- Alert: Advocate General opines on territorial scope of Member State decisions (Nintendo Co Ltd v BigBen Interactive GmbH and BigBen Interactive SA)
- Original news
IP & IT analysis: This Opinion of the Advocate General (AG) concerned three questions which were referred to the AG regarding the protection of Community designs and design infringement. The main proceedings were brought by Nintendo Co Ltd (Nintendo), which sells the Wii video game and is the holder of several Community designs relating to accessories, including ‘Nunchuks’, ‘Balance Boards’ and remote controls. BigBenInteractive SA (BigBen France) is a market leader in the design and distribution of video game accessories and manufactures the same accessories, which it sells to various customers in Europe, including its German subsidiary BigBen Interactive GmbH (BigBen Germany) which operates on the German and Austrian markets. Nintendo asserted that those goods infringed its Community registered designs and, among other things, sought an order requiring both defendants to cease the manufacture, import and export of the relevant goods and prohibiting them from depicting and using the image of the goods incorporating the protected designs. The Regional Court of Düsseldorf upheld the claim for infringement by both defendants. Of the three questions subsequently referred to the AG by the Higher Regional Court of Düsseldorf, the AG held, among other things, first, that Article 79(1) of Council Regulation (EC) 6/2002 (the Regulation), in conjunction with Article 6(1) of Council Regulation (EC) 44/2001 on jurisdiction was to be interpreted such that decisions adopted by a national court in response to claims that were supplementary to an action for infringement in respect of two co-defendants domiciled in two different Member States had legal effect throughout the entire territory of the EU. Second, the concept of ‘other sanctions’ in Article 89(1)(d) of the Regulation referred to claims such as the destruction of the infringing goods, the recall of those goods and publication of the judgment, but not to claims relating to compensation for damage, disclosure of company accounting information or reimbursement of lawyers’ fees. Third, the concept of ‘acts of reproduction for the purpose of making citations’ in Article 20(1)(c) of the Regulation included use by a third party of the image of goods incorporating protected Community designs for the purposes of selling its own goods. An In brief analysis of this case will follow in due course.
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