The Spanish Supreme Court rules on “forum shopping”: Judgment no. 1/2017, of 10 January 2017.
The international dimension of a legal dispute provides the plaintiffs, in most cases, with a variety of options concerning the national courts competence, owing to the complex web of rules on international jurisdiction. Consequently, plaintiffs are tempted to choose the courts that are more likely to rule in their favour; however, some limits have been established through case-law, on the basis of the necessary predictability of the choice of court and the prohibition of the abuse of rights and fraud.
This line of reasoning was followed by the Spanish Supreme Court in its Judgment of January 10 2017 (ECLI:ES:TS:2017:24), with regards to a controversy between the well-known German car manufacturer Bayerische Motoren Werke AG (hereafter, BMW) and the Italian company Acacia SRL, engaged in the manufacture of rims replicas, and one of the largest distributors of these products in the European Union.
In August 2011, BMW filed a EU design infringement suit against Acacia SRL and Autohaus Motorsport S.L., a car workshop located in Spain. This second defendant (which finally did not take part in the proceeding and aquiesced BMW’s claim) was offering for sale the rims manufactured by Acacia, but had no direct commercial relationship with the latter.
The lawsuit against both companies was filed before the Commercial Courts of Alicante, on the basis of article 6.1 of the Council Regulation (EC) No. 44/2001 of December 2000, on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters which states that: “A person domiciled in a Member State may also be sued where he is the one of a number of defendants, in the courts for the place where any 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”.
The international jurisdiction of the Spanish courts was contested by Acacia SRL since the very first stage of the procedure.
According to the defendant, this actions joint against the Italian company and the Spanish workshop was a procedural strategy designed by BMW with the sole purpose of avoiding the jurisdiction of the Tribunal of Naples. As a matter of fact, this court had ruled against BMW in similar cases, considering that the wheel rims are not protected by design rights, by means of article 110 of Council Regulation (EC) No.6/2002 of 12 December 2001 on Community designs which excludes from the protection the “component parts of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance” (the so-called repair clause, studied in this post) .
After the dismissal of this plea by the Community Design Court, the lack of jurisdiction was raised again during the appeal phase. The Appeal court upheld the pleadings of Acacia SRL, pointing out the fact that, in addition to the abovementioned arguments, the Courts of Alicante had decided against the applicability of the must-match clause to wheel rims on several occasions.
The case reached the Spanish Supreme Court. After a long and complex argumentation concerning the different regulations and articles governing international jurisdiction in trademark and design cases, this particular controversy between BMW and Acacia was solved, in our opinion, resorting to logic. Paraphrasing the Court’s ruling, if an important manufacturer and distributor of allegedly infringing products can be sued in any Member State in which a sale takes place, even if the products have not been provided directly to the seller by such manufacturer, simply by joining the actions against the foreign manufacturer and the local seller in the same lawsuit, and the ultimate goal of such actions is to forbid the commercialization of the infringing products throughout the European Union, then the only criteria for determining the competent court is the plaintiff’s will.
As a matter of conclusion, the Supreme Court considered that the link between the substantive issue and the Spanish Courts was too weak to justify the application of article 6.1 of the Regulation 44/2001, concluding that a procedural strategy built with the sole purpose of designating a court whose case-law is favourable to the defendant goes against the most elementary requirements of predictability.
Related Posts:
- Jurisdiction for declarations of non-infringement
- Comments on the Objective and Territorial Competence of Spanish Courts to Hear about Actions for Annulment of Patents
- The repair clause (“must match”): Is it applicable in cases of trademark infringement? – Brief Analysis of the Spanish case law
- On the Different Interpretation of Forum Delicti Commissi in Relation to EU Trademarks and National Trademarks