Nintendo v Big Ben Interactive GmbH, Big Ben Interactive S.A[1]

The CJEU has recently held that a Community Designs Court may grant a pan-European injunction where there are multiple connected defendants based across the EU.

Facts

Nintendo produces video games, video game consoles including the Wii video games and accessories. It is the registered proprietor of several EU Registered Community Designs (RCD).

Big Ben France makes remote controls and other accessories compatible with the Wii video games and sells them directly via its website to customers in France, Belgium and Luxembourg. Big Ben Germany is a subsidiary of Big Ben France. Whilst Big Ben Germany does not make any products, it sells products via its website to customers in Germany and Austria by forwarding orders received to Big Ben France who then supplies its products from France.

Nintendo brought proceedings against Big Ben France and Big Ben Germany in the Regional Court, Dusseldorf, Germany for infringements of its registered community design rights and also in relation to the use of the images of the goods corresponding to Nintendo’s designs.

The law

The Recast Brussels Regulation[2] on jurisdiction sets out that jurisdiction is generally based on the defendant’s domicile. It further states that a person domiciled in a Member State may also be sued “where he is one of a number of defendants, in the courts where any one of them is domiciled provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.”

The Community Designs Regulation[3] (CDR) sets out that a Community design has unitary character and equal effect throughout the EU. The CDR gives the power to a Community design court which is effectively the court of a member state which is seised, to grant several sanctions against a defendant such as injunctions, orders to seize infringing products.

A Community Design Court in a particular EU territory can take jurisdiction based on the Defendant being based within that territory, in which case it has pan-European jurisdiction; or based on the alleged infringing acts being committed within that territory, in which case it only has jurisdiction within its national territory.

Decision at first instance

The Dusseldorf Court held that Big Ben France and Big Germany had infringed Nintendo’s RCDs and ordered both defendants to cease using the designs in the EU.

Nintendo and both defendants appealed the decision to the Higher Regional Court in Dusseldorf on various points. Big Ben France argued that the German courts lacked jurisdiction to grant pan-EU orders against it and that such orders should only have national territorial scope in Germany. The Higher Regional Court referred this point to the Court of Justice European Union (CJEU) on jurisdiction.

The question that was referred on this subject in essence was where the international jurisdiction of a Community design court is seised against a first defendant based in the territory of the court and where a second defendant based in a different Member State makes and supplies goods to the first defendant, can the Community design court seised apply sanctions to the second defendant throughout the European Union.

CJEU decision

The CJEU referred to the Recast Brussels Regulation on jurisdiction and relevant CJEU case law.

The CJEU also stated that the CDR does not specifically state what the territorial scope of a Community design right ought to be in the particular factual circumstances arising in this case. The CJEU considered that the overall objective of the CDR was the effective enforcement of rights conferred by a Community designs court to protect the rights across the European Union.

The CJEU held that the territorial jurisdiction of a Community design court generally extends throughout the EU. It held that this also applied in respect of the second defendant who is not domiciled in the Member State in which court was seised.

Impact

In this decision, the CJEU has clarified that a Community design court can grant the Community design rights holder a pan-European injunction on the basis of infringing acts carried out by two connected defendants located in different Member States.

This decision is helpful to design rights holders when they come to consider their enforcement strategy in the event their rights are infringed. Following this decision a design rights holder may seek injunctive relief where there are connected defendants in different jurisdictions from a Community designs court in the territory of one of the defendants.