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CJEU ruling is a setback for video game giant Nintendo in infringement case

27 September 2017
Japanese games giant, Nintendo has suffered a setback before the Court of Justice of the European Union (CJEU) in its ongoing infringement dispute relating to the design of its Wii console.

The CJEU have indicated that BigBen Interactive SA (BigBen France) and its subsidiary, BigBen Interactive GmBh (BigBen Germany), a third party video game accessories manufacturer and distributor may not have infringed Nintendo’s EU registered design right in their consoles when they used images of the consoles on their packaging in order to sell their own console accessories, demonstrating the compatibility between the two branded products. The CJEU held that such a reference for commercial purposes may be a permissible ‘citation’ or ‘illustration’, and therefore not infringe provided that it fulfilled three cumulative conditions. These conditions are that this act of reproduction (i) accorded with fair trade practices, (ii) did not result in undue prejudice to the normal exploitation of the design and (iii) including a note of the source of the articles protected by the design. The CJEU stressed it was for the national court to determine whether these conditions had been fulfilled but noted that the German court had already found condition (ii) was complied with.

The decision reinforces the Advocate General’s opinion that third parties should (subject to the fulfilment of conditions) be able to use illustrations of articles protected by registered community designs to sell their own products. It is considered that allowing design owners to prevent this could discourage innovation in respect of accessories and compatible products. The CJEU accepted this and held that such use would not infringe design owners’ monopolies.

This long awaited decision (which also dealt with jurisdictional issues) could be a blow for iconic designs and highlights a new challenge with the legal protection of designs in the UK and in Europe. Although the CJEU has interpreted what is a ‘citation’ quite broadly, for the defence to apply, use still has to be in accordance with fair trade practices. The CJEU drew parallels with its guidance on this concept in trade mark cases. It also noted that where, as here, source is identified by including the design owner’s EU trade mark, the court will also have to determine whether this complies with trade mark legislation. The upshot is each arguable ‘citation’ use of a registered design by a third party will need to be assessed on its individual facts to determine whether or not it can be prevented by the design owner.

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