Editor's note: Acacia, Srl company (Hereinafter referred to as "Acacia company" ) It is an Italian company that produces and sells automobile tire replaceable alloy rims, Label the products "WSP Italy" . 2013 years 1 month, Acacia The company filed an action in the Naples District Court for affirmation of non-infringement, It also asks the court to find that its products do not infringe the Community design rights registered by BMW for several alloy rims used in BMW cars, and also asks the court to find that BMW abused its market position and engaged in unfair competition. Read on to predict the conclusion!

[background] Acacia, Srl company (Hereinafter referred to as "Acacia company" ) It is an Italian company that produces and sells automobile tire replaceable alloy rims, Label the products "WSP Italy" . 2013 years 1 month, Acacia The company filed an action in the Naples District Court for affirmation of non-infringement, It asked the court to find that its products did not infringe the Community design rights registered by BMW for several alloy rims used in BMW cars. simultaneously, Acacia The company also asked the court to find BMW guilty of abusing its market position and engaging in unfair competition, Ask the court for an injunction, To prevent BMW from taking improper measures to prevent the products involved from being put on the market. After the Italian Court of Appeal accepted the case, Decided to stay the proceedings and request the European Court of Justice, In terms of how to understand "Regulation of the Council of the European Union on jurisdiction and enforcement of judgments in civil and commercial trials (The first (EC) 44/2001 No) " (Hereinafter referred to as "Brussels I No" ) and "Regulation of the Council of the European Union on the appearance of the Community (The first (EC) 6/2002 No) " (Hereinafter referred to as "European Union regulation (EC) 6/2002 No" ) Relevant clause, Make a preliminary determination.

[conclusion] The first question posed by the court of Admissibility, "Brussels I No" The first 24 Article on the jurisdiction of the accepting court, Should be understood as, The defendant raised the objection to the jurisdiction of the court in the initial defense, And in the same plea to challenge the proceedings, It shall be deemed that the defendant has actually acknowledged the jurisdiction of the accepting court over the case? At the first hearing of this case, The defendant BMW claims that the Naples District Court has no jurisdiction over the case, But at the same time there are questions about compliance with the complaint and Acacia The company's agent filed for an injunction and other issues. The European Court of Justice answered this question in the negative, basis "Brussels I No" The first 24 The provision of the second sentence of the article, If the defendant challenges jurisdiction, Made it clear that it did not accept the court's jurisdiction, the "Admissible cause (defendant) Jurisdiction by implied consent" Will no longer apply. The second and third questions raised by the Court of Admissibility are, "European Union regulation (EC) 6/2002 No" The first 82 The provisions concerning the international jurisdiction of the Community Court of Design, Should be understood as, The ordinance 81 (b) A non-infringement action provided for in the Article may only be heard by the Community Court of Design in the Member State of the defendant (Exclusive application "Brussels I No" Relevant provisions of) ? The European Court of Justice said yes to both questions. "European Union regulation (EC) 6/2002 No" The first 79. 3 Article provision, Unless the parties to the dispute have complied "Brussels I No" The first 23 Article or clause 24 In the manner prescribed in the article to reach agreement on jurisdictional issues, No longer applicable "Brussels Treaty on Jurisdiction and Enforcement of Civil and Commercial Judgments (1968 years) " (Hereinafter referred to as "Brussels treaty" , Still in effect, But most of the rules are "Brussels I No" Absorb and inherit——Translator's note) The first 2, 4, 5 (The first 1, 3, 4 and 5 item) , 16 (The first 4 Period of) and 24 article. Therefore, European court of justice, The first 79. 3 The provisions of the article do not prevent "Brussels I No" The first 23 and 24 Application of article. however, Because the parties in this case have not reached an agreement on jurisdiction, The above question is therefore irrelevant to the case. The fourth question from the court of Admissibility is, "European Union regulation (EC) 6/2002 No" The first 81 (b) Whether the non-infringement action provided for in this article is applicable "Brussels I No" The first 5. 3 Article on jurisdiction? The European Court of Justice said it could not apply. The reason is that, "European Union regulation (EC) 6/2002 No" The first 79. 3 (a) Article provision, The ordinance 81 Invalidity and infringement actions provided in this Article shall not apply "Brussels treaty" The first 5. 3 article (Have been "Brussels I No" The first 5. 3 Strip substitution) Stipulation of. This answer is consistent with the European Court's answers to the second and third questions in the case. Finally, The fifth and sixth questions raised by the Court of Admissibility are, At the same time, the community design confirmation of non-infringement action, It is required to confirm the abuse of dominant market position and unfair competition behavior of the right holder, In this case, Whether applicable "Brussels I No" The first 5. 3 Provisions concerning jurisdiction over torts or wrongful infringements? The answer from the European Court of Justice is still no. To determine whether the court has jurisdiction over a case, The judgment should be based on the whole dispute of the case. If allowed the above cases can be applied "Brussels I No" The first 5. 3 Provision of article, And that inevitably leads to the case "Affirmation of non-infringement" The clause must also apply to the part in dispute. however, According to the answer to the fourth question above, "European Union regulation (EC) 6/2002 No" The first 79. 3 (a) Article provision, The ordinance 81 Invalidity and infringement actions provided in this Article shall not apply "Brussels treaty" The first 5. 3 Provision of article.

[comment] The European Court of Justice reinforced that with its ruling in this case, The international jurisdiction of the Court of Community Design to hear infringement and invalidity of Community design cases derives from "European Union regulation (EC) 6/2002 No" Stipulation of, with "Brussels I No" Compared with the provisions concerning jurisdiction, It is a special law, Should be applied preferentially. For EU trademark similar problem, pass 2014 years 6 month 5 day Coty Germany case (Case number: C-360/12) and 2017 years 5 month 18 day Hummel Holding case (Case number: C-617/15) judgment, The European Court of Justice has adopted the same principle. This principle applies in such questions, The aim is to prevent the use of invocation "Brussels I No" General provisions of, Exclusion of application "Eu trade mark regulation" and "Community Design Regulations" The special provisions on jurisdiction in.

compile: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU)