For the first time the CJEU has ruled on the interpretation of the act of citing a Community Registered design (RCD). Said limitation on the rights conferred by an RCD is provided in Article 20(1)(c) CDR:
"1. The rights conferred by a Community design shall not be exercised in respect of:
(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."
CJEU 27 September 2017, C-24/16 and C-25/16 (Nintendo/BigBen)
The matter was brought before the CJEU following a dispute between the gaming company Nintendo and BigBen Interactive France. Nintendo possesses many RCDs relating to its gaming consoles and accessories for these consoles (e.g. the Wii). BigBen produces remote controls and other accessories compatible with the Wii console and sells them via its website. When offering these compatible accessories BigBen uses pictures which also depict the products of Nintendo for which Nintendo holds RCDs. Nintendo opposes the use of such pictures on the basis of it design rights.
The CJEU ruled that the relevant limitation of Article 20(1)(c) CDR 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 images of goods corresponding to such designs when lawfully offering goods for sale 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 could thus be authorised under that provision, provided that it fulfils the cumulative conditions laid down in it, which is for the national court to verify.
The cumulative conditions put briefly are: use in accordance with (i) fair trade practice, (ii) absence of undue prejudice to the normal exploitation of the design and (iii) mention of the source.
As to the condition of 'fair trade practice', the CJEU states that this ought to be interpreted in the same way as the concept of 'honest practices in industrial or commercial matters' as used in Art. 12 EUTMR (a similar provision to Art. 20(1)(c) CDR) and to apply the case law mutatis mutandis. The CJEU Gillette case (C-228/03) is deemed particularly relevant in this regard. Therefore, according to the CJEU the use of a depiction of a design is not compatible with fair trade practice within the meaning of Art. 20(1)(c) CDR 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, or where that third party takes unfair advantage of the holder's commercial repute.
As to the condition requiring acts of reproduction for the purpose of making citations not to unduly prejudice the normal exploitation of the design, the CJEU notes 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.
Comment
The CJEU has now, for the first time, ruled on the interpretation of the authorised act of de facto depicting an RCD when lawfully offering goods for sale intended to be used as accessories to the specific goods of the holder of the design.
It is not surprising that the CJEU - as to the interpretation of this authorised act and the concept of 'fair trade practice' - refers to the counterpart in trade mark law. That is, the concept of 'honest practices in industrial or commercial matters' as interpreted in the Gillette case (C-228/03). Ultimately it is for the national courts to determine whether the cumulative conditions are met when an RCD is depicted for commercial purposes, that is, use in accordance with (i) fair trade practice, (ii) absence of undue prejudice to the normal exploitation of the design and (iii) mention of the source.
It is noteworthy that in the Gillette case the CJEU ruled that the lawfulness of the use of a trade mark depends on whether that use is necessary to indicate the intended purpose of a product. "Use of the trade mark by a third party who is not its owner is necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constitutes the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product" (Gillette (C-228/03), par. 39).
Analogously, if one adopts this strict approach on the necessity of using a depiction of a design, you could advocate that the third party could suffice with just a reference to the name or trade mark of the product for which it offers a compatible product, rather than in addition depicting the design of that product. Could BigBen not just suffice with, for instance, depicting its remote control and indicating that it is compatible with the 'Nintendo Wii'? With gaming consoles, in particular, it seems that the consumer is well aware which gaming console it actually owns.
There could be a greater necessity to depict a design in those cases where, for instance, it concerns accessories/compatible products which relate to products which have (many) different models, where the exact model will normally be unknown to the consumer, or where incompatibility could create a risk of damage and/or injury.
It will be interesting to see whether national courts - when it concerns depiction of designs in order to show compatibility - will also analogously apply the strict approach on necessity as adopted in the Gillette case.
For the first time the CJEU has ruled on the interpretation of the act of citing a Community Registered design (RCD). Said limitation on the rights conferred by an RCD is provided in Article 20(1)(c) CDR:
"1. The rights conferred by a Community design shall not be exercised in respect of:
(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."
CJEU 27 September 2017, C-24/16 and C-25/16 (Nintendo/BigBen)
The matter was brought before the CJEU following a dispute between the gaming company Nintendo and BigBen Interactive France. Nintendo possesses many RCDs relating to its gaming consoles and accessories for these consoles (e.g. the Wii). BigBen produces remote controls and other accessories compatible with the Wii console and sells them via its website. When offering these compatible accessories BigBen uses pictures which also depict the products of Nintendo for which Nintendo holds RCDs. Nintendo opposes the use of such pictures on the basis of it design rights.
The CJEU ruled that the relevant limitation of Article 20(1)(c) CDR 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 images of goods corresponding to such designs when lawfully offering goods for sale 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 could thus be authorised under that provision, provided that it fulfils the cumulative conditions laid down in it, which is for the national court to verify.
The cumulative conditions put briefly are: use in accordance with (i) fair trade practice, (ii) absence of undue prejudice to the normal exploitation of the design and (iii) mention of the source.
As to the condition of 'fair trade practice', the CJEU states that this ought to be interpreted in the same way as the concept of 'honest practices in industrial or commercial matters' as used in Art. 12 EUTMR (a similar provision to Art. 20(1)(c) CDR) and to apply the case law mutatis mutandis. The CJEU Gillette case (C-228/03) is deemed particularly relevant in this regard. Therefore, according to the CJEU the use of a depiction of a design is not compatible with fair trade practice within the meaning of Art. 20(1)(c) CDR 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, or where that third party takes unfair advantage of the holder's commercial repute.
As to the condition requiring acts of reproduction for the purpose of making citations not to unduly prejudice the normal exploitation of the design, the CJEU notes 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.
Comment
The CJEU has now, for the first time, ruled on the interpretation of the authorised act of de facto depicting an RCD when lawfully offering goods for sale intended to be used as accessories to the specific goods of the holder of the design.
It is not surprising that the CJEU - as to the interpretation of this authorised act and the concept of 'fair trade practice' - refers to the counterpart in trade mark law. That is, the concept of 'honest practices in industrial or commercial matters' as interpreted in the Gillette case (C-228/03). Ultimately it is for the national courts to determine whether the cumulative conditions are met when an RCD is depicted for commercial purposes, that is, use in accordance with (i) fair trade practice, (ii) absence of undue prejudice to the normal exploitation of the design and (iii) mention of the source.
It is noteworthy that in the Gillette case the CJEU ruled that the lawfulness of the use of a trade mark depends on whether that use is necessary to indicate the intended purpose of a product. "Use of the trade mark by a third party who is not its owner is necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constitutes the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product" (Gillette (C-228/03), par. 39).
Analogously, if one adopts this strict approach on the necessity of using a depiction of a design, you could advocate that the third party could suffice with just a reference to the name or trade mark of the product for which it offers a compatible product, rather than in addition depicting the design of that product. Could BigBen not just suffice with, for instance, depicting its remote control and indicating that it is compatible with the 'Nintendo Wii'? With gaming consoles, in particular, it seems that the consumer is well aware which gaming console it actually owns.
There could be a greater necessity to depict a design in those cases where, for instance, it concerns accessories/compatible products which relate to products which have (many) different models, where the exact model will normally be unknown to the consumer, or where incompatibility could create a risk of damage and/or injury.
It will be interesting to see whether national courts - when it concerns depiction of designs in order to show compatibility - will also analogously apply the strict approach on necessity as adopted in the Gillette case.