Joined Cases C‑24/16 and C‑25/16

Nintendo Co. Ltd

v

BigBen Interactive GmbH and BigBen Interactive SA

(Requests for a preliminary ruling from the Oberlandesgericht Düsseldorf)

(References for a preliminary ruling — Intellectual property — Regulation (EC) No 6/2002 — Article 20(1)(c), Article 79(1) and Articles 82, 83, 88 and 89 — Action for infringement — Limitation of the rights conferred by the Community design — Concept of ‘citations’ — Regulation (EC) No 44/2001 — Article 6(1) — Jurisdiction in respect of the co-defendant domiciled outside the Member State of the forum — Territorial scope of the jurisdiction of the Community design courts — Regulation (EC) No 864/2007 — Article 8(2) — Law applicable to claims seeking the adoption of orders relating to sanctions and other measures)

Summary — Judgment of the Court (Second Chamber), 27 September 2017

1. Community designs—Jurisdiction and procedure for legal proceedings—Jurisdiction over infringement and validity—Jurisdiction of courts of the Member State where the defendant is domiciled—More than one defendant—Applicability of Article 6(1) of Regulation No 44/2001

   (Council Regulations No 44/2001, Art. 6(1) and No 6/2002, Art. 79)

2. Judicial cooperation in civil matters—Jurisdiction and the enforcement of judgments in civil and commercial matters—Regulation No 44/2001—Special jurisdiction—More than one defendant—Jurisdiction of the courts of one of the co-defendants—Restrictive interpretation—Condition—Connection—Concept of connection

   (Council Regulation No 44/2001, Art. 6(1))

3. Judicial cooperation in civil matters—Jurisdiction and the enforcement of judgments in civil and commercial matters—Regulation No 44/2001—Special jurisdiction—More than one defendant—Action for infringement of a Community design brought against several defendants domiciled in various Member States—Connection—Application to the co-defendants of provisions of various national laws—Irrelevant

   (Council Regulation No 44/2001, Art. 6(1))

4. Community designs—Infringement proceedings—Penalties—Territorial scope—Criteria—Territorial jurisdiction of a Community design court—Territorial scope of the right of the Community design holder

   (Council Regulation No 6/2002, Art. 89)

5. Community designs—Infringement proceedings—Penalties—International jurisdiction based, with regard to one defendant, on Article 6(1) of Regulation No 44/2001—Possibility of adopting, in respect of that defendant, measures laid down by Regulation No 6/2002—Conditions

   (Council Regulations No 44/2001, Art. 6(1), and No 6/2002, Arts 79(1) and (3), 82(1), 88(2) and 89(1))

6. Community designs—Limitation of the rights conferred by the Community design—Acts of reproduction for the purpose of making citations—Concept of ‘citations’—Use of images of goods corresponding to Community designs when lawfully offering for sale goods intended to be used as accessories to the specific goods of the holder of the rights conferred by those designs—Included

   (Council Regulation No 6/2002, Art. 20(1)(c))

7. Judicial cooperation in civil matters—Law applicable to non-contractual obligations—Regulation No 864/2007—Obligations arising from an infringement of a unitary Community intellectual property right—Concept of (country in which the act of infringement was committed)—Sale of goods infringing the rights conferred by Community designs on a website—Place where the process of putting the offer for sale online was activated

   (European Parliament and Council Regulation No 864/2007, Art. 8(2))

8. Judicial cooperation in civil matters—Law applicable to non-contractual obligations—Regulation No 864/2007—Obligations arising from an infringement of a unitary Community intellectual property right—Concept of ‘country in which the act of infringement was committed’—Country where the event giving rise to the damage occurred—Acts of infringement in various Member State—Criteria for identifying the event giving rise to the damage

   (European Parliament and Council Regulation No 864/2007, Art. 8(2))

1.  Article 79(1) of Regulation No 6/2002 provides that, subject to any contrary provision of that regulation, the provisions of Regulation No 44/2001 are applicable to proceedings relating to Community designs. In that respect, Article 79(3) lists the provisions of Regulation No 44/2001 that are not applicable to proceedings in respect of the actions and claims referred to in Article 81 of Regulation No 6/2002. Article 6(1) of Regulation No 44/2001 is not included among the provisions listed in Article 79(3). A Community design court, such as the referring court in the cases in the main proceedings, may therefore, by virtue of that provision and subject to the conditions laid down by that provision being fulfilled, have jurisdiction to hear an action brought against a defendant not domiciled in the Member State in which that court is situated.

   (see paras 43, 44)

2.  See the text of the decision.

   (see para. 45)

3.  See the text of the decision.

   (see para. 49)

4.  See the text of the decision.

   (see paras 53, 54)

5.  Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, read 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, must be interpreted as meaning that, in circumstances such as those in the main proceedings, where the international jurisdiction of a Community design court seised of an action for infringement is based, with regard to one defendant, on Article 82(1) of Regulation No 6/2002 and, with regard to a second defendant established in another Member State, on that Article 6(1) read in conjunction with Article 79(1) of Regulation No 6/2002, because the second defendant makes and supplies to the first defendant the goods that the latter sells, that court may, on the applicant’s request, adopt orders in respect of the second defendant concerning measures falling under Article 89(1) and Article 88(2) of Regulation No 6/2002 also covering the second defendant’s conduct other than that relating to the abovementioned supply chain and with a scope which extends throughout the European Union.

   (see para. 67, operative part 1)

6.  Article 20(1)(c) of Regulation No 6/2002 must be interpreted as meaning that a third party which, without the consent of the holder of the rights conferred by a Community design, uses, including via its website, images of goods corresponding to such designs when lawfully offering for sale goods intended to be used as accessories to the specific goods of the holder of the rights conferred by those designs, in order to explain or demonstrate the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an act of reproduction for the purpose of making ‘citations’ within the meaning of Article 20(1)(c), such an act thus being authorised under that provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.

   (see para. 86, operative part 2)

7.  See the text of the decision.

   (see paras 107, 108)

8.  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 (‘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.

   (see para. 111, operative part 3)