Court of Düsseldorf referred to the court for a preliminary ruling concerning cases C-24/16 and C-25/1: the matter poses interesting questions concerning private international law in a design infringement.

The facts: the Japanese company Nintendo (i) filed a claim in Germany against BigBen Interactive GmbH (“BB Germany”) for infringing its Community designs in relation to video-game accessories the latter sells and which are compatible with the Wii console; and (ii) filed an infringement claim against the mother company (“BB France”) that manufactures the accessories in France from where it sells them to BB Germany and subsidiaries in other EU Member States. The power of the German court to hear the two claims is not disputed. Regarding BB Germany, it is clear given that it is the court closest to the defendant’s address (article 82.1 of Council Regulation 6/2002 on Community Designs, “RCD”). In the case of BB France, the court’s power derives, not from the fact that the design was infringed in Germany (a fact that could support the court’s power under ex article 82.5 of RCD) but from article 6 of Council Regulation 44/2001 (related claims; given that the claims are so closely connected, it is expedient to hear them together to avoid the risk of irreconcilable judgments resulting from separate proceedings); it is not for nothing that BB Germany sells the products BB France supplies it. They are the same products.

Given that its power to hear the claim against BB France is based on article 6 mentioned above, the German court asks whether the secondary measures to the main claim to prohibit the infringement it could order against BB France, such as presenting accounting documents, compensation for damage, withdrawal from the market, destruction of infringing products, payment of court costs or the costs of publishing the judgment (i) would have effect all over the European Union, as would be the case of the main claim (judgment of the Court of Justice of the European Union of April 12, 2011, case C-253/09, DHL. Versus Chronopost, ECLI:EU:C:2011:238, page 44); or (ii) would have to refer to the supply relationship between the two defendants. In other words, can the German court order BB France to, for example, withdraw and destroy all the infringing products in the European Union or must it limit itself to the products supplied to the German subsidiary? The advocate general has announced applicability all over the EU for these secondary measures to ensure the efficiency of the main claim and to protect the design all over the EU.

The German court also asks which law is applicable to these secondary measures (it is worth pointing out that EU Member State legislation may differ considerably). According to the advocate general, the secondary measures relating to (i) destroying and withdrawing the infringing products from the market, and (ii) the publication of the judgment would come under the concept “other sanctions” in article 89.1.d RCD. Under that article, the law of the Member State where the infringement took place would apply (the “Member State in which the acts of infringement or threatened infringement are committed, and not [the] Member State where the acts of infringement produce effects”); in this case, French law.  However, presenting accounting documents, compensation for damage and the refund of lawyers’ fees would not come under the concept of “other sanctions” under the RCD. As these measures are not covered by the RCD, in application of article 88 of the RCD, the law of the forum would apply, including Regulation 864/2007 (Rome II) on the law applicable to non-contractual obligations. Article 8.2 of the Rome II regulation refers, in the case of unitary Community intellectual property rights (such as the Community design) and for any question not covered by the relevant Community instrument (in this case the RCD), to the law of the country where the infringement was carried out, a concept that (interpreted in the same way as in the RCD) would also lead us to French law.

Another preliminary issue is brought up: whether the reproduction a third party carries out of an image of the products protected by a design to market its own products can be classified as “citation” to the effects of excluding it from the scope of the design holder (article 20 RCD: ”The rights conferred by a Community design shall not be exercised in respect of: … 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”).  The advocate general concludes that it is an illustrative act and would, therefore, come under the concept of “citation”; however, the source must be mentioned, the behavior must be in line with the fair trade practices of Directive 2005/29, and the normal exploitation of the design must not be unduly prejudiced (according to the advocate general, the design holder would have to prove that the normal exploitation of the design is unduly prejudiced).

We must follow this case to find out whether the Court of Justice of the European Union follows the advocate general’s criteria, particularly regarding the separation between the place where the infringement is carried out and the place where the effects take place when deciding the applicable law.