The applicable law for design infringement. Szpunar AG in Acacia v BMW.

First Advocate-General Szpunar opined a the end of October in C-421/20 on the law applicable to a damages suit following infringement of Community Design rights. No English edition of the Opinion is as yet available.

The two parties had earlier been at loggerheads on the jurisdictional issues, see CJEU C-433/16 BMW v Acacia and the provisional measures implications of the relevant Regulation 6/2002  were discussed in Spin Master. Current case not only puts into the spotlight the ‘international’ dimension required to trigger EU conflict of laws (it is in this section that I was pleased to see the AG refer to the 2016 ed of the Handbook), it also discussed the relationship between the core EU Regulations Brussels Ia, Rome I and II on the one hand, and lex specialis on the other, in the case at issue: A82(5) Regulation 6/2002: ‘5. 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.’ The result of the jurisdictional provisions is a cascade system which is also present in the relevant Trademark Regulation, prompting the AG to seek inspiration in CJEU AMS Neve.

BMW’s action, which was granted by the first instance German courts, seeks not just inductive relief viz Acacia’s distribution of wheel rims in Germany, but also damages for the alleged Community design infringement and (with a view to supporting the damages claim), access to documents, accounts etc. – this will have an immediate echo to readers of the blog I assume of ‘procedural’ issues to which I (and the AG) return below.

A relevant provision in the Community Design Regulation – CDR is Article 88, 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.

A similar reference to national law with renvoi, is present in A89 with respect to ‘sanctions in actions for infringement’. With the inclusion of renvoi (‘a Community design court shall apply its national law, including its private international law’) inevitably reference is made to Rome II for that Regulation forms the applicable private international law in the Member States.

A first question was whether BMW’s requests re access to documentation, may be subject to lex fori processualis – answered in the negative by the AG with reference to CJEU C‑479/12 H. Gautzsch Großhandel , and to CJEU Nintendo. Whether these observations (and authorities) on the procedural issues extends to Rome I /II is not discussed. Readers will be aware that I find that an important question that remains outstanding.

The next issue is whether Rome II and /or the CDR apply at all to the litigation at issue in view of the light ‘international’ touch to the case. In view inter alia of the AG’s own Opinion in Vinyls Italia, he answers in the affirmative. For more detail on the issue please refer to the Opinion however I find among others his point convincing (43) that a restrictive view within the Community Design (and other intellectual property rights litigation) sphere, would hand a means to claimants artificially to split their claims so as to shop for the lex fori in Mozaik fashion. He rejects BMW’s alternative view based on the effet utile of A82(5) CDR. 

Up next is the question whether, having established Rome II applies, A8(2) Rome II needs to be applied using AMS Neve or alternatively Nintendo, to determine the ‘country in which the act of infringement was committed’. There is much detail on this in the Opinion (readers may refer to Annette Kur’s paper which also discussed this and is referred to in the Opinion), with the AG I think opting for the Nintendo route – I am not too proud to admit as I have done before, that the specific relation between secondary IPR law and EU conflict of laws, is not my specialty.

Geert.

 

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