Case C‑421/20

Acacia Srl

v

Bayerische Motoren Werke AG

(Reference for a preliminary ruling, made by the Oberlandesgericht Düsseldorf)

Judgment of the Court (Fifth Chamber), 3 March 2022

(Reference for a preliminary ruling – Intellectual property – Community designs – Regulation (EC) No 6/2002 – Article 82(5) – Action brought before the courts of the Member State in which an act of infringement has been committed or threatened – Claims supplementary to the action for infringement – Applicable law – Article 88(2) – Article 89(1)(d) – Regulation (EC) No 864/2007 – Law applicable to non-contractual obligations (Rome II) – Article 8(2) – Country in which the intellectual property right was infringed)

1. Community designs – Action for infringement – Sanctions – Questions not within the scope of Regulation No 6/2002 – Action concerning acts of infringement committed within a single Member State – Law applicable to supplementary claims

   (Council Regulation No 6/2002, Art. 82, 83(2), 88(2) and 89(1)(d))

   (see paragraphs 31, 32, 36, 38-40, 49, 50)

2. 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 – Action concerning acts of infringement which infringe a Community design – Acts of infringement committed within a single Member State – Claims supplementary to the action for infringement – Country in which the acts of infringement relied upon were committed

   (European Parliament and Council Regulation No 864/2007, Art. 8(2); Council Regulation No 6/2002, Art. 82(5))

   (see paragraphs 44-46, 51, operative part)

Résumé

Acacia is a company incorporated under Italian law which produces, in Italy, wheel rims for motor vehicles and distributes them in a number of Member States. Taking the view that Acacia’s distribution of certain wheel rims in Germany constituted an infringement of its registered Community design, Bayrische Motoren Werke AG brought an action for infringement before a Community design court designated by Germany.

That court held that Acacia had committed the acts of infringement alleged and ordered that the infringement be brought to an end. As regards the ‘supplementary’ claims seeking damages, the provision of information, the provision of documents, the surrender of accounts and the handing over of infringing products with a view to their being destroyed, it applied German law and upheld those claims.

On appeal, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) stated that the jurisdiction of the Community design courts designated by Germany arises, in the present case, from Article 82(5) of Regulation No 6/2002 ( 1 ) and that Acacia had committed the acts of infringement alleged. As regards the supplementary claims, Acacia submitted that the applicable law was Italian law. The Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) therefore requested an interpretation of EU law from the Court of Justice, so that it could determine the law applicable to those supplementary claims.

The Court finds that the court before which an action for infringement of a Community design pursuant to Article 82(5) of Regulation No 6/2022 is brought concerning acts of infringement committed within a single Member State, must examine claims supplementary to that action on the basis of the law of that Member State.

Findings of the Court

First of all, the Court states that the Community design court before which a case has been brought pursuant to Article 82(5) of Regulation No 6/2022 is to have jurisdiction only in respect of acts of infringement committed or threatened within the territory of the Member State in which that court is situated. ( 2 ) That provision enables the proprietor of a Community design to bring one or more targeted actions, each relating specifically to the acts of infringement committed or threatened within a single Member State.

Next, the Court holds that the Rome II Regulation ( 3 ) applies, as it is included in the rules of private international law of the Member State concerned. ( 4 ) That regulation provides that in the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable is, for any question that is not governed by the relevant Community instrument, to be ‘the law of the country in which the act of infringement was committed’. ( 5 )

In a situation where the infringement which may be examined is located within a single Member State, the applicable law, according to the Rome II Regulation, is the law which is in force at the place of such infringement. Accordingly, the applicable law is the same, in the case of an action for infringement brought pursuant to Article 82(5) of Regulation No 6/2002 and which therefore relates to acts of infringement committed within a single Member State, as the law of that Member State.

Possible infringements of the Community design in question in other Member States or in third countries are not the subject of the action brought pursuant to Article 82(5) of Regulation No 6/2002. The words ‘country in which the act of infringement [of the Community design relied on] was committed’ cannot be interpreted as designating a country in which acts of infringement which are not the subject of action in question took place. Furthermore, interpreting those words as designating the country on whose sole territory the applicant invokes, in support of his action for infringement, the Community design at issue makes it possible to preserve the principle of ‘lex loci protectionis’, ( 6 ) which is particularly important in the area of intellectual property. ( 7 )

Finally, the Court adds that the holder of the Community design cannot, in relation to the same acts of infringement, bring actions based on Article 82(5) of Regulation No 6/2002 simultaneously with those based the other paragraphs of that article. There is therefore no risk of a situation occurring in which claims supplementary to an infringement action with the same subject matter would be examined in a number of different proceedings on the basis of different laws.

( 1 ) Article 82(5) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) provides that proceedings in respect of the actions for infringement may be brought in the courts of the Member State in which the act of infringement has been committed or threatened.

( 2 ) Unlike an action for infringement brought pursuant to the other paragraphs of that article, which enables the court before which the case is brought to give a ruling on acts committed within the territory of any Member State.

( 3 ) 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) (OJ 2007 L 199, p. 40).

( 4 ) In accordance with Article 88(2) and Article 89(1)(d) of Regulation No 6/2002.

( 5 ) Article 8(2) of the Rome II regulation.

( 6 ) Law of the country for which protection is claimed.

( 7 ) Recital 26 of the Rome II regulation.