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Tuesday 29 August 2017

Germany/Italy: BMW in claim for infringement of wheel design

This blog post from Dr Meyer-Dulheuer & Partners tells us that BMW have become embroiled in legal proceedings over a design for a wheel. Specifically, they have an EU Registered Design for the wheel, and an Italian company named Acacia has made wheels allegedly to the design. Acacia supply their products under the "Wheels Spare Parts" brand, which gives a pretty clear indication of how they hope to avoid a successful claim that they have infringed. Good luck to them, in light of the Round and Metal case in the UK. Of course the courts of another Member State might differ - and the history of EU design law tells us that continental countries don't necessarily share the UK's views on spare parts.

So far, the dispute has been focused on forum. Acacia applied to the Italian courts for a declaration of non-infringement, and the matter eventually found its way to Luxembourg where the Court of Justice held that the courts of the defendant's country were the right venue for the dispute. The matter is complicated by the fact that the so-called "repair clause" (the EU equivalent of the UK's "must-match" exemption) has been adopted in Italian but not in German law, so (between Germany and Italy) Acacia's defence could only work in its home country. Acacia's apparent hope that BMW's response to the Italian proceedings would give the court jurisdiction didn't work either - although parties to foreign proceedings must always take great care when faced with the need to take a step that could be regarded as accepting jurisdiction.

So now it seems that we can await, with great interest, the judgment on the substantive claim from the German court.

Here is the Judgement of the Court (Second Chamber) from 13 July 2017.

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