Damage claims and other ancillary claims deriving from an infringement of a Registered Community Design (RCD) have to be assessed for the territory of the entire European Union based on the laws of only one member state. This practically highly important conclusion stems from a recent judgment of the Court of Justice of the European Union (judgment of September 27, 2017, joined cases C-24/16 and C-25/16 Nintendo v BigBen Interactive).

Registered Community Designs as well as European Union Trademarks (EUTMs) provide uniform protection throughout all member states of the European Union. Already in 2011, the Court of Justice of the European Union confirmed that, generally speaking, infringing activities in only one country justify court orders covering the territory of the entire European Union (namely pan-European injunctions). This finding was, however, limited to claims for injunctive relief. German courts thus held that all ancillary claims like damage claims and claims for disclosure of sales information must be assessed on the basis of the laws of all EU member states in which the individual infringing activities occurred. Theoretically, a court called upon thus had to apply the laws of several national jurisdictions in parallel (so-called “Mosaic approach”). In practice, the claimant in German infringement proceedings usually limited the scope of his ancillary requests to the territory of Germany in order to prevent the lengthy and costly determination of the legal situation under the laws of several countries.

In its new judgment of September 27, 2017, the European Court of Justice now found that the laws of only one national jurisdiction apply to such ancillary design infringement claims covering the territory of the entire European Union. Applicable are the laws of the country on whose territory the act of infringement was committed. If the defendant is accused of various acts of infringement in different EU member states, an overall assessment of the defendants’ conduct has to be made in order to determine the place where the initial act of infringement at the origin of that conduct was committed. For example, if design infringing offers are made via an Internet website, the place where the event giving rise to the damage occurred is the place where the process of putting the offer for sale online by the defendant on its website was activated.

Practical Impact:

As the legal instruments and regulations provided for Registered Community Designs are a very similar to those for European Union Trademarks, the new findings of the Court of Justice of the European Union will also apply in cases of an infringement of EUTMs.

Enforcing ancillary claims deriving from an infringement of RCDs or EUTMs throughout the European Union will become significantly easier. The court called upon will only have to apply the laws of one EU member state in order to determine the merits of such claims. Usually, if the defendant has his place of business in Germany, the focus of his infringing activities will also be in Germany and the German courts should thus apply German law which they are already highly familiar with. This will significantly speed up such proceedings as no expert opinions regarding the legal situation in other EU member states have to be sought by the courts.