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Which national law is applicable in the event of infringement of an EU design?

This question had to be answered by the ECJ in its decision of spring 2022 (judgment of March 3, 2022, Case No. C-421/20, Acacia ./. BMW AG) on an action brought by BMW AG against an Italian-based company for infringement of a community design (EU design).

The question of applicable law actually sounds trivial: if an EU design is infringed, one presumes that EU law applies. In principle, this is correct - but for some legal consequences, such as information and damages, there are no rules in the EU Regulation. Therefore, national law comes into play - but which one?

In the case to be decided by the ECJ, the Italian company manufactured rims for motor vehicles in Italy, which were sold in Germany, among other countries, and also advertised on the Internet. BMW wanted to take action against these actions - based on a registered EU design - and had the choice between two jurisdictions: The action could be brought either in Italy at the company's registered office and the place where the rims were manufactured, or in Germany at the place of distribution.

In the case of an action at the defendant's registered office, the ECJ had already ruled that the national law of the state where the "original infringing act" took place was decisive: This is usually the defendant's registered office, where production often takes place or at least distribution starts. BMW, however, filed suit at the Düsseldorf Regional Court, i.e. in Germany. Therefore, the court now had to decide whether German or Italian law was applicable. In this constellation, the addressed community design court only has to decide on infringement acts committed or threatened in the member state in which this court has its seat. Thus, the court then does not have to rule on the EU-wide overall case, but only on the acts committed in Germany. In this case, the ECJ has ruled that the national law of the member state in which the action was brought is applicable - in this case, Germany.

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