Federal Supreme Court sides with Nintendo against Bigben in design litigation

  • Dispute relates to infringement of German design protecting shape of game console controller granted under former design law
  • Federal Supreme Court upheld refusal of leave to appeal lower court decision in favour of Nintendo
  • This is one of the rare cases in which a design registered under former Designs Act has been enforced

On 17 October 2018 the German Federal Supreme Court dismissed an appeal (Case I ZR 28/18) brought by Bigben Interactive GmbH and Bigben Interactive SA against a refusal of leave to appeal a decision issued on 20 January 2018 (Case I-20 U 140/16) by the Dusseldorf Court of Appeal in design infringement proceedings brought by Nintendo Co Ltd in 2014. The Court of Appeal had confirmed a decision of the Dusseldorf District Court dated 11 October 2016 (Case 14c O 234/14) in favour of Nintendo. 

The appeal was dismissed by the Federal Supreme Court with an order without any substantiation. The court merely stated that the case did not merit review because it did not raise issues of law of basic importance and the contested decision was adopted without the infringement of procedural rights. The Supreme Court’s decision is final.

The underlying complaint relates to the infringement of a German design registration protecting the shape of a controller for game consoles, granted under the former German design law and published on 25 July 2001, claiming priority from a Japanese design patent application.

Overall, this dispute is remarkable for three reasons:

  • First, this case is one of the rare disputes in which a German design registered under the former German Designs Act has been enforced. The case is even more remarkable as the design was found to be both valid (upon a counterclaim for a declaration of invalidity to be decided under the old, non-harmonised law) and infringed (to be decided under the current, harmonised law).  
  • Second, the Dusseldorf Court of Appeal, on the merits, accepted additional and new evidence of prior art, but found the claimed design to be new and have individuality over the existing design corpus (with a priority date of 11 August 2000). In particular, the court sided with Nintendo and held that the asserted design’s overall impression “(…) significantly deviates from what was known before in case of both individual consideration or combination (…).” In this respect, the prior German law, which is different from current EU design law, required that individuality be assessed in relation to the submitted prior art as a whole, and not merely in relation to each individual prior design. 
  • Third, the Dusseldorf Court of Appeal agreed with the District Court, which had accepted claims against Bigben Interactive SA, the parent of Bigben Interactive GmbH established in France, from where the infringing products were supplied to Germany where the design is protected. The Court of Appeal held that Bigben Interactive SA was liable without any limitation, either as co-perpetrator, instigator or accomplice.

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