62020CC0421
OPINION OF ADVOCATE GENERAL
SZPUNAR
delivered on 28 October 2021 (
1
)
Case C‑421/20
Acacia Srl
v
Bayerische Motoren Werke AG
(Request for a preliminary ruling from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany))
(Reference for a preliminary ruling – Community designs – International jurisdiction – Applicable substantive law – Associated rights arising from the infringement of a Community design – Lex fori – Place where the initial act of infringement was committed)
I. Introduction
1.
The core of the Union’s private international law is composed of the rules of jurisdiction and the conflict-of-law rules contained, respectively, in Regulation (EU) No 1215/2012 (
2
) and the twin Regulations on the law applicable to contractual and non-contractual obligations, namely the Regulations (EC) No 593/2008 (
3
) and No 864/2007. (
4
)
2.
The scope of application of those regulations is particularly broad. However, for the jurisdiction rules of Regulation No 1215/2012 to apply, there must be an international element, which is reflected in the international character of the legal relationship in question deriving from the involvement of a number of States. (
5
) Similarly, the conflict rules of the Rome I and Rome II Regulations apply in situations involving a conflict of laws. (
6
)
3.
Furthermore, without prejudice to those requirements relating to there being an international element, Regulation No 1215/2012 and the Rome II Regulation provide for exceptions in favour of specific provisions of EU law (
7
) by giving priority, inter alia, to those of Regulation (EC) No 6/2002. (
8
)
4.
This reference for a preliminary ruling provide the Court with the opportunity to clarify the relationship between those three regulations as regards the situations referred to in Article 82(5) of Regulation No 6/2002, namely, those in which an infringement action is brought before the courts of the Member State in whose territory the act of infringement has been committed or threatened.
II. Legal context
A.
Regulation No 6/2002
5.
Article 82 of Regulation No 6/2002, entitled ‘International jurisdiction’, provides, in paragraph 5 thereof:
‘Proceedings in respect of the actions and claims referred to in Article 81(a) and (d) may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened.’
6.
According to Article 88 of that regulation, entitled ‘Applicable law’:
‘1.   The Community design courts shall apply the provisions of this Regulation.
2.   On all matters not covered by this Regulation, a Community design court shall apply its national law, including its private international law.
3.   Unless otherwise provided in this Regulation, a Community design court shall apply the rules of procedure governing the same type of action relating to a national design right in the Member State where it is situated.’
B.
The Rome II Regulation
7.
Article 1 of the Rome II Regulation, entitled ‘Scope’, provides in paragraph 1:
‘This Regulation shall apply, in situations involving a conflict of laws, to non-contractual obligations in civil and commercial matters. …’
8.
Article 8 of that regulation, entitled ‘Infringement of intellectual property rights’, provides:
‘1.   The law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is claimed.
2.   In the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable shall, for any question that is not governed by the relevant Community instrument, be the law of the country in which the act of infringement was committed.
…’
III. Facts of the case in the main proceedings
9.
Acacia Srl is a company incorporated under Italian law which manufactures, in Italy, wheel rims for motor vehicles and distributes them throughout the European Union.
10.
Bayerische Motoren Werke AG (BMW’), taking the view that Acacia’s distribution of certain wheel rims in Germany constitutes an infringement of a registered Community design of which it is the holder, brought an action for infringement in Germany before a Community design court.
11.
That court declared that it had jurisdiction pursuant to Article 82(5) of Regulation No 6/2002.
12.
Furthermore, that court held that Acacia had committed the act of infringement alleged by BMW and ordered that the infringement be brought to an end. Referring to Article 8(2) of the Rome II Regulation, the same court applied German law to BMW’s supplementary claims seeking damages, the provision of information, the provision of documents, the handing over of products with a view to their being destroyed and the surrender of accounts. Those claims were, in essence, upheld.
13.
Acacia brought an appeal before the referring court. In particular, it argued that the law applicable to BMW’s supplementary claims was Italian law.
14.
The referring court confirms that the jurisdiction of the German courts in the present case arises from Article 82(5) of Regulation No 6/2002 and that Acacia has committed the act of infringement alleged by BMW.
15.
However, it has doubts as to the national law applicable to BMW’s supplementary claims and observes that the outcome of the dispute will, to some extent, depend on that question. According to an expert report on Italian law submitted by Acacia, the rules of German law on the provision of documents and surrender of accounts differ from those of Italian law. If Italian law applies to the supplementary claims, then the judgment at first instance should be varied.
16.
The referring court considers that it follows from Article 8(2) of the Rome II Regulation, as interpreted by the Court in Nintendo, (
9
) that Italian law applies in the case in question. In that respect, it observes that, in so far as the goods at issue delivered to Germany originated in Italy, the event giving rise to the damage is therefore located in Italy. According to that court, the criterion of the place of the event giving rise to the damage established in Nintendo must be applied not only in the situation where the acts of infringement alleged against the defendant were committed in a number of Member States, as was the situation in the case which gave rise to that judgment, but also in the situation where the acts of infringement were committed in a single Member State, as in the present case.
17.
Such a solution would ensure that the law applicable to the tort/delict is the same in both situations. The AMS Neve judgment, (
10
) relied on by BMW in support of its position that German law applies to the supplementary claims, does not alter the need to ensure that the same substantive law applies to both situations.
IV. Procedure before the Court and the questions referred
18.
It is in those circumstances that the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), by decision of 31 August 2020, received at the Court on 8 September 2020, decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘(1)
In proceedings for infringement of a Community design, can the national court dealing with the infringement proceedings, having international jurisdiction pursuant to Article 82(5) of Regulation No 6/2002, apply the national law of the Member State in which the national court dealing with the infringement proceedings is situated (lex fori) to [supplementary] claims in relation to the territory of its Member State?
(2)
If Question 1 is answered in the negative: can the ‘initial place of infringement’ for the purposes of the [Nintendo judgment]_regarding the determination of the law applicable to [supplementary] claims under Article 8(2) of [the Rome II Regulation], also lie in the Member State where the consumers to whom internet advertising is addressed are located and where goods infringing designs are put on the market within the meaning of Article 19 of Regulation No 6/2002, in so far as only the offering and the putting on the market in that Member State are challenged, even if the internet offers on which the offering and the putting on the market are based were launched in another Member State?’
19.
Written observations were submitted by BMW and by the European Commission. Those parties were represented at the hearing on 8 July 2021.
V. Analysis
A.
The first question
20.
By its first question, the referring court seeks, in essence, to ascertain whether Article 1(1) of the Rome II Regulation and Article 88(2) and Article 89(1)(d) of Regulation No 6/2002 are to be interpreted as meaning that the situation where an action is brought before a court of a Member State under Article 82(5) of the latter regulation does not include a conflict of laws within the meaning of Article 1(1) of the Rome II Regulation, and that it is appropriate to apply the lex fori, rather than the law designated as applicable by the conflict of law rules of that regulation, to the supplementary claims concerning that Member State.
21.
Before examining that question, it seems appropriate to me to recall the context in which the jurisdiction of a court before which an action is brought under Article 82(5) of Regulation No 6/2002 arises (section 1). Next, with a view to providing a useful answer to that question, I shall first demonstrate that it is necessary to rule out the assumption that the supplementary claims at issue in the main proceedings may fall within the principle of lex fori processualis and are necessarily governed by the law of the Member State of the court hearing an infringement action(section 2), and then I shall examine whether the situation where a court of a Member State has an action brought before it under that provision, requires the application of the conflict of laws rules (section 3).
1. Article 82(5) of Regulation No 6/2002
22.
With regard to the jurisdiction of the courts of the Member States to hear infringement actions, Article 82(1) to (3) of Regulation No 6/2002 provides for a cascade of connecting factors, the first being the defendant’s domicile in the EU and the second being the defendant’s establishment in the EU. Next, if the defendant is neither domiciled nor has an establishment in the territory of the EU, that regulation provides for the jurisdiction of the forum actoris, and the third and fourth connecting factors are, respectively, an applicant’s domicile and place of establishment in the EU. Finally, as a measure of last resort, actions for infringement must be brought in the courts where the European Union Intellectual Property Office (EUIPO) has its seat.
23.
Moreover, under Article 82(5) of Regulation No 6/2002, actions for infringement can also be brought in the courts of the Member State in which the act of infringement has been committed or threatened. As is clear from Article 83 of Regulation No 6/2002, unlike the courts before which an action is brought under Article 82(1) to (3) of that regulation, the court before which an action is brought under Article 82(5) of that regulation has jurisdiction only in respect of acts committed or threatened to be committed in the territory of the Member State in which the court before which the action is brought is situated.
24.
Such a cascade of connecting factors, supplemented by the factor relating to the Member State in whose territory the act of infringement was committed or threatened to be committed, is also contained in Regulation (EU) 2017/1001. (
11
) The case-law of the Court developed in the context of that regulation, in particular that resulting from the judgment in AMS Neve, is therefore applicable to Regulation No 6/2002. However, as is clear from paragraph 64 of that judgment, the solutions adopted in respect of the rules of jurisdiction are not necessarily applicable to the conflict-of-laws rules, which are at the heart of the present reference for a preliminary ruling. Therefore, the judgment in AMS Neve cannot be interpreted as restricting or reversing the Nintendo judgment.
2. The principle of lex fori processualis
25.
In order to designate the law applicable to sanctions other than those referred to in Article 89(1)(a) to (c) of Regulation No 6/2002, Article 89(1)(d) of that regulation refers to the law of the Member State in which the acts of infringement or threatened infringement are committed, while specifying that that reference also concerns the private international law rules of that Member State’s law. In that connection, Article 88(2) of that regulation refers, in turn, as regards all matters which do not fall within the scope of that regulation, to the law of the Member State of the Community design court before which an infringement action is brought.
26.
In the current context of EU law, those references must, in so far as they relate to private international law, be understood as covering the provisions of the Rome II Regulation. (
12
) In the Member States which apply the conflict-of-laws rules of that regulation, the references made by Article 89(1)(d) and Article 88(2) of Regulation No 6/2002 therefore lead to the same national law being designated as applicable.
27.
By contrast, in relation to the principle of lex fori processualis, the various aspects of the proceedings which are not the subject of uniform provisions of EU law must be governed by the national law of the Member State of the court hearing the action. (
13
) In the context of Regulation No 6/2002, that principle seems to be acknowledged in Article 88(3) of that regulation. (
14
) Furthermore, the principle of lex fori processualis echoes Article 89(2) of that regulation, according to which the Community design court shall take such measures, in accordance with its national law, as are aimed at ensuring compliance with Article 89(1) of that regulation.
28.
The H. Gautzsch Großhandel judgment (
15
) provides useful guidance making it possible to rule out the assumption that the supplementary claims at issue in the main proceedings fall within the lex fori processualis principle.
29.
As regards, first of all, a claim for destruction of the infringing products, it is clear from the judgment in H. Gautzsch Großhandel (
16
) that that is one of the ‘other sanctions’ within the meaning of Article 89(1)(d) of Regulation No 6/2002.
30.
Second, as regards the claims for the award of damages following from the activities of the person responsible for the infringement and as regards claims for disclosure, in order to determine that damage, of information relating to those activities, these claims do not, according to the H. Gautzsch Großhandel (
17
) judgment, relate to a sanction within the meaning of Article 89 of Regulation No 6/2002. Nevertheless, they are governed, in accordance with Article 88(2) of that regulation, by the national law of the Community design court seised.
31.
Finally, following the logic of the H. Gautzsch Großhandel judgment, (
18
) the same should apply, in my view, to requests for the provision of documents and the surrender of accounts. The nature of such requests does not seem to be very far removed from that of a request for information on the activities of the person responsible for the act of infringement. The Court confirmed in the Nintendo judgment, (
19
) that subsequent claims for the provision of documents and accounts are referred to either in Article 89(1)(d) of Regulation No 6/2002 or in Article 88(2) of that regulation, each of those provisions referring to the applicable national law.
32.
Therefore, the supplementary claims at issue in the main proceedings are not covered by the lex fori processualis principle. It is therefore now necessary to establish whether the situation where the court of a Member State has brought before it such claims under Article 82(5) of Regulation No 6/2002 requires the conflict-of-law rules to be applied.
3. Enforcement of conflict rules
33.
In order to reach the conclusion that, where a court of the Member State has an action brought before it under Article 82(5) of Regulation No 6/2002, it is necessarily the lex fori that applies to supplementary claims to an action for infringement, it should be considered that, before that court, there is no conflict-of-laws within the meaning of Article 1(1) of the Rome II Regulation.
34.
As I have already mentioned in point 3 of the present Opinion, the conflict-of-law rules of the Rome II Regulation are subordinate to those of, inter alia, Regulation No 6/2002. However, Regulation No 6/2002 does not contain any conflict-of-law rule designating the lex fori as the applicable law for the situations referred to in Article 82(5) of that regulation. In particular, contrary BMW’s suggestions, Article 83(2) of that regulation contains no such rule. As can be seen from its title, that provision determines the extent of the jurisdiction of the courts of the place where the infringement occurred.
35.
In the absence of such a conflict rule, in particular where an action is brought before a court of a Member State under Article 82(5) of Regulation No 6/2002, the supplementary claims at issue in the main proceedings must a priori be governed by the law designated as applicable under the Rome II Regulation. However, the Rome II Regulation only applies in situations involving a conflict of laws. Therefore, in order to be able to answer the first question and to find that the conflict-of-law rules of that regulation apply to those claims, it is necessary to ascertain whether the situation in the main proceedings involves a conflict of laws. (
20
)
(a) Situation involving a conflict of laws
36.
EU law does not specify the meaning of the words ‘situation involving a conflict of laws’, which are used to designate the scope of the Rome II Regulation, as well as of the Rome I Regulation and its predecessor, namely the Rome Convention on the law applicable to contractual obligations, opened for signature in Rome on 19 June 1980. (
21
) The fact that these terms are frequently used in EU private international law to limit the scope of its instruments is the result of a careful choice by the legislature.
37.
The existence of a situation involving a conflict of laws is a well-established condition for the applicability of conflict rules in private international law, (
22
) although the precise meaning of that requirement is not uniformly understood. (
23
) Under the least controversial interpretation of national conflict-of-law rules and leaving aside the nuances that are the subject of academic debate, that requirement is considered to be fulfilled when the situation in question is cross-border in nature, due to the involvement of a number of States, and can therefore, at least potentially, be subject to the national law of more than one of those States.
38.
Having regard to that interpretation, in the absence of the Rome II Regulation conflict-of-law rules, a court of a Member State which has to apply the national or contractual conflict-of-law rules in force in that Member State in a case such as the present one, should at least consider the possibility that laws other than its own might apply. The parties to the main proceedings are domiciled in different Member States. Moreover, the initial act of infringement took place in one Member State, namely, Italy, and its impact is felt in another Member State, namely, Germany.
39.
In those circumstances, in order to interpret the words ‘a situation involving a conflict of laws’ within the meaning of the Rome II Regulation, it is useful to refer to the legal basis of that regulation. By virtue of Article 61(c) EC, which is one of the legal foundations of that regulation and of Article 65 EC, (now Article 67(3) and Article 81 TFEU respectively), the European Union must adopt measures in the field of judicial cooperation in civil matters having cross-border implications and in so far as is necessary for the proper functioning of the internal market. In itself, the unification of the conflict rules, brought about by the Rome II Regulation, is undoubtedly intended to eliminate the obstacles to the proper functioning of the internal market that may arise from the disparities between national laws in that area. (
24
)
40.
In order to eliminate such obstacles, an appropriate meaning must be given to the words ‘situation involving a conflict of laws’ found in Article 1(1) of the Rome II Regulation, so as to ensure that it is not the national or contractual conflict-of-law rules but the conflict-of-law rules of that regulation which apply in any situation in which the court of a Member State must at least consider the possibility that laws other than its own may apply, on account of the involvement of a number Member States or third parties. Therefore, as the legal academic literature argues, the Rome II Regulation must be applied in situations where, as in the present case, the parties are domiciled in different Member States, (
25
) there being no need to refer to other aspects of the situation in the main proceedings which demonstrate its cross-border nature. (
26
)
41.
Such an interpretation of the words ‘situation involving a conflict of laws’ is supported by the systematic interpretation of the Rome II Regulation. Article 14(2) of that regulation refers to situations where ‘all the elements relevant to the situation at the time when the event giving rise to the damage occurs are located in a country other than the country whose law has been chosen’. Those situations therefore fall within the scope of that regulation, although they are characterised by the presence of only one element involving another State, namely a choice of the law of that State. A fortiori, that regulation should therefore apply in the situation at issue in the main proceedings, in which, as I have explained in point 40 of the present Opinion, there are many such elements.
42.
Finally, to take the view that the situation referred to in Article 82(5) of Regulation No 6/2002 does not involve a conflict of laws within the meaning of Article 1(1) of the Rome II Regulation, on the ground that the scope of the court's jurisdiction is territorially limited, would not be without consequences for the system of private international law of the EU as a whole, excepting Community design matters, in situations other than that in the main proceedings. That would lead, in essence, to the conflict-of-law rules not being applied, even though they are also intended to designate the law applicable in such situations because of their cross-border nature.
43.
First, that could allow litigants to circumvent the conflict-of-law rules of private international law of the European Union and to avoid the application of the law designated by those rules as applicable. It would be sufficient to fragment artificially a contentious situation to give it a territorially limited scope or to target contentious claims on the territory of a single Member State. In that connection, if, under the procedural rules of the lex fori, a court of a Member State could focus the proceedings on facts located in that Member State, it would be entitled not to apply the conflict-of-law rules of private international law of the European Union.
44.
Second, the conflict-of-law rules of private international law of the EU are also not applicable to non-contractual obligations in situations where, under Regulation No 1215/2012 – which itself applies only to disputes with an international element (
27
) – a court of a Member State would, in accordance with the case-law of the Court, have jurisdiction only in respect of damage caused in the territory of that Member State. (
28
)
45.
In those circumstances, Article 1(1) of the Rome II Regulation and Article 88(2) and Article 89(1)(d) of Regulation No 6/2002 must be interpreted as meaning that, where a court of a Member State has brought before it, under Article 82(5) of the latter regulation, an action for infringement brought by a proprietor established in that Member State against the person responsible for the act of infringement, established in another Member State, which relates to the offering for sale and putting on the market of that first Member State of the products in question, that is a situation involving a conflict of laws within the meaning of Article 1(1) of the Rome II Regulation and, accordingly, Article 8(2) of that regulation designates the law applicable to supplementary claims concerning the territory of that Member State.
46.
The arguments put forward by BMW, which relate mainly to the effectiveness of Article 82(5) of Regulation No 6/2002, are not such as to call into question the validity of that interpretation.
(b) The effectiveness of Article 82(5) of Regulation No 6/2002
47.
BMW argues that the application of a law other than the lex fori in the situations referred to in Article 82(5) of Regulation No 6/2002 would reduce the effectiveness of the alternative forum established by that provision.
48.
I am of the opinion that that interpretation would undermine the effectiveness of the conflict-of-law rules of the Rome II Regulation (
29
) and, in addition, I doubt that it would ensure the effectiveness of Article 82(5) of Regulation No 6/2002.
49.
In the first place, the EU legislature, in providing for an alternative forum in Article 82(5) of Regulation No 6/2002, enables the proprietor of an EU trade mark to bring, if so desired, targeted actions, each of which relates to acts of infringement committed within a single Member State. (
30
)
50.
The Court held in AMS Neve that the effectiveness of a similar provision in EU trade mark matters is the availability of the alternative forum to the default available forum, namely, that of the defendant’s domicile. To ensure the effectiveness of that provision, the Court has interpreted it in such a way that it does not lead to the same result as a provision on the forum of the defendant's domicile. (
31
) The Court’s approach is consistent with its case-law on EU private international law. The Court, in a leading judgment on the Convention of 27 September 1968 on jurisdiction and the enforcement of judgements in civil and commercial matters, (
32
) followed the same logic when interpreting a provision on the alternative forum in matters relating to tort, delict or quasi-delict. (
33
)
51.
However, the availability of an alternative forum before which a proprietor can exercise effectively his rights should not be confused with the possibility of carefully selecting the law applicable to claims supplementary to an infringement action. (
34
) If, in the situations referred to in Article 82(5) of Regulation No 6/2002, following the provisions of private international law on succession, (
35
) the EU legislature had wished to ensure the consistency of the forum and the applicable law or, as it did in part in relation to maintenance obligations, (
36
) an indirect choice of law in such situations, it would have done so expressly.
52.
In the second place, BMW’s argument that the law of a Member State other than the lex fori should not be applied in proceedings before a court having jurisdiction under Article 82(5) of Regulation No 6/2002 – and, more specifically, that of the Member State of the place of the initial act of infringement – on the ground that applying that law carries a risk, cannot succeed. BMW maintains that applying that law would, first, enable the person responsible for the infringement to have a law, which offers the owner of a design a lesser degree of protection, designated as applying to supplementary claims under Article 8(2) of the Rome II Regulation and, second, would, in general, lead to costly expert opinions and to a considerable slowing down of the proceedings.
53.
It should be recalled that such ‘risks’ are inherent in the system of Regulation No 6/2002 and are more obvious before courts with jurisdiction under Article 82(1) to (3) of that regulation. Under Article 8(2) of the Rome II Regulation, these courts apply, by default and without any territorial limitation as to the extent of their jurisdiction, the law of the Member State where the initial act of infringement occurred. For the same reason, BMW’s arguments – that the application of the lex fori ensures optimal predictability and legal certainty as well as a reasonable balance between the interests of the parties – cannot succeed.
54.
In the third place, in asserting that the application before a court seised under Article 82(5) of Regulation No 6/2002 of a law other than the lex fori would risk undermining the effectiveness of the alternative forum, BMW appears to be unaware of the fact that that regulation itself contains provisions which the EU legislature considered necessary to ensure that a proprietor can effectively invoke his rights before the courts available to him. As stated in recital 22 to that regulation, the enforcement of those rights is to be left to national laws and it is therefore necessary to provide for some basic uniform sanctions in all Member States. In so doing, Article 89(1)(a) of the same regulation enables the courts of the Member States to prohibit the defendant ‘from proceeding with the acts which have infringed or would infringe the Community design’. Moreover, the EU legislature has, via Directive 2004/48/EC, (
37
) partially harmonised the measures, procedures and remedies necessary to ensure the enforcement of industrial property rights, such as those conferred by Regulation No 6/2002.
55.
Lastly and in the fourth place, BMW’s argument that the effectiveness of Article 82(5) of Regulation No 6/2002 may be undermined, especially where a proprietor has to assert his rights promptly in, inter alia, interlocutory proceedings, also cannot succeed. That argument appears to have no regard to the fact that the jurisdiction of a Community design court of a Member State to order provisional and protective measures is referred to principally, not in Article 82 of that regulation, but in Article 90(1) of that regulation. Under the latter provision, that court may order such provisional and protective measures as are available under the law of that Member State in respect of national designs. Article 90(1) of Regulation No 6/2002 supplements the list of provisions of that regulation reflecting the principle of lex fori processualism. (
38
) Although provisional and protective measures fall within the scope of that principle, they are also subject to the harmonisation achieved by Article 9 of Directive 2004/48.
56.
Without prejudice to the foregoing, in particular as regards the effectiveness of Article 82(5) of Regulation No 6/2002, I maintain the position I have put forward in point 45 of the present Opinion.
B.
The second question referred
57.
By its second question, which arises only if the answer to the first question is, as I propose, in the negative, the national court asks whether Article 8(2) of the Rome II Regulation is to be interpreted as meaning that, with regard to the determination of the applicable law under that provision, the concept of the law of ‘the country in which the act of infringement was committed’, within the meaning of that provision, refers to the Member State where the consumers to whom internet advertising is addressed are located and where goods infringing the rights conferred by the Community design are put on the market within the meaning of Article 19 of Regulation No 6/2002, in so far as only the offering for sale and the putting on the market in that Member State are challenged, even if the internet offers on which the offering and the putting on the market are based were launched in another Member State.
58.
The second question concerns whether, in determining the law applicable to the supplementary claims at issue in the main proceedings, it is appropriate to apply the interpretation of the concept of ‘the country in which the act of infringement was committed’ from the Nintendo judgment. The alternative would be to take the view that, when it comes to the interpretation of that concept, it is appropriate to draw inspiration from the interpretation adopted in relation to jurisdiction in the AMS Neve judgment as regards the concept of ‘Member State in whose territory the act of infringement was committed or threatened’. The second question refers to that alternative.
59.
The parties differ on that point. As is the case for the national court, the Commission is in favour of applying the interpretation of the Nintendo judgment which, according to the Commission, ought to lead to the Italian law applying to the supplementary claims at issue in the main proceedings. In BMW’s view, if the answer to the first question is in the negative, the interpretation of the judgment in AMS Neve should be followed and German law should be applied to those claims.
60.
In order to form a view on that question, it is necessary to examine, first, the meaning of the reference made in the Nintendo judgment to ‘circumstances where the same defendant is accused of various acts of infringement (…) in various Member States’ and possibly, (
39
) whether the interpretation stemming from that judgment also applies to other circumstances and, second, the extent to which the interpretation of Article 8(2) of the Rome II Regulation is to be guided by the desire to avoid applying the law of a third State.
1. The Nintendo judgment
61.
The starting point for the Court’s reasoning underlying the Nintendo judgment is the observation in paragraph 99 of that judgment that proceedings relating to intellectual property rights infringements are particularly complex: it is not uncommon for the same defendant to be accused of a number of infringing acts, with the result that a number of places could constitute, in terms of the place where the event giving rise to the damage occurred, the relevant connecting factor for determining the applicable law. That is the case, in particular, where, as is apparent from paragraph 103 of that judgment, that the facts involve the same defendant being accused of various acts of infringement committed in various Member States. In such circumstances, in order not to have to apply more than one law, a national court must, in the Court’s view, interpret the concept of the ‘country in which the act of infringement was committed’, in accordance with Article 8(2) of the Rome II Regulation, as referring to the ‘the place where the initial act of infringement at the origin of the that conduct was committed or threatened’. (
40
)
62.
More specifically, the Court first stated, in paragraph 103 of the Nintendo judgment, that, where the same defendant is accused of various acts of infringement falling under the concept of ‘use’ within the meaning of Article 19(1) of Regulation No 6/2002 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.
63.
However, in a second step, providing clarification enabling identification of the place of the initial act of infringement, in accordance with paragraph 103 of that judgment, the Court distinguished, separately and in isolation, (
41
) between situations where an operator has offered for sale via a website, products infringing Community design rights, and those where the operator has caused products allegedly infringing Community design rights to be transported by a third party undertaking to a Member State other than that in which the defendant is established.
64.
It follows that the reference in paragraph 103 of the Nintendo judgment to ‘the same defendant [being] accused of various acts of infringement’ relates, following the logic of that judgment, not to the situation where the acts of infringement constituting the different forms of ‘use’ within the meaning of Article 19(1) of Regulation No 6/2002 occurred in several Member States, but to the situation in which a number of acts of infringement representing the same form of ‘use’ were committed in various Member States.
65.
The question therefore arises as to whether there are a number of acts of infringement representing the same form of ‘use’ committed in different Member States within the meaning of paragraph 103 of the Nintendo judgment, where, as in the present case, the conduct complained of consists of an offering for sale to consumers in one Member State (Germany) and the putting of the products on the market in that Member State, and that the internet offers on which that offering is based were launched in another Member State (Italy).
66.
The Commission submits that that question should be answered in the affirmative. In essence, in the Commission’s view, what is involved are a number of acts of infringement committed in different Member States equally where there is an offering for sale of infringing products on the internet, even where the court before which the action is brought has jurisdiction only in respect of acts of infringement concerning a single Member State.
67.
That interpretation has its supporters in legal academic literature. For those supporters, because of the principle of territoriality, it is simply not possible for ‘damage’, in the sense of an infringement of an intellectual property right, to be caused in a country without a ‘triggering event’, in the sense of an act of infringement, also being committed there: those two factors necessarily coincide as regards the territory where they occur. (
42
) In a situation such as that in the present case, there are at least two acts of infringement committed in two different Member States.
68.
That interpretation is also supported by the judgment in AMS Neve, where the Court refers, in paragraph 64, to the Nintendo judgment.
69.
It is true that, in referring to the Nintendo judgment, the Court stated in the first sentence of that paragraph of the AMS Neve judgment, that ‘[the] determination of the applicable law [under Article 8(2) of the Rome II Regulation] may become necessary when an infringement action, brought before a court that has jurisdiction to give rulings on acts of infringement committed within any Member State, relates to various acts of infringement, committed in different Member States’. A priori, that statement may suggest that the interpretation stemming from the Nintendo judgment does not concern situations where an action is brought before a court under Article 82(5) of Regulation No 6/2002 and has jurisdiction only to rule on acts of infringement committed or threatened in the territory of the Member State where that court is located.
70.
However, that statement merely describes the dispute that gave rise to the reference for a preliminary ruling in the Nintendo case and does not exclude the interpretation of the Nintendo judgment applying to the situations referred to in Article 82(5) of Regulation No 6/2002.
71.
More importantly, the Court stated in paragraph 64 of AMS Neve that ‘In such circumstances, [ (
43
)] in order to ensure that a court does not have to apply more than one law, one alone of those acts of infringement, namely the initial act of infringement, must be identified as determinative of the law applicable to the proceedings’. It follows that, as regards the allegedly wrongful conduct which was the subject of the Nintendo judgment, and in particular the offering of allegedly infringing goods for sale online, the initial act of infringement (the initiation of the process of putting the offer for sale online) is one of the acts of infringement. Apart from that initial act of infringement, the other acts of infringement in such a case are committed in the Member States where the consumers are located for whom that website is accessible.
72.
It must therefore be held that, in the present case, as regards the determination of the applicable law under Article 8(2) of the Rome II Regulation, in the circumstances where the conduct complained of consists of offering for sale to consumers who are located in a Member State (Germany) and the putting on the market of the products in that Member State and where the internet offers on which the offering and the putting on the market are based were launched in another Member State (Italy), there are at least two acts of infringement committed in Germany and Italy respectively.
73.
Therefore, in accordance with the interpretation stemming from the Nintendo judgment, the consideration that, in order to ensure that a court does not have to apply more than one law, one alone of those acts of infringement, namely the initial act of infringement, must be identified as determinative of the law applicable to the proceedings, is to apply equally as regards the determination of the law applicable to the supplementary claims at issue in the main proceedings. In the light of paragraph 108 of that judgment, the initial act of infringement in the present case is that of initiating the process of putting online the offer for sale by an operator on the site belonging to it.
74.
Article 8(2) of the Rome II Regulation must therefore be interpreted as meaning that, as regards the determination of the law applicable to claims supplementary to the infringement action described in the answer to the first question, the concept of ‘country in which the act of infringement was committed’, within the meaning of that provision, refers to the country of the place where the initial act of infringement, at the origin of the allegedly wrongful conduct, was committed.
75.
That consideration is not called into question by the arguments which seek to demonstrate that, in the case of a defendant established in a third State, the interpretation stemming from the Nintendo judgment is capable of leading to the law of a third country being designated as the law applicable to any matter that is not governed by Regulation No 6/2002.
2. The case of a defendant established in a third State
76.
In the course of the debate in the proceedings before the Court, as well as in academic legal debates, attention has been drawn to the implications of the interpretation of the Nintendo judgment with regard to the situation where the place of the original act of infringement which gave rise to the allegedly wrongful conduct, is in a third country. It appears that one of the reasons for the opinion, as expressed in those debates, that the interpretation of that judgment does not apply to the situations referred to in Article 82(5) of Regulation No 6/2002, results from a desire to avoid the law of a third country applying.
77.
However, to interpret Article 8(2) of the Rome II Regulation as meaning that, when the applicable law for subsequent claims brought before a court under Article 82(5) of Regulation No 6/2002 is to be determined, the lex fori always applies and, therefore, to answer the second question in the affirmative, would fail to resolve, in contexts which differ from that of the present reference for a preliminary ruling, the continuing problem of the offering for sale and advertising on the internet, by operators established in third countries, of products infringing unitary Community intellectual property rights.
78.
Such operators established in third countries can, in principle, have actions brought against them in the courts of the domicile of a claimant in EU territory or, in the alternative, of the place of its establishment in the EU territory or, in the further alternative, before the EUIPO courts. (
44
)
79.
In those situations, first, the scope of the jurisdiction of a court hearing an infringement action would not be focused on the territory of a single Member State. In addition, in the words of paragraph 103 of the Nintendo judgment, the proceedings would concern several infringing acts. There would therefore, a priori, be no reason not to apply the interpretation stemming of that judgment which would lead to the law of a third country being designated as applying to claims which are supplementary to an infringement action.
80.
Second, in order to rely on the law of a Member State in so far as it relates to such claims supplementary to an action for infringement, the proprietor would have to apply to the courts under Article 82(5) of Regulation No 6/2002. Moreover, in order to rely on such a law and seek protection in respect of the entire territory of the Union, that holder would have to bring proceedings in all the Member States. From the point of view of the scheme of that regulation and in view of the territorial scope of the rights of the proprietor of a Community design, which are unitary in character and extend, in principle, to the whole of the territory of the Union, such a result appears unsatisfactory.
81.
That being said, it is true that Article 3 of the Rome II Regulation provides that the law designated as applicable by that regulation applies even if that law is not the law of a Member State.
82.
However, the application of the law of a third country in order to supplement the EU Regulation in respect of a unitary Community intellectual property right may give rise to doubts.
83.
The territorial scope of the rights of the Community design holder, conferred under Regulation No 6/2002 extends, as a rule, to the entire area of the European Union, on which designs enjoy uniform protection and have effect. (
45
) A Community intellectual property right within the meaning of Article 8(2) of the Rome II Regulation cannot therefore be infringed in a country which does not recognise that right. That interpretation is based on consideration which may be reminiscent of those formulated by the legal academic literature regarding the infringements of intellectual property rights occurring at the same time as acts of counterfeiting. (
46
) Moreover, the harmonisation achieved by Directive 2004/48 as regards the measures, procedures and remedies necessary to ensure respect for industrial property rights conferred, inter alia, by Regulation No 6/2002 concerns only the Member States.
84.
Consequently, where the internet offers on which the offering for sale and putting on the market are based were made in another third country, that country cannot constitute a ‘country in which the act of infringement was committed’’ within the meaning of Article 8(2) of the Rome II Regulation. In determining the applicable law under that provision, account should be taken solely of the laws of the Member States where consumers addressed by an online advertisement are located and where the products in question are put on the market. Unlike other conflict rules in the regulation, the conflict rule in Article 8(2) thereof therefore designates solely the laws of the Member States as the applicable law. However, that conflict rule does not exist in a legal vacuum and must be read in conjunction with the regulations on unitary Community intellectual property rights which enjoy uniform protection and have effects throughout the EU.
85.
It is certainly true that that interpretation may lead to a number of laws being intended to be applied as the applicable law under Article 8(2) of the Rome II Regulation. In order not to have to apply a number of laws, it is necessary at least to attempt to identify an initial or central act of infringement for the territory of the EU.
86.
In that context, while recognising the shortcomings of the interpretation stemming from the Nintendo judgment, it is argues in legal academic literature that where the initial act of infringement within the meaning of that judgment took place in a third country, consideration could be given to applying not the law of that country but the law of one of the Member States in which the infringement has had an impact, or the law of a Member State closely linked to the infringement of the intellectual property rights. (
47
)
87.
Without prejudice to the additional remarks set out above, I maintain the position I have put forward at point 74 of the present Opinion.
VI. Conclusion
88.
In the light of the foregoing considerations, I propose that the Court answer the questions referred for a preliminary ruling by the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) as follows:
(1)
Article 1(1) 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’) and Article 88(2) and Article 89(1)(d) of Council Regulation No 6/2002 (EC) of 12 December 2001 on Community designs must be interpreted as meaning that, where a court of a Member State has brought before it, under Article 82(5) of the latter regulation, an action for infringement is brought by a proprietor established in that Member State against the person responsible for the act of infringement, established in another Member State, which relates to the offering for sale and putting on the market of that first Member State of the products in question, that is a situation involving a conflict of laws within the meaning of Article 1(1) of Regulation No 864/2007 and, accordingly, Article 8(2) of that regulation designates the law applicable to supplementary claims concerning the territory of that Member State.
(2)
Article 8(2) of Regulation No 864/2007 must be interpreted as meaning that, as regards the determination of the law applicable to claims supplementary to that action for infringement, the concept of ‘country in which the act of infringement was committed’, within the meaning of that provision, refers to the country of the place where the initial act of infringement, at the origin of the allegedly wrongful conduct, was committed.
(
1
)	Original language: French.
(
2
)	Regulation of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2012 L 351, p. 1).
(
3
)	Regulation of the European Parliament and of the Council, of 17 June 2008, on the law applicable to contractual obligations (Rome I) (OJ 2008 L 177, p. 6, ‘the Rome I Regulation’).
(
4
)	Regulation 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, ‘the Rome II Regulation’).
(
5
)	See the judgments of 1 March 2005, Owusu (C‑281/02, EU:C:2005:120, paragraphs 25 and 26), and of 25 February 2021, Markt24 (C‑804/19, EU:C:2021:134, paragraph 32 and the case-law cited).
(
6
)	See, in particular, the first sentence of Article 1(1) of the Rome II Regulation.
(
7
)	Article 67 of Regulation No 1215/2012 states that that regulation is not to prejudice the application of provisions in specific matters which are contained in EU instruments. Article 27 of the Rome II Regulation provides that that regulation is not to prejudice the application of provisions of EU law which, in relation to particular matters, lay down conflict-of-law rules relating to non-contractual obligations.
(
8
)	Council Regulation of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
(
9
)	Judgment of 27 September 2017 (C‑24/16 and C‑25/16, the Nintendo judgment, EU:C:2017:724).
(
10
)	Judgment of 05 September 2019, (C‑172/18, the AMS Neve and Others judgment, EU:C:2019:674).
(
11
)	Regulation of the European Parliament and of the Council of 14 June 2017 on the European Union trademark (OJ 2017 L 154, p. 1). See my Opinion in the AMS Neve case. (Case C‑172/18 EU:C:2019:276, points 29 to 32).
(
12
)	See the Nintendo judgment, paragraph 93.
(
13
)	See, to that effect, J. Fawcett and P. Torremans, Intellectual Property and Private International Law, Oxford University Press, Oxford, 2011, p. 743, point 13.158.
(
14
)	See, to that effect De Miguel Asensio, P., Conflict of Laws and the Internet, Edward Elgar Publishing Limited, Cheltenham, 2020, paragraph 5.123 For the sake of completeness, I would like to point out that, according to one of the academic interpretations, Article 88(3) of Regulation No 6/2002 – which designates the lex fori as the law applicable to the matters covered by that provision – constitutes a lex specialis in relation to Article 88(2) of that regulation in so far as the latter also covers procedural matters. See Späth, A., ‘Article 88’, Community Design Regulation (EC) No 6/2002 – A Commentary, edited by Hasselblatt, G. N., C. H. Beck, Munich, 2015, p. 512. However, in the context of the dispute in the main proceedings, it is not necessary to enter into the legal academic debate on the scope of Article 88(2) of Regulation No 6/2002. In the present case, what is important is to determine whether the supplementary claims at issue in the main proceedings are covered by the principle of lex fori processualis, which finds expression in Article 88(3) of that regulation.
(
15
)	Judgment of 13 February 2014 (C‑479/12, EU:C:2014:75).
(
16
)	See judgment of 13 February 2014 (C‑479/12, EU:C:2014:75, paragraph 52).
(
17
)	Judgment of 13 February 2014 (C‑479/12, EU:C:2014:75, paragraph 53).
(
18
)	Judgment of 13 February 2014, (C‑479/12, EU:C:2014:75).
(
19
)	Paragraph 47 of that judgement.
(
20
)	Article 1(1) of the Rome II Regulation also states that the regulation applies to non-contractual obligations in civil and commercial matters. However, there is nothing to suggest that that case does not concern such obligations.
(
21
)	(OJ 1980 L 266, p. 1).
(
22
)	See, in particular, Van Calster, G., European Private International Law, Hart Publishing, Oxford, Portland, 2016, p. 240.
(
23
)	On the different interpretations of those terms given by the legal academic literature, see my Opinion in the Vinyls Italia case (C‑54/16, EU:C:2017:164, points 97 to 107). See also Wilke, F.M., Dimensions of Coherence in EU Conflict-of-Law Rules, Journal of Private International Law, vol. 16, No. 1., 2020, pp. 179 and 180.
(
24
)	See, by analogy, judgment of 17 October 2018, UD (C‑393/18 PPU, EU:C:2018:835, paragraphs 38 to 41).
(
25
)	See Hörnle, J., Internet Jurisdiction Law and Practice, Oxford University Press, Oxford, 2021, p. 269 and 270.
(
26
)	See Van Calster, G., European Private International Law, Hart Publishing, Oxford, Portland, 2016, p. 240, which explains those terms in the sense that there must be some sort of international factual connection to the case for the forum to have to, at least, consider the possibility that laws other than its own apply. In that regard, see the commentary on the reference for a preliminary ruling in the present case by Kur, A., ‘Easy Is Not Always Good – The Fragmented System for Adjudication of Unitary Trade Marks and Designs’, International Review of Intellectual Property and Competition Law, vol. 52, 2021, p. 590. According to that comment, to take the view that the interpretation that Article 8(2) of the Rome II Regulation does not apply in the main proceedings would be possible only if that dispute had no cross-border impact. However, according to that author, such an impact clearly exists in the present case: not only is the defendant a company based in Italy, but the infringement concerns a unitary right that extends to the whole of the Union.
(
27
)	See point 2 of the present Opinion.
(
28
)	See, in particular, the scenarios referred to by the Court in its judgment of 21 May 2015, CDC Hydrogen Peroxide (C‑352/13, EU:C:2015:335, paragraph 55), and of 21 December 2016, Concurrence (C‑618/15, EU:C:2016:976, paragraph 31).
(
29
)	See point 42 of the present Opinion.
(
30
)	See, by analogy, AMS Neve judgment, paragraphs 42 and 63.
(
31
)	AMS Neve judgment, paragraphs 49 to 52.
(
32
)	(OJ 1972 L 299, p. 32).
(
33
)	See judgment of 30 November 1976, Bier (21/76, EU:C:1976:166, paragraph 20).
(
34
)	See, in that regard, Rosati, E., ‘Targeting Accepted As a Criterion to Establish International Jurisdiction in Online EU Trade Mark Infringement Cases’, Journal of Intellectual Property Law & Practice, vol. 14, No 12, 2019, p. 927, which appears to focus on the availability of the alternative forum before which a proprietor may exercise his rights and distinguishes it from the substance of the dispute which that proprietor may bring before that forum. After focusing on the availability of the alternative forum, that author states: ‘For a claimant to be able to rely effectively on paragraph 5 – and make it worthwhile for him/her to start proceedings in a certain Member State – it would be in fact necessary to demonstrate not only that the defendant has acted in that territory by activating the relevant display process, but also that the activity at issue may be considered as having been directed to consumers on that specific territory.’
(
35
)	See my Opinion in Oberle (C‑20/17, EU:C:2018:89, point 104).
(
36
)	See my Opinion in KP (C‑83/17, EU:C:2018:46, points 77 to 79).
(
37
)	Directive of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ 2004 L 157, p. 45).
(
38
)	See point 27 of the present Opinion.
(
39
)	In the event that it turns out that, in the present situation, that no such circumstances are involved.
(
40
)	In so doing, the Court distanced itself from the interpretation adopted by the national court of first instance in the dispute which gave rise to the reference for a preliminary ruling in the Nintendo case. In that case, that court had considered the applicable law to be ‘that of the place of infringement’ and took the view, in that case, that that was German, Austrian and French law. See the Nintendo judgment, paragraph 28.
(
41
)	See paragraphs 106 and 109 of the Nintendo judgment. See also Azzi, T., ‘Tribunal compétent et loi applicable en matière de contrefaçon de dessins et modèles communautaires’, Revue critique de droit international privé, No 4, 2018, p. 847, which seems to note a contradiction between the abovementioned paragraphs of that judgment and its paragraph 103.
(
42
)	See Kur, A., op.cit., p. 588.
(
43
)	See point 69 of the present Opinion: ‘when an infringement action, brought before a court that has jurisdiction to give rulings on acts of infringement committed within any Member State, relates to various acts of infringement, committed in different Member States’ (first sentence of paragraph 64 of the AMS Neve judgment).
(
44
)	See point 22 of the present Opinion.
(
45
)	See the Nintendo judgment, paragraph 59.
(
46
)	See point 67 of the present Opinion. See also, Kur, A., Maunsbach, U, ‘Choice of Law and Intellectual Property Rights’, Oslo Law Review, vol. 6, No 1, 2019, which suggests that where an initial act of infringement within the meaning of the Nintendo judgment has taken place in a third country which does not protect Community designs, the principle of lex loci protectionis, which is widely used in private international law in relation to intellectual property rights, militates against the application of the law of that third country to claims supplementary to an action for infringement. De Miguel Asensio, P., op. cit., paragraph 5.128, is more categorical and states that, given the function and context of Article 8(2) of the Rome II Regulation, there seems to be no doubt that, by virtue of that provision, it is the law of a Member State which must be applied to any matter that does not fall within the scope of Regulation No 6/2002.
(
47
)	See De Miguel Asensio, P., op. cit., paragraph 5.128. See also, in that regard, Kur, A., op. cit., p. 591. However, that author does not appear to rule out completely the application of a plurality of laws.