Jurisdiction for declarations of non-infringement
The dispute between BMW and Acacia Srl, manufacturer of tires, has brought us another new episode, this time before the Court of Justice of the European Union, regarding the jurisdiction to hear actions for a declaration of non-infringement (negative declarations) and the relationship between Regulation (EC) No 44/2001 on Jurisdiction in civil and commercial matters and Regulation (EC) No 6/2002 on Community Designs.
The tension underlying this dispute is that Acacia Srl is attempting to litigate before the Naples Court, whose interpretations of substantive law are more favourable to its interests, while BMW is trying to exclude such Court jurisdiction.
If the recent judgment of the Spanish Supreme Court was based on the undue accumulation of actions by BMW to attribute the jurisdiction to the Spanish Community Design Court (CDC) – as our lawyer Nuria Ruiz explained here – the present Judgement of the CJEU of July 13 In Case C 433/16 “BMW” comes from a request preliminary ruling raised by the Italian Supreme Court of Cassation to the CJEU concerning the jurisdiction (or otherwise) of the Naples Court related to a Community Designs’ negative declaration.
The questions referred by the Italian Court to the CJEU are summarized as follows:
1. Can an exception of a lack of jurisdiction of a preliminary nature and subject to other procedural exceptions be understood as an acceptance of the jurisdiction of a court?
2. Does imply that article 82.4 of Regulation 6/2002 does not contemplate other alternative forums to the domicile of the defendant an exclusive attribution?
3. Are the exclusive jurisdiction rules of Regulation 44/2001 that are not explicitly extended to declaratory actions of non-infringement – but to other actions derived from IPR- applicable to these cases?
4. Is the case-law arising from the CJEU of 25 October 2012 in Case C-133/11 “Folien Fischer and Fofitec” applicable to negative declarations? Hence, in this case, is the CDC (art 81 R. 6/2002), the court for the place where the harmful event occurred or may occur (art 5.3 R. 44/2001) or may the applicant opt for one or another?
5. If there is connexion between the cases, is it possible to accumulate actions for unfair competition and abuse of dominant position to the negative declaration when the admissibility of any of the former presupposes the admissibility of the latter?
6. Do the two above referred actions constitute a case of tort, delict or quasi-delict? If so, could this condition the applicability of the rules of jurisdiction?
The CJUE answers the first question that the objection raised by the defendant based on the lack of jurisdiction of the Court in any case precludes a tacit acceptance of its competence, still if the exception is made cumulatively and even alternatively to other actions.
On the other hand, with respect to the second and third questions, the Court understands that if the defendant is domiciled in a Member State, declaratory actions of non-infringement must be filed with the CDC of said member state, without prejudice of prorogation of jurisdiction, litis pendens and/or related actions in accordance with the aforementioned Regulations.
After ruling out in reply to the fourth question the applicability of Article 5.3 of Regulation 44/2001 – the place where the harmful event occurred or may occur – to negative declarations, the CJUE responds to the fifth and sixth questions stating that the rule of connection established in Article 28.3 of Regulation 44/2001 does not apply to the claims for a declaration of abuse of a dominant position and unfair competition that are related to negative declarations when the admissibility of any of the former presupposes the admissibility of the latter.
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