Contents
Judgment of the Court (Second Chamber)27 September 2017note(References for a preliminary ruling — Intellectual property — Regulation (EC) No 6/2002 — Article 20(1)(c), Article 79(1) and Articles 82, 83, 88 and 89 — Action for infringement — Limitation of the rights conferred by the Community design — Concept of citations — Regulation (EC) No 44/2001 — Article 6(1) — Jurisdiction in respect of the co-defendant domiciled outside the Member State of the forum — Territorial scope of the jurisdiction of the Community design courts — Regulation (EC) No 864/2007 — Article 8(2) — Law applicable to claims seeking the adoption of orders relating to sanctions and other measures)In Joined Cases C‑24/16 and C‑25/16,REQUESTS for a preliminary ruling under Article 267 TFEU from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), made by decisions of 7 January 2016, received at the Court on 18 January 2016, in the proceedingsNintendo Co. LtdvBigBen Interactive GmbH,BigBen Interactive SA,THE COURT (Second Chamber),composed of M. Ilešič (Rapporteur), President of the Chamber, K. Lenaerts, President of the Court of Justice, acting as Judge of the Second Chamber, A. Prechal, C. Toader and E. Jarašiūnas, Judges,Advocate General: Y. Bot,Registrar: R. Schiano, Administrator,having regard to the written procedure and further to the hearing on 7 December 2016,after considering the observations submitted on behalf of:– Nintendo Co. Ltd, by A. von Mühlendahl and H. Hartwig, Rechtsanwälte,– BigBen Interactive GmbH and BigBen Interactive SA, by W. Götz, C. Onken and C. Kurtz, Rechtsanwälte,– the European Commission, by T. Scharf and M. Wilderspin, acting as Agents,after hearing the Opinion of the Advocate General at the sitting on 1 March 2017,gives the following
Judgment
1These requests for a preliminary ruling concern the interpretation of Article 20(1)(c), Article 79(1) and Articles 82, 83, 88 and 89 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), Article 6(1) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2001 L 12, p. 1) and Article 8(2) and Article 15 of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (‘Rome II’) (OJ 2007 L 199, p. 40).
2The requests have been made in proceedings between, on the one hand, Nintendo Co. Ltd (‘Nintendo’), a company established in Japan, and, on the other hand, BigBen Interactive GmbH (‘BigBen Germany’), a company established in Germany, and BigBen Interactive SA (‘BigBen France’), the parent company of BigBen Germany established in France, concerning actions for infringement on account of the alleged infringement by the defendants in the main proceedings of the rights conferred on Nintendo by the Community designs held by it.
EU law
Regulation No 44/2001
3Regulation No 44/2001 replaced, in relations between the Member States, the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, signed in Brussels on 27 September 1968 (OJ 1978 L 304, p. 36, ‘the Brussels Convention’). That regulation was in turn repealed and replaced by Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2012 L 351, p. 1), which has been applicable from 10 January 2015. Article 66(1) of that regulation, relating to transitional provisions, provides that it ‘shall apply only to legal proceedings instituted, to authentic instruments formally drawn up or registered and to court settlements approved or concluded on or after 10 January 2015’.
4Recital 11 of Regulation No 44/2001 reads:‘The rules of jurisdiction must be highly predictable and founded on the principle that jurisdiction is generally based on the defendant’s domicile and jurisdiction must always be available on this ground save in a few well-defined situations in which the subject-matter of the litigation or the autonomy of the parties warrants a different linking factor. … ’
5Under Article 6(1) of that regulation:‘[A person domiciled in a Member State] may also be sued:(1) where he is one of a number of defendants, in the courts for the place 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’.
6According to Article 68(2) of that regulation:‘In so far as this Regulation replaces the provisions of the Brussels Convention between Member States, any reference to the Convention shall be understood as a reference to this Regulation.’
Regulation No 6/2002
7Recitals 6, 7, 22, 29 and 31 of Regulation No 6/2002 state:(6) … the objectives of the proposed action, namely, the protection of one design right for one area encompassing all the Member States, cannot be sufficiently achieved by the Member States by reason of the scale and the effects of the creation of a Community design and a Community design authority …(7) Enhanced protection for industrial design not only promotes the contribution of individual designers to the sum of [European Union] excellence in the field, but also encourages innovation and development of new products and investment in their production.…(22) The enforcement of these rights is to be left to national laws. It is necessary therefore to provide for some basic uniform sanctions in all Member States. These should make it possible, irrespective of the jurisdiction under which enforcement is sought, to stop the infringing acts.…(29) It is essential that the rights conferred by a Community design can be enforced in an efficient manner throughout the territory of the [European Union].(30) The litigation system should avoid as far as possible “forum shopping”. It is therefore necessary to establish clear rules of international jurisdiction.(31) This Regulation does not preclude the application to designs protected by Community designs of the industrial property laws or other relevant laws of the Member States, such as those relating to design protection acquired by registration or those relating to unregistered designs, trade marks, patents and utility models, unfair competition or civil liability.’
8Article 1(3) of that regulation provides:‘A Community design shall have a unitary character. It shall have equal effect throughout the [European Union]. It shall not be registered, transferred or surrendered or be the subject of a decision declaring it invalid, nor shall its use be prohibited, save in respect of the whole [European Union]. This principle shall apply unless otherwise provided in this Regulation.’
9According to Article 19(1) of that regulation:‘A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.’
10Article 20 of Regulation No 6/2002, entitled ‘Limitation of the rights conferred by a Community design’, provides in paragraph (1):‘The rights conferred by a Community design shall not be exercised in respect of:(a) acts done privately and for non-commercial purposes;(b) acts done for experimental purposes;(c) acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.’
11Article 79(1) of that regulation provides:‘Unless otherwise specified in this Regulation, the [Brussels Convention] shall apply to proceedings relating to Community designs and applications for registered Community designs, as well as to proceedings relating to actions on the basis of Community designs and national designs enjoying simultaneous protection.’
12Pursuant to Article 79(3) of that regulation, Articles 2 and 4, Article 5(1) and (3) to (5), Article 16(4) and Article 24 of the Brussels Convention are not applicable to proceedings in respect of the actions and claims referred to in Article 81 of that regulation. It also follows from Article 79(3) that Articles 17 and 18 of that convention are applicable subject to the limitations in Article 82(4) of Regulation No 6/2002.
13Article 80(1) of that regulation provides as follows:‘The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance (Community design courts) which shall perform the functions assigned to them by this Regulation.’
14Article 81(a) of that regulation provides:‘The Community design courts shall have exclusive jurisdiction:(a) for infringement actions and — if they are permitted under national law — actions in respect of threatened infringement of Community designs’.
15Article 82 of Regulation No 6/2002 provides:1. Subject to the provisions of this Regulation as well as to any provisions of the [Brussels Convention] applicable by virtue of Article 79, proceedings in respect of the actions and claims referred to in Article 81 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.…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.’
16Article 83 of that regulation provides:1. A Community design court whose jurisdiction is based on Article 82(1), (2), (3) or (4) shall have jurisdiction in respect of acts of infringement committed or threatened within the territory of any of the Member States.2. A Community design court whose jurisdiction is based on Article 82(5) shall have jurisdiction only in respect of acts of infringement committed or threatened within the territory of the Member State in which that court is situated.’
17Article 88(2) and (3) of the regulation states: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.’
18Under Article 89 of Regulation No 6/2002:1.Where in an action for infringement or for threatened infringement a Community design court finds that the defendant has infringed or threatened to infringe a Community design, it shall, unless there are special reasons for not doing so, order the following measures:(a) an order prohibiting the defendant from proceeding with the acts which have infringed or would infringe the Community design;(b) an order to seize the infringing products;(c) an order to seize materials and implements …(d) any order imposing other sanctions appropriate under the circumstances which are provided by the law of the Member State in which the acts of infringement or threatened infringement are committed, including its private international law.2. The Community design court shall take such measures in accordance with its national law as are aimed at ensuring that the orders referred to in paragraph 1 are complied with.’
Regulation No 864/2007
19According to recitals 6, 7, 13, 14, 16 and 19 of Regulation No 864/2007:(6) The proper functioning of the internal market creates a need, in order to improve the predictability of the outcome of litigation, certainty as to the law applicable and the free movement of judgments, for the conflict-of-law rules in the Member States to designate the same national law irrespective of the country of the court in which an action is brought.(7) The substantive scope and the provisions of this Regulation should be consistent with [Regulation No 44/2001] and the instruments dealing with the law applicable to contractual obligations.…(13) Uniform rules applied irrespective of the law they designate may avert the risk of distortions of competition between [European Union] litigants.(14) The requirement of legal certainty and the need to do justice in individual cases are essential elements of an area of justice. This Regulation provides for the connecting factors which are the most appropriate to achieve these objectives. Therefore, this Regulation provides for a general rule but also for specific rules and, in certain provisions, for an “escape clause” which allows a departure from these rules where it is clear from all the circumstances of the case that the tort/delict is manifestly more closely connected with another country. This set of rules thus creates a flexible framework of conflict-of-law rules. Equally, it enables the court seised to treat individual cases in an appropriate manner.…(16) Uniform rules should enhance the foreseeability of court decisions and ensure a reasonable balance between the interests of the person claimed to be liable and the person who has sustained damage. A connection with the country where the direct damage occurred (“lex loci damni”) strikes a fair balance between the interests of the person claimed to be liable and the person sustaining the damage, and also reflects the modern approach to civil liability and the development of systems of strict liability.…(19) Specific rules should be laid down for special torts/delicts where the general rule does not allow a reasonable balance to be struck between the interests at stake.’
20Article 4(1) of that regulation provides:‘Unless otherwise provided for in this Regulation, the law applicable to a non‑contractual obligation arising out of a tort/delict shall be the law of the country in which the damage occurs irrespective of the country in which the event giving rise to the damage occurred and irrespective of the country or countries in which the indirect consequences of that event occur.’
21Article 8(1) and (2) of that regulation provide:1. The law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is claimed.2. In the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable shall, for any question that is not governed by the relevant Community instrument, be the law of the country in which the act of infringement was committed.’
22Article 15(a), (d) and (g) of that regulation provides:‘The law applicable to non-contractual obligations under this Regulation shall govern in particular:(a) the basis and extent of liability, including the determination of persons who may be held liable for acts performed by them;…(d) within the limits of powers conferred on the court by its procedural law, the measures which a court may take to prevent or terminate injury or damage or to ensure the provision of compensation;…(g) liability for the acts of another person’.
The dispute in the main proceedings and the questions referred for a preliminary ruling
23Nintendo is a multinational company active in the production and sale of video games and video game consoles, including the Wii video games console and its accessories. It is the holder of several registered Community designs relating to Wii accessories, such as the Wii remote control, the accessory known as the ‘Nunchuck’ for the Wii remote control, which enables compatible video games to be controlled differently, the connector plug known as the ‘Wii Motion Plus’ for the remote control, and the Balance Board, an accessory that allows the player to control the game through weight changes.
24BigBen France makes remote controls and other accessories compatible with the Wii video games console and sells them via its website directly to consumers located inter alia in France, Belgium and Luxembourg, as well as to its subsidiary, BigBen Germany. The latter sells the goods made by BigBen France, inter alia via its website, to consumers located in Germany and Austria.
25It is apparent from the file submitted to the Court of Justice that BigBen Germany does not have its own stock of goods. Thus, it forwards the orders it receives from consumers to BigBen France. Supply of the allegedly infringing goods is therefore carried out from France. BigBen Germany and BigBen France also use images of goods corresponding to the protected designs held by Nintendo in the course of the lawful sale, including for the purposes of publicity, of certain other goods they sell.
26Nintendo takes the view that BigBen Germany and BigBen France’s sale of certain goods made by BigBen France infringes its rights under the registered Community designs held by it. It also submits that those two companies cannot be recognised as having the right to use the images of the goods corresponding to those designs for their commercial activity. Consequently, it brought actions before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) against BigBen Germany and BigBen France seeking a declaration that they had infringed the rights conferred upon it by those designs.
27The Landgericht held that there had been an infringement by BigBen Germany and BigBen France of Nintendo’s registered Community designs. However, it dismissed the actions in so far as they concerned the use of the images of the goods corresponding to those designs by the defendants in the main proceedings. The Landgericht therefore ordered BigBen Germany to cease using those designs throughout the European Union and also upheld, without territorial limitation, Nintendo’s supplementary claims seeking that it be sent various information, accounts and documents held by the defendants in the main proceedings, that they be ordered to pay compensation and that the destruction or recall of the goods at issue, publication of the judgment and reimbursement of the lawyers’ fees incurred by Nintendo be ordered (‘the supplementary claims’).
28As regards BigBen France, the Landgericht Düsseldorf (Regional Court, Düsseldorf) held that it had international jurisdiction in respect of that company and ordered it to cease using the protected designs at issue throughout the European Union. Concerning the supplementary claims, it limited the scope of its judgment to BigBen France’s supplies of the goods at issue to BigBen Germany, but without limiting the territorial scope of its judgment. It considered the applicable law to be that of the place of infringement and took the view that in the present case that was German, Austrian and French law.
29Both Nintendo and the defendants in the main proceedings brought appeals against that judgment before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf).
30In support of its action, BigBen France contends that the German courts lack jurisdiction to adopt orders against it that are applicable throughout the European Union and takes the view that such orders can have merely national territorial scope. For its part, Nintendo disputes the limitation of such orders solely to the goods within the supply chain between the defendants in the main proceedings. Nintendo also claims that the defendants in the main proceedings cannot be recognised as having the right to use, in the course of their economic activity and for the purposes of selling their own goods, the images of the goods corresponding to its registered Community designs, whereas the defendants in the main proceedings maintain that such use is in conformity with Regulation No 6/2002. Moreover, Nintendo takes the view that German law should be applied to its claims relating to BigBen Germany and French law to those relating to BigBen France, contrary to what the Landgericht Düsseldorf (Regional Court, Düsseldorf) held.
31Nintendo therefore requests the referring court to order the defendants in the main proceedings to cease to make, import, export, use or stock for those purposes the goods at issue within the European Union and/or reproduce those goods or, as the case may be, use the images of those goods corresponding to Nintendo’s Community designs, throughout the European Union. Nintendo’s claim relating to ceasing the production of the goods that, in its view, infringe the registered Community designs held by it concerns solely BigBen France.
32In addition, Nintendo requests that its supplementary claims be upheld.
33In those circumstances, the referring court states, in the first place, that its international jurisdiction in respect of the claims against BigBen France stems from Article 79(1) of Regulation No 6/2002, read in conjunction with Article 6(1) of Regulation No 44/2001, on the ground that Nintendo’s claims against BigBen Germany and BigBen France are connected because there is a supply chain of the allegedly infringing goods between the two defendants in the main proceedings. That court doubts, however, in the light of the arguments set out before it both by Nintendo and BigBen France, that the scope of the judgment delivered by the Landgericht Düsseldorf (Regional Court, Düsseldorf) in respect of BigBen France, as regards Nintendo’s claims, is in conformity with the provisions of Regulation No 44/2001 and Regulation No 6/2002.
34In the second place, the referring court explains that the question whether and in what circumstances a third party might lawfully use the image of a product corresponding to a Community design in order to advertise the goods which it sells and which constitute accessories to the goods corresponding to such a registered design is novel. Interpretation of the concept of ‘citations’ within the meaning of Article 20(1)(c) of Regulation No 6/2002 is therefore necessary.
35In the third place, that court has doubts as to the law applicable to Nintendo’s supplementary claims concerning both the first and second defendant in the main proceedings and is uncertain in that regard, in particular, about the scope of Article 8(2) of Regulation No 864/2007.
36In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following questions, which are formulated in the same terms in Cases C‑24/16 and C‑25/16, to the Court of Justice for a preliminary ruling:(1) In connection with a trial to enforce claims under a Community design, can the court of a Member State whose jurisdiction with respect to a defendant is based solely on Article 79(1) of [Regulation No 6/2002] in conjunction with Article 6(1) of [Regulation No 44/2001], on the basis that this defendant, which is domiciled in another Member State, supplied the defendant domiciled in the pertinent Member State with goods that may infringe intellectual property rights, adopt measures against the first mentioned defendant that are applicable throughout the EU and extend beyond the supply relationships on which jurisdiction is based?(2) Is [Regulation No 6/2002], particularly Article 20(1)(c), to be interpreted as meaning that a third party may depict a Community design for commercial purposes if it intends to sell accessory items for the right holder’s goods corresponding to the Community design? If so, what criteria apply to this?(3) For the purposes of Article 8(2) of [Regulation No 864/2007], how is the place “in which the act of infringement was committed” to be determined in cases in which the infringer:(a) offers goods that infringe a Community design on a website and that website is also directed at Member States other than the one in which the person damaged by the infringement is domiciled, and/or;(b) has goods that infringe a Community design shipped to a Member State other than the one in which it is domiciled?Is Article 15(a) and (g) of the Rome II Regulation to be interpreted as meaning that the law determined in this manner is also applicable to participatory acts of other persons?’
37By order of the President of the Court of Justice of 1 February 2016, Cases C‑24/16 and C‑25/16 were joined for the purposes of the written and oral procedure and the judgment.
The questions referred for a preliminary ruling
Question 1
38By its first question, the referring court asks, in essence, whether Regulation No 6/2002, read in conjunction with Article 6(1) of Regulation No 44/2001, must be interpreted as meaning that where the international jurisdiction of a Community design court seised of an action for infringement is based, with regard to one defendant, on Article 82(1) of Regulation No 6/2002 and, with regard to a second defendant established in another Member State, on that Article 6(1), read in conjunction with Article 79(1) of Regulation No 6/2002, because the second defendant makes and supplies to the first defendant the goods that the latter sells, that court may, on the applicant’s request, adopt orders in respect of the second defendant concerning measures falling under Article 89(1) and Article 88(2) of Regulation No 6/2002 also covering the second defendant’s conduct other than that relating to the abovementioned supply chain and with, as the case may be, a scope which extends throughout the European Union.
39In that regard, it should be noted that, under Article 82 of Regulation No 6/2002, subject to the provisions of that regulation and those of the Brussels Convention that are applicable, as a reference to that convention must be understood, by virtue of Article 68(2) of Regulation No 44/2001, as a reference to that regulation, the jurisdiction of the Community design courts provided for in Article 80(1) of Regulation No 6/2002 to decide the actions and claims referred to in Article 81 thereof results from rules directly provided for by that regulation (see, to that effect, judgment of 13 July 2017, Bayerische Motoren Werke, C‑433/16, EU:C:2017:550, paragraph 39).
40Article 82(1) provides that those actions and claims fall primarily within the international jurisdiction of the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment.
41As regards the fifth paragraph of Article 82, it establishes inter alia alternative jurisdiction in favour of the Community design courts of the Member State in which the act of infringement has been committed or threatened.
42Those rules have the character of lex specialis in relation to the rules provided for by Regulation No 44/2001 (judgment of 13 July 2017, Bayerische Motoren Werke, C‑433/16, EU:C:2017:550, paragraph 39).
43Article 79(1) of Regulation No 6/2002 provides that, subject to any contrary provision of that regulation, the provisions of Regulation No 44/2001 are applicable to proceedings relating to Community designs. In that respect, Article 79(3) lists the provisions of Regulation No 44/2001 that are not applicable to proceedings in respect of the actions and claims referred to in Article 81 of Regulation No 6/2002.
44Article 6(1) of Regulation No 44/2001 is not included among the provisions listed in Article 79(3). Furthermore, the lex specialis constituted by the rules laid down by Regulation No 6/2002, recalled in paragraphs 40 and 41 of the present judgment, does not include any additional details regarding the conditions for the application of Article 6(1). A Community design court, such as the referring court in the cases in the main proceedings, may therefore, by virtue of that provision and subject to the conditions laid down by that provision being fulfilled, have jurisdiction to hear an action brought against a defendant not domiciled in the Member State in which that court is situated.
45In order for Article 6(1) of Regulation No 44/2001 to apply, it must be ascertained whether, between various claims brought by the same applicant against various defendants, there is a connection of such a kind that it is expedient to determine those actions together in order to avoid the risk of irreconcilable judgments resulting from separate proceedings. For decisions to be regarded as irreconcilable, it is not sufficient that there be a divergence in the outcome of the disputes, but that divergence must also arise in the context of the same situation of fact and law (judgment of 21 May 2015, CDC Hydrogen Peroxide, C‑352/13, EU:C:2015:335, paragraph 20 and the case-law cited).
46In that regard, although it follows from the Court’s case-law on patents that, where infringement proceedings are brought before a number of courts in various Member States in respect of a European patent granted in each of those States, against defendants domiciled in those States in respect of acts allegedly committed in their territory, any divergences between the decisions given by the courts concerned would not arise in the context of the same situation of law, since any action for infringement of a European patent must be examined in the light of the national law in force in each of the States for which it has been granted. Any diverging decisions could not, therefore, be treated as contradictory (judgment of 13 July 2006, Roche Nederland and Others, C‑539/03, EU:C:2006:458, paragraphs 30 to 32).
47In the proceedings before the Court, the defendants in the main proceedings have inter alia contended, referring to that case-law, that some of the claims made by the applicant in the main proceedings seeking the provision of information, accounts and documents by the defendants, an order to pay compensation, the destruction and recall of the goods at issue, reimbursement of the lawyers’ fees and publication of the judgment, depend on the application by the court with jurisdiction of provisions of national law and cannot therefore fall within the same situation of law. As the Advocate General notes in points 45 to 52 of his Opinion, such claims are referred to either in Article 89(1)(d) of Regulation No 6/2002 or in Article 88(2) thereof, each of those provisions referring to national law. It follows that those claims are not governed independently by Regulation No 6/2002, but are a matter of the applicable national law (see, to that effect, judgment of 13 February 2014, H. Gautzsch Großhandel, C‑479/12, EU:C:2014:75, paragraphs 52 to 54).
48However, the referring court takes the view that the requirement of the same situation of law is satisfied in the cases in the main proceedings, since Nintendo’s claims brought before it against the two defendants in the main proceedings arise in the same situation of law, in particular because of the unitary character of the rights conferred by a Community design, as well as in the light of the partial harmonisation of the means of enforcing intellectual property rights effected by Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ 2004 L 157, p. 45, and corrigendum OJ 2004 L 195, p. 16).
49In that regard, it should be noted that by bringing an action for infringement, the holder seeks to protect his exclusive right to use the Community design and to prohibit any unauthorised use of it by a third party, enshrined in Article 19 of Regulation No 6/2002. Since that right has the same effect throughout the European Union, the fact that some of the orders that may be adopted by the court having jurisdiction with a view to ensuring that that right is respected depend on provisions of national law is irrelevant to the existence of the same situation of law for the purposes of applying Article 6(1) of Regulation No 44/2001.
50As regards the requirement of the same situation of fact, it is apparent from the orders for reference that the referring court starts from the premiss that the existence of supplies of the allegedly infringing goods effected, first, by BigBen France to BigBen Germany and, secondly, by the latter to its customers permits the inference that that requirement is met. It is, however, uncertain whether the orders sought by the applicant in the main proceedings may concern solely the supplies on which its jurisdiction is based or whether they may additionally concern other supplies, such as those made by BigBen France alone.
51Having regard to the circumstances of the cases in the main proceedings, where one of the defendants in the main proceedings is a parent company and the other its subsidiary, which the applicant in the main proceedings accuses of similar, if not identical, acts that infringe the same protected designs and relate to identical allegedly infringing goods made by the parent company that sells them on its own account in certain Member States and also sells them to its subsidiary so that the latter may sell them in other Member States, it should be recalled that the Court has already held that the case in which defendant companies belonging to the same group have acted in an identical or similar manner in accordance with a common policy elaborated by one of them must be regarded as constituting the same situation of fact (see, inter alia, judgment of 13 July 2006, Roche Nederland and Others, C‑539/03, EU:C:2006:458, paragraph 34).
52Therefore, and taking into account the objective pursued by Article 6(1) of Regulation No 44/2001, which seeks inter alia to avoid the risk of irreconcilable judgments, the existence of the same situation of fact must in such circumstances — if proven, which is for the referring court to verify, and where an application is made to that effect — cover all the activities of the various defendants, including the supplies made by the parent company on its own account, and not be limited to certain aspects or elements of them.
53As regards the territorial scope of the orders relating to sanctions and other measures sought by the applicant in the main proceedings in respect of each defendant in the main proceedings, it should be noted that the Court has already held that the territorial scope of the prohibition against further infringement or threatened infringement of a Community trade mark, as provided for in Article 98(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Council Regulation (EC) No 3288/94 of 22 December 1994 (OJ 1994 L 349, p. 83; ‘Regulation No 40/94’), is to be determined both by the territorial jurisdiction of the Community trade mark court issuing that prohibition and by the territorial extent, resulting from Regulation No 40/94, of the Community trade mark proprietor’s exclusive right which is adversely affected by the infringement or threatened infringement (judgment of 12 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraph 33).
54That solution can be directly transposed to the analysis of the territorial scope of a prohibition against further acts of infringement or threatened infringement of Community designs, governed independently by Article 89(1)(a) of Regulation No 6/2002, bearing in mind the similarity of the provisions of Regulation No 40/94 and Regulation No 6/2002, governing, respectively, the judicial protection of the rights conferred by Community trademarks and Community designs.
55Nor is it possible to accept a different solution for determining the territorial scope of the orders made by a Community design court in respect of claims concerning other sanctions and measures, such as those sought in the cases in the main proceedings by Nintendo, which are not governed independently by Regulation No 6/2002.
56In that regard, it should be recalled that Regulation No 6/2002 pursues the objective, as stated in recital 29, of ensuring that the enforcement of the rights conferred by a Community design is protected effectively throughout the European Union. That objective is essential, bearing in mind, as is apparent from Article 1(3) of that regulation, the unitary character of such designs and the fact that they have equal effect throughout the European Union. That objective is achieved, in the system of protection of those rights established by Regulation No 6/2002, first, by some basic uniform sanctions provided for independently by that regulation and, secondly, by other sanctions or measures which are to be left to national laws.
57While that regulation clearly acknowledges, in recital 22, the importance of basic uniform sanctions that are intended, irrespective of the jurisdiction under which enforcement is sought, to stop the infringing acts, it also acknowledges in that recital, read together with recital 29 of that regulation, that measures falling under national law contribute equally to achieving that aim.
58Therefore, the territorial scope of the orders relating to sanctions and other measures, such as those requested by Nintendo in the cases in the main proceedings, must be examined in the light of the criteria set out in paragraph 53 above.
59As regards, in the first place, the territorial scope of the rights of the Community design holder, conferred under Regulation No 6/2002, they extend, as a rule, to the entire area of the European Union, on which designs enjoy uniform protection and have effect (see, by analogy, judgment of 12 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraph 39).
60In accordance with Article 1(3) of that regulation, the Community design has a unitary character and has equal effect throughout the European Union. It may not, according to that provision, be registered, transferred or surrendered or be the subject of a decision declaring it invalid, nor may its use be prohibited, save in respect of the whole of the European Union, that principle applying unless otherwise provided in that regulation.
61As regards, in the second place, the territorial scope of the jurisdiction of a Community design court, such as that issue in the main proceedings, seised of an action for infringement within the meaning of Article 81(a) of Regulation No 6/2002, whose jurisdiction is based on Article 82(1) of Regulation No 6/2002 in respect of one of the defendants and before which the other defendant not domiciled in the Member State of that court has been sued validly pursuant to Article 6(1) of Regulation No 44/2001, read in conjunction with Article 79(1) of Regulation No 6/2002, it should be noted that Article 83 of Regulation No 6/2002 governs independently the scope of the jurisdiction of the Community design courts relating to infringement and states, in the first paragraph, that a court whose jurisdiction is based on Article 82(1), (2), (3) or (4) of that regulation has jurisdiction in respect of acts of infringement committed or threatened within the territory of any of the Member States.
62However, the second paragraph of Article 83 provides that a Community design court whose jurisdiction is based on Article 82(5) of that regulation has jurisdiction only in respect of acts of infringement committed or threatened within the territory of the Member State in which that court is situated.
63Regulation No 6/2002 does not specifically state what the territorial scope of a Community design court’s jurisdiction should be in a situation such as that described in paragraph 61 of the present judgment. However, it is apparent neither from the wording of Article 6(1) of Regulation No 44/2001 nor the relevant case-law of the Court that courts seised validly pursuant to Article 6(1) should then see their territorial jurisdiction limited in respect of a defendant who is not domiciled in the Member State of the forum.
64Therefore, it must be held that the territorial jurisdiction of a Community design court seised of an action for infringement within the meaning of Article 81(a) of Regulation No 6/2002, in circumstances such as those set out in paragraph 61 above, extends throughout the European Union also in respect of the defendant who is not domiciled in the Member State of the forum.
65Such an interpretation in conformity with the general scheme and objectives of Regulation No 6/2002. First, under Article 83 of that regulation and as recalled in paragraphs 61 and 62 of the present judgment, only when the jurisdiction of a Community design court is based on Article 82(5) of that regulation does such a court have territorial jurisdiction limited to acts of infringement committed or threatened within the territory of that Member State.
66Secondly, that interpretation is capable of ensuring the attainment of the objective pursued by Regulation No 6/2002 of providing effective protection of registered Community designs throughout the European Union (see, to that effect, judgment of 16 February 2012, Celaya Emparanza y Galdos International, C‑488/10, EU:C:2012:88, paragraph 44).
67It follows from the foregoing that the answer to the first question is that Regulation No 6/2002, read in conjunction with Article 6(1) of Regulation No 44/2001, must be interpreted as meaning that in circumstances such as those in the main proceedings where the international jurisdiction of a Community design court seised of an action for infringement is based, with regard to one defendant, on Article 82(1) of Regulation No 6/2002 and, with regard to a second defendant established in another Member State, on that Article 6(1) read in conjunction with Article 79(1) of Regulation No 6/2002, because the second defendant makes and supplies to the first defendant the goods that the latter sells, that court may, on the applicant’s request, adopt orders in respect of the second defendant concerning measures falling under Article 89(1) and Article 88(2) of Regulation No 6/2002 also covering the second defendant’s conduct other than that relating to the abovementioned supply chain and with a scope which extends throughout the European Union.
Question 2
68By its second question, the referring court asks, in essence, whether Article 20(1)(c) of Regulation No 6/2002 must be interpreted as meaning that a third party which, without the consent of the holder of the rights conferred by a Community design, uses, including via its website, images of goods corresponding to such designs when lawfully offering for sale goods intended to be used as accessories to the specific goods of the holder of the rights conferred by those designs, in order to explain or demonstrate the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an act of reproduction for the purpose of making ‘citations’ within the meaning of Article 20(1)(c) and, if so, under which circumstances such an act of reproduction may be accepted.
69In that regard, it must first of all be noted that the limitation of the rights conferred by Community designs laid down in Article 20(1)(c) of Regulation No 6/2002 applies when the use by a third party of such protected designs for the purposes of making citations constitutes an ‘act of reproduction’ of them. A two-dimensional representation of a product corresponding to a Community design may constitute such an act.
70Next, it must be examined whether such an act of reproduction was carried out for the purposes of making ‘citations’. In that regard, Article 20(1)(c) of Regulation No 6/2002 makes no reference to the law of the Member States on the concept of ‘citations’. However, the need for a uniform application of EU law and the principle of equality require the terms of a provision of EU law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope normally to be given an independent and uniform interpretation throughout the EU; that interpretation must take into account not only the wording of the provision but also its context and the objectives pursued by the rules of which it is part (see, inter alia, judgments of 3 September 2014, Deckmyn and Vrijheidsfonds, C‑201/13, EU:C:2014:2132, paragraph 14, and of 10 December 2015, Lazar, C‑350/14, EU:C:2015:802, paragraph 21).
71As regards the terms used in Article 20(1)(c) of Regulation No 6/2002, it is apparent from a comparative examination of the various language versions of that provision that they exhibit differences in so far as some of those versions, inter alia those in French and Dutch, use the expression ‘illustration’, whereas other versions refer to the concept of ‘citation’, as also noted by the Advocate General in point 74 of his Opinion.
72According to settled case-law, a purely literal interpretation of one or more language versions of a text of EU law, to the exclusion of the others, cannot prevail since the uniform application of EU rules requires that they be interpreted, inter alia, in the light of the versions drawn up in all the languages. Where there is a divergence between the language versions of an EU text, the provision in question must be interpreted by reference to the general scheme and purpose of the rules of which it forms part (see, inter alia, judgments of 4 September 2014, Vnuk, C‑162/13, EU:C:2014:2146, paragraph 46 and the case-law cited, and of 26 April 2017, Popescu, C‑632/15, EU:C:2017:303, paragraph 35).
73As regards the objective of Regulation No 6/2002, it should be recalled that, according to recitals 6 and 7 thereof, it establishes the protection of design rights for one area encompassing all the Member States, an enhanced protection for industrial design encouraging innovation and development of new products and investment in their production. The Court has also already stated that the objective of that regulation is to ensure effective protection of registered Community designs (see, to that effect, judgment of 16 February 2012, Celaya Emparanza y Galdos International, C‑488/10, EU:C:2012:88, paragraph 44).
74Therefore, provisions limiting the rights granted to the holder of such designs by virtue of that regulation, such as Article 20(1)(c) thereof, must be interpreted strictly, without, however, such an interpretation undermining the effectiveness of the limitation thereby established and disregarding its purpose (see, by analogy, judgment of 1 December 2011, Painer, C‑145/10, EU:C:2011:798, paragraphs 109 and 133).
75In that regard, it should be noted that Article 20(1)(a) of Regulation No 6/2002 provides for a limitation of the rights conferred by Community designs in respect of acts done privately and for non-commercial purposes. As the limitation of the rights conferred by the Community design provided for in Article 20(1)(c) is distinct from that provided for in Article 20(1)(a), it must be held that the acts of reproduction referred to therein must be carried out in the course of a commercial activity.
76As regards the scope of the concept of ‘citations’ within the meaning of Article 20(1)(c) of Regulation No 6/2002, it should be noted, on the one hand, that that provision aims to limit the rights conferred by the Community design so far as it concerns acts of reproduction that serve as a basis for the explanations or commentary of the person intending to rely on that limitation. On the other hand, in view of the objective of Regulation No 6/2002, referred to in paragraph 73 above, the prevention of an undertaking creating new products intended to be compatible with existing products which correspond to Community designs held by another undertaking from using images of those existing products upon the lawful sale of its own products, in order to explain or demonstrate the joint use of the two categories of products, could discourage innovation, a situation which that regulation seeks to avoid, as the Advocate General also noted in point 75 of his Opinion.
77Therefore, a third party that lawfully sells goods intended to be used with specific goods corresponding to Community designs and reproduces the latter in order to explain or demonstrate the joint use of the goods it sells and a product corresponding to a protected design carries out an act of reproduction for the purpose of making ‘citations’ within the meaning of Article 20(1)(c) of Regulation No 6/2002.
78As regards the referring court’s questions relating to the conditions restricting the possibility of relying on that limitation, it is apparent from Article 20(1)(c) of Regulation No 6/2002 that the limitation is subject to the fulfilment of three cumulative conditions, namely the compatibility of the acts of reproduction with fair trade practice, the absence of undue prejudice to the normal exploitation of the design on account of such acts and mention of the source.
79As regards, first, the condition that the acts of reproduction for the purpose of making citations must be compatible with fair trade practice, the Court has already interpreted the concept of ‘honest practices in industrial or commercial matters’, inter alia within the meaning of Article 6(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), as constituting the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner (judgment of 17 March 2005, Gillette Company and Gillette Group Finland, C‑228/03, EU:C:2005:177, paragraph 41 and the case-law cited). It is appropriate to apply that case-law mutatis mutandis for the purpose of interpreting the concept of ‘fair trade practice’ within the meaning of Article 20(1)(c) of Regulation No 6/2002.
80Therefore, an act of reproduction of a protected design for the purpose of making citations or of teaching is not compatible with fair trade practice within the meaning of that provision where it is done in such a manner that it gives the impression that there is a commercial connection between the third party and the holder of the rights conferred by those designs, or where the third party, who wishes to rely on that limitation in the course of selling goods that are used jointly with goods corresponding to the protected designs, infringes the rights conferred on the holder of the design protected by Article 19 of Regulation No 6/2002, or where that third party takes unfair advantage of the holder’s commercial repute (see, by analogy, judgment of 17 March 2005, Gillette Company and Gillette Group Finland, C‑228/03, EU:C:2005:177, paragraphs 42, 43, 45, 47 and 48).
81It is for the national courts to verify fulfilment of the condition that the acts of reproduction for the purpose of making citations must be compatible with fair trade practice, by taking into account, in that regard, all the relevant facts of the case, in particular the overall presentation of the product sold by the third party.
82As regards, secondly, the condition requiring acts of reproduction for the purpose of making citations not to unduly prejudice the normal exploitation of the design, it should be noted that that condition aims inter alia to prevent the act of reproduction for the purpose of making citations from negatively affecting the economic interests that the holder of the rights conferred by the Community designs may derive from a normal exploitation of those designs. The referring court has already indicated that it considers that second condition to be fulfilled in the cases in the main proceedings.
83As regards, thirdly, the requirement to mention the source, it should be noted that Article 20(1)(c) of Regulation No 6/2002 does not specify how it is to be mentioned. As stated in paragraph 75 of the present judgment, that provision is intended to authorise the use of Community designs for the purpose of making citations or of teaching during a commercial activity, such as that issue in the main proceedings.
84In those circumstances, in order to fulfil the condition that the source be mentioned, it is necessary, inter alia, that the type of mention chosen for that purpose enables a reasonably well-informed and reasonably observant and circumspect consumer easily to identify the commercial origin of the product corresponding to the Community design.
85However, as mention of the source is, in the cases in the main proceedings, achieved by affixing an EU trademark belonging to the holder of the rights conferred by the protected Community designs, the referring court will also have to determine whether such a mention is in compliance with the legislation on trademarks.
86In the light of the foregoing considerations, the answer to the second question is that Article 20(1)(c) of Regulation No 6/2002 must be interpreted as meaning that a third party which, without the consent of the holder of the rights conferred by a Community design, uses, including via its website, images of goods corresponding to such designs when lawfully offering for sale goods intended to be used as accessories to the specific goods of the holder of the rights conferred by those designs, in order to explain or demonstrate the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an act of reproduction for the purpose of making ‘citations’ within the meaning of Article 20(1)(c), such an act thus being authorised under that provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.
Question 3
87As a preliminary point, it must first be observed that the referring court states that it asks the third question only if it were to find that BigBen Germany and BigBen France have infringed the rights conferred on Nintendo by the Community designs as a result, on the one hand, of the making, offering, putting on the market, importing, exporting and stocking for those purposes of the goods they sell or, on the other hand, of the use of images of goods corresponding to those designs in the course of selling the goods they offer for sale.
88While it is true that the referring court has not yet made any findings as to the existence of an infringement of the rights of the applicant in the main proceedings conferred by the Community designs, it cannot be considered, contrary to what the European Commission suggests, that the third question is consequently inadmissible. It is for the national courts alone to determine, having regard to the particular features of each case, both the need for a preliminary ruling in order to enable them to give their judgment and the relevance of the questions which they refer to the Court. Furthermore, the finding of such an infringement in the disputes in the main proceedings is not purely hypothetical (see, to that effect, judgment of 4 May 2017, HanseYachts, C‑29/16, EU:C:2017:343, paragraph 24).
89Secondly, it should be noted that the third question refers only to the sanctions and other measures sought by the applicant in the main proceedings that are set out in paragraph 47 of the present judgment and are not governed independently by Article 89(1)(a) to (c) of Regulation No 6/2002.
90Thirdly, the question is based on the premiss that Article 8(2) of Regulation No 864/2007 is applicable to a situation such as that at issue in the main proceedings. The referring court also raises the issue of the interpretation of the concept of ‘country in which the act of infringement was committed’ within the meaning of Article 8(2), in circumstances such as those at issue in the main proceedings, where each defendant in the main proceedings is accused of several infringing acts committed in various EU Member States. It also asks whether the law designated by virtue of that provision applies, in accordance with Article 15 of Regulation No 864/2007, to participatory acts.
91In that regard, it must first of all be noted that, according to its wording, Article 8(2) determines, in the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable to any question that is not governed by the relevant Community instrument by referring to the law of the country in which the act of infringement was committed.
92Admittedly, the sanctions and measures sought in the cases in the main proceedings against the defendants in the main proceedings and which are the subject of the third question fall within the sanctions and measures referred to in Article 88(2) and Article 89(1)(d) of Regulation No 6/2002 (see, to that effect, judgment of 13 February 2014, H. Gautzsch Großhandel, C‑479/12, EU:C:2014:75, paragraphs 52 to 54).
93Nevertheless, those provisions do not govern those sanctions and measures independently, but refer, as stated in paragraphs 47 and 89 of the present judgment, to the law of the Member States they designate, including their private international law. Accordingly, in so far as the private international law of the Member States, excluding the Kingdom of Denmark, concerning the conflict‑of‑law rules applicable in civil and commercial matters to non-contractual obligations, including such obligations arising from infringements of unitary Community intellectual property rights, has been harmonised through the adoption of Regulation No 864/2007 (see, to that effect, judgment of 21 January 2016, ERGO Insurance and Gjensidige Baltic, C‑359/14 and C‑475/14, EU:C:2016:40, paragraph 37), that reference must, provided that it relates to private international law, be understood as covering the provisions of that regulation.
94Concerning the concept of ‘country in which the act of infringement was committed’ within the meaning of Article 8(2) of Regulation No 864/2007, as that concept makes no reference to the law of the Member States to determine its meaning and scope, the terms of such a provision of EU law must, in accordance with the case-law recalled in paragraph 70 of the present judgment, normally be given an independent and uniform interpretation throughout the European Union that must take into account the context of the provision and the objective pursued by the rules of which it is part.
95In that regard, it should be noted that the wording of Article 8(2) of Regulation No 864/2007 refers, in its French version, to the law of the country in which ‘that right had been infringed’. It is not clear from such wording whether that concept involves active conduct on the part of the infringing party in the country thus designated, excluding the place where that infringement has effect. In contrast, other language versions of that provision, such as the versions in Spanish, German, Italian, Lithuanian, Dutch, Portuguese, Slovenian and Swedish, are more explicit in that regard, since they refer to the law of the country where ‘the infringement was committed’. The same holds for the English language version, which refers to the law of the country ‘in which the act of infringement was committed’.
96As regards the general scheme and the context of Article 8(2) of Regulation No 864/2007, it is apparent from recital 16 of the regulation that uniform rules should enhance the foreseeability of court decisions and ensure a reasonable balance between the interests of the person claimed to be liable and the person who has sustained damage. To that effect, the regulation establishes as a general principle the rule of lex loci damni, enshrined in Article 4(1) thereof, by virtue of which the law applicable to a non-contractual obligation is the law of the country in which the damage occurs.
97As is apparent from recital 19 of Regulation No 864/2007, the EU legislature has however acknowledged that specific rules should be laid down for special torts/delicts where the general rule does not allow a reasonable balance to be struck between the interests at stake; Article 8(2) of that regulation constitutes such a rule in matters of non-contractual obligations arising from infringements of unitary Community intellectual property rights.
98It follows that, in so far as Article 8(2) of Regulation No 864/2007 lays down a specific connecting factor diverging from the general principle of lex loci damni laid down in Article 4(1) of that regulation, the criterion of law of the ‘country in which the act of infringement was committed’ must be understood as distinct from the criterion of the country ‘in which the damage occurs’ referred to in Article 4(1) of that regulation. Consequently, the ‘country in which the act of infringement was committed’ within the meaning of Article 8(2) of that regulation must be interpreted as meaning that it refers to the country where the event giving rise to the damage occurred, namely the country on whose territory the act of infringement was committed.
99It must however be stated that proceedings relating to intellectual property rights infringements are particularly complex, as the Advocate General stated, in essence, in point 64 of his Opinion. It is not uncommon for the same defendant to be accused of several infringing acts, with the result that several places could constitute, as the place where the event giving rise to the damage occurred, the relevant connecting factor for determining the applicable law.
100First, by virtue of Article 19(1) and (2) of Regulation No 6/2002 and as has been stated in paragraph 49 of the present judgment, the right granted by the Community design confers on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. ‘Use’ within the meaning of that provision covers, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking for those purposes.
101Secondly, unitary intellectual property rights are protected throughout the European Union and infringing acts may be carried out in several Member States, which therefore makes the determination of the substantive law applicable to questions not governed independently by the relevant Community instrument rather unpredictable.
102The Court has already held that Regulation No 864/2007 aims, in accordance with recitals 6, 13, 14 and 16 thereof, to ensure the predictability of the outcome of litigation, legal certainty as to the law applicable and the uniform application of that regulation in all the Member States (judgment of 17 November 2011, Homawoo, C‑412/10, EU:C:2011:747, paragraph 34). Furthermore, the EU legislature wished, as is apparent from recitals 16 and 19 of Regulation No 864/2007, by establishing the connecting factors laid down in that regulation, to strike a reasonable balance between the interests of the person claimed to be liable and the person who has sustained damage. The connecting factor laid down in Article 8(2) of that regulation must therefore be interpreted by bearing in mind the objectives recalled above and the characteristics of the area in which it is supposed to apply.
103In the light of those objectives, where the same defendant is accused of various acts of infringement falling under the concept of ‘use’ within the meaning of Article 19(1) of Regulation No 6/2002 in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened.
104Such an interpretation enables the court seised easily to identify the law applicable by using a single connecting factor linked to the place where the act of infringement at the origin of several acts alleged against a defendant was committed or threatened, in accordance with the objectives recalled in paragraph 102 of the present judgment. It also ensures the predictability of the law thus designated for all the parties to disputes concerning infringements of EU intellectual property rights.
105The referring court additionally formulates certain questions seeking to determine the law applicable pursuant to Article 8(2) of Regulation No 864/2007 in circumstances such as those at issue in the main proceedings.
106The first set of circumstances mentioned by the referring court concerns the situation in which an economic operator is accused of offering for sale, without the consent of the holder of the rights conferred by the Community designs, via its website goods allegedly infringing those rights, that site being accessible to consumers situated in Member States other than that in which the infringer is established.
107In that regard, it should be noted that the act by which an operator uses electronic commerce by offering for sale, on its website targeted at consumers in several Member States, goods infringing the rights conferred by the Community designs, which it is possible to view on the screen and to order via that site, constitutes an offer for sale of those goods. Such an operator is thereby offering within the meaning of Article 19(1) of Regulation No 6/2002 and putting on the market allegedly infringing goods on its website, such conduct falling within the concept of ‘use’ within the meaning of that provision.
108In such circumstances, it must be held that the event giving rise to the damage is the conduct by which an operator offers for sale allegedly infringing goods, inter alia by placing an offer for sale on its website. Accordingly, the place where the event giving rise to the damage occurred within the meaning of Article 8(2) of Regulation No 864/2007 is the place where the process of putting the offer for sale online by that operator on its website was activated.
109As regards the second set of circumstances mentioned by the referring court, by which it inquires about the law applicable when an operator has goods that allegedly infringe the rights protected by a Community design shipped by a third‑party undertaking to a Member State other than the one in which it is domiciled, it should be noted, as stated in paragraph 103 of the present judgment, that the correct approach for identifying the event giving rise to the damage within the meaning of Article 8(2) of Regulation No 864/2007 is not to refer to each of a defendant’s alleged acts of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it.
110As regards, finally, the referring court’s question as to the law applicable to participatory acts, it should be noted that the referring court has not set out the reasons which prompted it to inquire about the interpretation of Article 15 of Regulation No 864/2007 and which would enable the Court of Justice to provide a helpful answer to that question, with the result that it must, pursuant to Article 94 of the Rules of Procedure of the Court of Justice, be regarded as inadmissible.
111In the light of all the foregoing considerations, the answer to the third question is that Article 8(2) of Regulation No 864/2007 must be interpreted as meaning that the ‘country in which the act of infringement was committed’ within the meaning of that provision refers to the country where the event giving rise to the damage occurred. Where the same defendant is accused of various acts of infringement committed in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it.
Costs
112Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.
Operative part
On those grounds, the Court (Second Chamber) hereby rules:
1.Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, read in conjunction with Article 6(1) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, must be interpreted as meaning that in circumstances such as those in the main proceedings where the international jurisdiction of a Community design court seised of an action for infringement is based, with regard to one defendant, on Article 82(1) of Regulation No 6/2002 and, with regard to a second defendant established in another Member State, on that Article 6(1) read in conjunction with Article 79(1) of Regulation No 6/2002, because the second defendant makes and supplies to the first defendant the goods that the latter sells, that court may, on the applicant’s request, adopt orders in respect of the second defendant concerning measures falling under Article 89(1) and Article 88(2) of Regulation No 6/2002 also covering the second defendant’s conduct other than that relating to the abovementioned supply chain and with a scope which extends throughout the European Union.
2.Article 20(1)(c) of Regulation No 6/2002 must be interpreted as meaning that a third party which, without the consent of the holder of the rights conferred by a Community design, uses, including via its website, images of goods corresponding to such designs when lawfully offering for sale goods intended to be used as accessories to the specific goods of the holder of the rights conferred by those designs, in order to explain or demonstrate the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an act of reproduction for the purpose of making ‘citations’ within the meaning of Article 20(1)(c), such an act thus being authorised under that provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.
3.Article 8(2) of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non‑contractual obligations (‘Rome II’) must be interpreted as meaning that the ‘country in which the act of infringement was committed’ within the meaning of that provision refers to the country where the event giving rise to the damage occurred. Where the same defendant is accused of various acts of infringement in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it.
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