KLAKA obtains important ECJ judgement: National law is applicable in tort jurisdiction for EU-IP rights

Luxembourg, 07.03.2022: Courts in the European Union that rule on the infringement of Community designs and EU trade marks in the tort jurisdiction may apply national law to supplementary claims. This has been decided by the Court of Justice of the European Union in a judgment that is very significant for practice. The judgment was obtained by KLAKA in a landmark case concerning the infringement of German automobile manufacturer BMW’s Community designs (Ref.: C-421/20, judgment of 3.3.2022 - BMW/Acacia).

BMW had sued a company based in Italy before the Courts of Düsseldorf for infringement of Community designs. The Italian company had also offered infringing rims from Italy in Germany. BMW AG not only claimed an injunction relief, but also asserted supplementary claims for information, damages, rendering of accounts, etc.. These supplemetary claims are not regulated in the Community Design Regulation.

According to the previous "Nintendo" case law of the ECJ (C-24/16, C-25/16), concerning infringements in various Member States, the law of the so-called place of initial act of the infringement is to be determined and then applied to the claims for damages asserted. The law of this Member State is thus to apply uniformly to the assessment of the supplementary claims, irrespective of the Member State in which the infringer distributed the infringing goods.

The regulations on supplementary claims differ greatly in the Member States. Italy, for example, does not recognise the provision of documents to supplement the information. Consequently, the Italian defendant invoked the applicability of Italian law vis-à-vis BMW AG with regard to the acts of infringement performed in Germany.

The Court of Justice now ruled that in tort jurisdiction (Art. 82 V CDR), the Community Design Court could apply its national law, i.e. the Higher Regional Court of Düsseldorf could apply German law in the present case. Since, in that situation, the Community design Court has jurisdiction only for infringements committed in its territory, it does not have to consider infringements abroad. These were – as in the case of national IP rights – not subject matter of the proceedings.

"The judgement is of considerable importance not only for owners of Community designs, but also for owners of EU trade marks who want to take action against foreign infringers not at their domicile, but in the forum of tort", explains Dr. Ralf Hackbarth of KLAKA Rechtsanwälte, who won the judgement for BMW AG. "Lawyers in Germany are often instructed to proceed in the place of jurisdiction for torts, but not at the foreign domicile of the infringer. Proceedings in tort jurisdiction has the charm of being able to sue the foreign infringer at the 'home Court'. However, this advantage would be gone if the „home Court“ has to apply foreign law concerning the supplementary claims. If so, time-consuming and, above all, costly expert opinions would have to be obtained. "

Infringers located in Member States where, for example, action is de facto impossible due to longstanding litigation, will increasingly have to fear proceedings in the tort jurisdiction in the future.

Representative BMW AG
KLAKA Rechtsanwälte, Munich
Dr. Ralf Hackbarth, LL.M., Attorney at Law, Partner
Florian Schmidt-Sauerhöfer, Attorney at Law, Associate
BMW AG (Inhouse Law, Munich)
Dr Torsten Dilly, Senior Legal Counsel

President of the Chamber: E. Regan
President of the Court K. Lenaerts
President of the Fourth Chamber: C. Lycourgos (Rapporteur)
Judges: I. Jarukaitis and M. Ilešič
Advocate General: M. Szpunar

Dr. Ralf Hackbarth, lawyer, partner
KLAKA Rechtsanwälte Munich
phone: +49 (89) 99 89 190 | email: rhackbarth@klaka.com