Use of Images of Registered Community Designs – Nintendo v BigBen

October 2017

The CJEU has ruled (Nintendo Co. Ltd v BigBen Interactive GmbH, BigBen Interactive SA, C‑24/16 and C‑25/16)that third parties may use images of goods protected by registered community designs for certain specific commercial purposes, delivering a setback to design rights owners. In this case, use of images of Nintendo’s consoles, alongside BigBen’s own console accessories to demonstrate the compatibility of the products did not infringe Nintendo’s registered designs.

Alleged Infringement

Video games company Nintendo own several registered Community designs relating to accessories for the Wii video games console, including those for the Wii remote control, the Wii “Nunchuck” and the Balance Board.

BigBen France made accessories and controls compatible with the Wii and sold them via its website directly to consumers located in various jurisdictions including France, Belgium and Luxembourg, as well as to its subsidiary, BigBen Germany. BigBen Germany did not have its own goods but instead forwarded its orders received from its website to BigBen France, therefore the allegedly infringing goods were supplied from France.

BigBen Germany and BigBen France also used 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.

Initial Action

This decision arose from an appeal against a judgment before the German courts by both Nintendo and the defendants.

Action was initially brought in Germany by Nintendo, which submitted that BigBen Germany and BigBen France's sale of certain goods made by BigBen France infringed its rights under the registered Community designs held by it. It also submitted that those two companies did not have the right to use the images of the goods corresponding to those designs for commercial activity.

The German court held that there had been an infringement by BigBen Germany and BigBen France of Nintendo's registered Community designs and therefore ordered BigBen Germany to cease using those designs throughout the EU. However, the German court dismissed the actions in so far as they concerned the use of the images of the goods corresponding to the defendants’ designs in the main proceedings.

As regards BigBen France, the German court held that it had international jurisdiction in respect of that company and ordered it to cease using the protected designs throughout the EU. 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.

Following this, questions referred to the CJEU covered issues of jurisdiction, the use of images depicting registered designs and determining the location of acts of infringement outside the court’s jurisdiction.

Issues of Jurisdiction

The CJEU was asked whether under the EC Regulation on Community Designs (the Regulation) the court of a Member State can adopt EU-wide measures against a defendant domiciled in a different Member State which had supplied goods infringing a Community design to the defendant in the pertinent Member State and whether those measures can extend beyond the supply relationships on which jurisdiction is based.  In this case, could a German court adopt an EU-wide measure against a defendant domiciled in France, where that defendant had supplied infringing goods to a defendant domiciled in Germany?

The CJEU concluded that given the unitary character of Community designs, having equal effect throughout the EU, neither the wording of the Regulation nor the relevant case-law of the Court should then see their territorial jurisdiction limited in respect of a defendant domiciled in a different Member State to the forum. This therefore meant the territorial jurisdiction of the German Community design court which was seised of an action for infringement within the meaning of the Regulation, extended throughout the EU, also in respect of BigBen France, which is not domiciled in the Member State of the original forum.

Depicting Designs

Secondly, the CJEU was asked whether the Regulation could 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.

Whilst a two-dimensional representation of a product corresponding to a Community design may constitute an act of reproduction under the Regulation, such reproductions may be exempt from infringement under certain circumstances. Such circumstances include where a design is reproduced for the purpose of making “citations” (in other words, “illustrations” as in the French and Dutch versions of the Regulation).

Given the objective of the regulation is to ensure effective protection of Community Designs, the CJEU noted that any provisions limiting such rights must be interpreted strictly.

Ultimately, the CJEU concluded an act of reproduction for the purpose of making “citations” would include the use of images of goods corresponding to Community designs without consent of the rights holder when lawfully offering for sale goods to be used as accessories to the goods of the design rights holder. This is acceptable only for the purposes of explaining or demonstrate the joint use of the goods offered for sale and only when the “cumulative conditions” are fulfilled. These cumulative conditions are to be verified by the national court, but include (i) fair trade practice (ii) absence of undue prejudice to the normal exploitation of the design and (iii) mention of the source.

Therefore, by using images of Nintendo’s consoles alongside its own console accessories to demonstrate the compatibility of the products, BigBen may not have infringed Nintendo’s registered designs.

Location of Infringement

The CJEU also considered how to determine the place in which the “act of infringement was committed” under the Rome II Regulations when the infringer offers goods on a website directed to Member States other than where the rights holder is domiciled and where the goods are shipped to Member States other than the one in which the infringer is domiciled.

It was decided that the ‘country in which the act of infringement was committed’ refered 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.

Impact on Design Owners

The CJEU’s reasoning behind this decision was to avoid discouragement of innovation of compatible products. Without the use of images of existing products to demonstrate compatibility, manufacturers of accessories would find it increasingly difficult to market their products. Ultimately the CJEU decided that such use of images would not infringe design owners’ monopolies. Whilst the decision is encouraging for makers of accessories and compatible products, this brings to the fore new considerations for the protecting UK and European design right holders.

This update was prepared by HGF IP Solicitor Maherunesa Khandaker.  If you would like further advice on this or any other matter, please contact Maherunesa. Alternatively, you can contact your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.