Nintendo Co. Ltd v BigBen Interactive GmbH and BigBen Interactive SA.
Date: 2017-09-27
39


In that regard, it should be noted that, under Article 82 of Regulation No 6/2002, subject to the provisions of that regulation and those of the Brussels Convention that are applicable, as a reference to that convention must be understood, by virtue of Article 68(2) of Regulation No 44/2001, as a reference to that regulation, the jurisdiction of the Community design courts provided for in Article 80(1) of Regulation No 6/2002 to decide the actions and claims referred to in Article 81 thereof results from rules directly provided for by that regulation (see, to that effect, judgment of 13 July 2017, Bayerische Motoren Werke, C‑433/16, EU:C:2017:550, paragraph 39).
42


Those rules have the character of lex specialis in relation to the rules provided for by Regulation No 44/2001 (judgment of 13 July 2017, Bayerische Motoren Werke, C‑433/16, EU:C:2017:550, paragraph 39).
45


In order for Article 6(1) of Regulation No 44/2001 to apply, it must be ascertained whether, between various claims brought by the same applicant against various defendants, there is a connection of such a kind that it is expedient to determine those actions together in order to avoid the risk of irreconcilable judgments resulting from separate proceedings. For decisions to be regarded as irreconcilable, it is not sufficient that there be a divergence in the outcome of the disputes, but that divergence must also arise in the context of the same situation of fact and law (judgment of 21 May 2015, CDC Hydrogen Peroxide, C‑352/13, EU:C:2015:335, paragraph 20 and the case-law cited).
46


In that regard, although it follows from the Court’s case-law on patents that, where infringement proceedings are brought before a number of courts in various Member States in respect of a European patent granted in each of those States, against defendants domiciled in those States in respect of acts allegedly committed in their territory, any divergences between the decisions given by the courts concerned would not arise in the context of the same situation of law, since any action for infringement of a European patent must be examined in the light of the national law in force in each of the States for which it has been granted. Any diverging decisions could not, therefore, be treated as contradictory (judgment of 13 July 2006, Roche Nederland and Others, C‑539/03, EU:C:2006:458, paragraphs 30 to 32).
47


In the proceedings before the Court, the defendants in the main proceedings have inter alia contended, referring to that case-law, that some of the claims made by the applicant in the main proceedings seeking the provision of information, accounts and documents by the defendants, an order to pay compensation, the destruction and recall of the goods at issue, reimbursement of the lawyers’ fees and publication of the judgment, depend on the application by the court with jurisdiction of provisions of national law and cannot therefore fall within the same situation of law. As the Advocate General notes in points 45 to 52 of his Opinion, such claims are referred to either in Article 89(1)(d) of Regulation No 6/2002 or in Article 88(2) thereof, each of those provisions referring to national law. It follows that those claims are not governed independently by Regulation No 6/2002, but are a matter of the applicable national law (see, to that effect, judgment of 13 February 2014, H. Gautzsch Großhandel, C‑479/12, EU:C:2014:75, paragraphs 52 to 54).
51


Having regard to the circumstances of the cases in the main proceedings, where one of the defendants in the main proceedings is a parent company and the other its subsidiary, which the applicant in the main proceedings accuses of similar, if not identical, acts that infringe the same protected designs and relate to identical allegedly infringing goods made by the parent company that sells them on its own account in certain Member States and also sells them to its subsidiary so that the latter may sell them in other Member States, it should be recalled that the Court has already held that the case in which defendant companies belonging to the same group have acted in an identical or similar manner in accordance with a common policy elaborated by one of them must be regarded as constituting the same situation of fact (see, inter alia, judgment of 13 July 2006, Roche Nederland and Others, C‑539/03, EU:C:2006:458, paragraph 34).
53


As regards the territorial scope of the orders relating to sanctions and other measures sought by the applicant in the main proceedings in respect of each defendant in the main proceedings, it should be noted that the Court has already held that the territorial scope of the prohibition against further infringement or threatened infringement of a Community trade mark, as provided for in Article 98(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Council Regulation (EC) No 3288/94 of 22 December 1994 (OJ 1994 L 349, p. 83; ‘Regulation No 40/94’), is to be determined both by the territorial jurisdiction of the Community trade mark court issuing that prohibition and by the territorial extent, resulting from Regulation No 40/94, of the Community trade mark proprietor’s exclusive right which is adversely affected by the infringement or threatened infringement (judgment of 12 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraph 33).
59


As regards, in the first place, the territorial scope of the rights of the Community design holder, conferred under Regulation No 6/2002, they extend, as a rule, to the entire area of the European Union, on which designs enjoy uniform protection and have effect (see, by analogy, judgment of 12 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraph 39).
66


Secondly, that interpretation is capable of ensuring the attainment of the objective pursued by Regulation No 6/2002 of providing effective protection of registered Community designs throughout the European Union (see, to that effect, judgment of 16 February 2012, Celaya Emparanza y Galdos International, C‑488/10, EU:C:2012:88, paragraph 44).
70


Next, it must be examined whether such an act of reproduction was carried out for the purposes of making ‘citations’. In that regard, Article 20(1)(c) of Regulation No 6/2002 makes no reference to the law of the Member States on the concept of ‘citations’. However, the need for a uniform application of EU law and the principle of equality require the terms of a provision of EU law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope normally to be given an independent and uniform interpretation throughout the EU; that interpretation must take into account not only the wording of the provision but also its context and the objectives pursued by the rules of which it is part (see, inter alia, judgments of 3 September 2014, Deckmyn and Vrijheidsfonds, C‑201/13, EU:C:2014:2132, paragraph 14, and of 10 December 2015, Lazar, C‑350/14, EU:C:2015:802, paragraph 21).
72


According to settled case-law, a purely literal interpretation of one or more language versions of a text of EU law, to the exclusion of the others, cannot prevail since the uniform application of EU rules requires that they be interpreted, inter alia, in the light of the versions drawn up in all the languages. Where there is a divergence between the language versions of an EU text, the provision in question must be interpreted by reference to the general scheme and purpose of the rules of which it forms part (see, inter alia, judgments of 4 September 2014, Vnuk, C‑162/13, EU:C:2014:2146, paragraph 46 and the case-law cited, and of 26 April 2017, Popescu, C‑632/15, EU:C:2017:303, paragraph 35).
73


As regards the objective of Regulation No 6/2002, it should be recalled that, according to recitals 6 and 7 thereof, it establishes the protection of design rights for one area encompassing all the Member States, an enhanced protection for industrial design encouraging innovation and development of new products and investment in their production. The Court has also already stated that the objective of that regulation is to ensure effective protection of registered Community designs (see, to that effect, judgment of 16 February 2012, Celaya Emparanza y Galdos International, C‑488/10, EU:C:2012:88, paragraph 44).
74


Therefore, provisions limiting the rights granted to the holder of such designs by virtue of that regulation, such as Article 20(1)(c) thereof, must be interpreted strictly, without, however, such an interpretation undermining the effectiveness of the limitation thereby established and disregarding its purpose (see, by analogy, judgment of 1 December 2011, Painer, C‑145/10, EU:C:2011:798, paragraphs 109 and 133).
79


As regards, first, the condition that the acts of reproduction for the purpose of making citations must be compatible with fair trade practice, the Court has already interpreted the concept of ‘honest practices in industrial or commercial matters’, inter alia within the meaning of Article 6(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), as constituting the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner (judgment of 17 March 2005, Gillette Company and Gillette Group Finland, C‑228/03, EU:C:2005:177, paragraph 41 and the case-law cited). It is appropriate to apply that case-law mutatis mutandis for the purpose of interpreting the concept of ‘fair trade practice’ within the meaning of Article 20(1)(c) of Regulation No 6/2002.
80


Therefore, an act of reproduction of a protected design for the purpose of making citations or of teaching is not compatible with fair trade practice within the meaning of that provision where it is done in such a manner that it gives the impression that there is a commercial connection between the third party and the holder of the rights conferred by those designs, or where the third party, who wishes to rely on that limitation in the course of selling goods that are used jointly with goods corresponding to the protected designs, infringes the rights conferred on the holder of the design protected by Article 19 of Regulation No 6/2002, or where that third party takes unfair advantage of the holder’s commercial repute (see, by analogy, judgment of 17 March 2005, Gillette Company and Gillette Group Finland, C‑228/03, EU:C:2005:177, paragraphs 42, 43, 45, 47 and 48).
88


While it is true that the referring court has not yet made any findings as to the existence of an infringement of the rights of the applicant in the main proceedings conferred by the Community designs, it cannot be considered, contrary to what the European Commission suggests, that the third question is consequently inadmissible. It is for the national courts alone to determine, having regard to the particular features of each case, both the need for a preliminary ruling in order to enable them to give their judgment and the relevance of the questions which they refer to the Court. Furthermore, the finding of such an infringement in the disputes in the main proceedings is not purely hypothetical (see, to that effect, judgment of 4 May 2017, HanseYachts, C‑29/16, EU:C:2017:343, paragraph 24).
91


In that regard, it must first of all be noted that, according to its wording, Article 8(2) determines, in the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable to any question that is not governed by the relevant Community instrument by referring to the law of the country in which the act of infringement was committed.
92


Admittedly, the sanctions and measures sought in the cases in the main proceedings against the defendants in the main proceedings and which are the subject of the third question fall within the sanctions and measures referred to in Article 88(2) and Article 89(1)(d) of Regulation No 6/2002 (see, to that effect, judgment of 13 February 2014, H. Gautzsch Großhandel, C‑479/12, EU:C:2014:75, paragraphs 52 to 54).
93


Nevertheless, those provisions do not govern those sanctions and measures independently, but refer, as stated in paragraphs 47 and 89 of the present judgment, to the law of the Member States they designate, including their private international law. Accordingly, in so far as the private international law of the Member States, excluding the Kingdom of Denmark, concerning the conflict‑of‑law rules applicable in civil and commercial matters to non-contractual obligations, including such obligations arising from infringements of unitary Community intellectual property rights, has been harmonised through the adoption of Regulation No 864/2007 (see, to that effect, judgment of 21 January 2016, ERGO Insurance and Gjensidige Baltic, C‑359/14 and C‑475/14, EU:C:2016:40, paragraph 37), that reference must, provided that it relates to private international law, be understood as covering the provisions of that regulation.
102


The Court has already held that Regulation No 864/2007 aims, in accordance with recitals 6, 13, 14 and 16 thereof, to ensure the predictability of the outcome of litigation, legal certainty as to the law applicable and the uniform application of that regulation in all the Member States (judgment of 17 November 2011, Homawoo, C‑412/10, EU:C:2011:747, paragraph 34). Furthermore, the EU legislature wished, as is apparent from recitals 16 and 19 of Regulation No 864/2007, by establishing the connecting factors laid down in that regulation, to strike a reasonable balance between the interests of the person claimed to be liable and the person who has sustained damage. The connecting factor laid down in Article 8(2) of that regulation must therefore be interpreted by bearing in mind the objectives recalled above and the characteristics of the area in which it is supposed to apply.
103


In the light of those objectives, 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.
104


Such an interpretation enables the court seised easily to identify the law applicable by using a single connecting factor linked to the place where the act of infringement at the origin of several acts alleged against a defendant was committed or threatened, in accordance with the objectives recalled in paragraph 102 of the present judgment. It also ensures the predictability of the law thus designated for all the parties to disputes concerning infringements of EU intellectual property rights.