Joined Court of Justice Cases C-24/16 and C-25/16, Nintendo v Bigben, were referrals from the Dusseldorf district court concerning unlicensed accessories for Nintendo’s famous Wii games console.

 

Bigben sell these in packaging indicating that they are intended to work with Wii consoles. They do so both by referring to the Wii trade mark, and by depicting genuine Wii controllers on the packaging. Nintendo sued them for infringement of their design registrations for the depicted controller.

 

It appears to have been accepted by the Court that a two-dimensional depiction of a three-dimensional design could in principle infringe. Bigben however raised a defence under Article 20(c) of the design regulation, which excuses – “acts of reproduction for the purpose of making citations or of teaching, provided that such acts are

 

• compatible with fair trade practice, and
• do not unduly prejudice the normal exploitation of the design,
• and that mention is made of the source.”

 

In the English language, advertising does not sound much like “making citations”. However, in the French language, the term “illustration” is used instead of “citation”. In line with the French text, the Court took a broad view of the defence. They noted also that elsewhere in its text, the Regulation makes provision for the supply of interoperable products (e.g. accessories). On this basis, they concluded that “a third party that lawfully sells goods intended to be used with specific goods corresponding to Community designs and reproduces the latter in order to explain or demonstrate the joint use of the goods it sells and a product corresponding to a protected design carries out an act of reproduction for the purpose of making ‘citations.’” There was therefore a potential defence to infringement.

 

The Court ruled on the nature of “fair trade practice”, a necessary element of the defence

 

An act of reproduction of a protected design for the purpose of making citations or of teaching is not compatible with fair trade practice where:

 

• it is done in such a manner that it gives the impression that there is a commercial connection between the third party and the holder of the rights conferred by those designs, or
• where the party who wishes to rely on the defence is selling associated goods that are themselves an infringement, or
• where that third party takes unfair advantage of the holder’s commercial repute.

 

Comment

 

The Court’s interpretation is controversial, and has been criticised by several authors. In the interests of competition, the Court has handed a significant advantage to makers of unlicensed accessories – but to stay within this defence, it is clear that they must not stray into trade mark infringement or “passing off”.

 

As the only possible mention of source of the design (another element of the defence) was the use of Nintendo’s trade mark, the Court of Justice referred back to Dusseldorf the question “whether such a mention is in compliance with the legislation on trademarks”. In other words, the design defence does not carry with it a parallel trade mark defence.