Opinion of the Advocate General — ECLI:EU:C:2019:760
Date: 2019-09-18
Language of the case: Dutch
Subject matter: General provisions;Intellectual, industrial and commercial property;Designs
Procedure: Reference for a preliminary ruling
Origin: Netherlands

Translation C-678/18 — 1 
Case C-678/18 
Request for a preliminary ruling 
Date lodged: 
5 November 2018 
Referring court: 
Hoge Raad der Nederlanden (Netherlands) 
Date of the decision to refer: 
2 November 2018 
Appellant: 
Procureur-Generaal bij de Hoge Raad der Nederlanden 
Respondent: 
  
[...]       [...] 
[...] 
Hoge Raad der Nederlanden 
(Supreme Court of the Netherlands)  
Judgment 
On an appeal in cassation in the interest of the uniform application of 
the law, brought by the Procureur-Generaal (Procurator General) at the 
Hoge Raad der Nederlanden and directed against the decision of the 
voorzieningenrechter in de rechtbank Amsterdam (judge hearing the 
application for interim measures at the District Court, Amsterdam) of 
12 January 2017, [...] [Or. 2] 
1. The facts of the case 
For the facts of the case the Hoge Raad refers to the abovementioned decision of 
the voorzieningenrechter at the rechtbank Amsterdam. 
The decision of the voorzieningenrechter is annexed to the present judgment. 
EN 
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2. The appeal in cassation 
The Procureur-Generaal has lodged an appeal in cassation against the decision of 
the voorzieningenrechter in the interest of the uniform application of the law. The 
notice of appeal in cassation is annexed to the present judgment and forms part 
thereof.  
The action brought by the Procureur-Generaal seeks to have the Hoge Raad annul 
the contested decision in the interest of the uniform application of the law, or at 
least suspend the proceedings in order to refer a question for a preliminary ruling 
to the Court of Justice of the European Union on the interpretation of Article 90 of 
Council Regulation(EC) No 6/2002 of 12 December 2001 on Community designs, 
on the understanding that the annulment will not be prejudicial to the rights 
acquired by the parties involved.  
3. Appraisal of the plea 
3.1 The appeal in cassation lodged by the Procureur-Generaal in the interest of 
the uniform application of the law raises the question whether [Or. 3] 
Article 90(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on 
Community designs (OJ 2002 L 31, p. 1; ‘Regulation No 6/2002’) precludes the 
legislation of a Member State from stipulating (as is the case in the Netherlands) 
that the exclusive jurisdiction of the courts and tribunals designated on the basis of 
Article 80(1) of Regulation No 6/2002 also applies to the provisional and 
protective measures as referred to in Article 90 of that regulation.  
3.2.1 Starting points in cassation 
(i) Spin Master is a Canadian toy product company. Under the brand name 
‘Bunchems’ it markets toy balls (bunching balls) made of plastic. The balls 
‘bunch’ together, allowing all kinds of shapes and figures to be made. The balls 
are marketed in eight colours.  
(ii) On 16 January 2015 a Community design was registered for the toy balls in 
the name of Spin Master under number 002614669-0002. 
(iii) High5 markets toys. Under the name ‘Linkeez’ it also trades in toy balls 
(bunching balls) made of plastic. The balls ‘bunch’ together, allowing all kinds of 
shapes and figures to be made. The balls are marketed in eight colours. [Or. 4] 
3.2.2 The voorzieningenrechter of the rechtbank Amsterdam ruled inter alia as 
follows in the order which is the subject of the appeal in cassation in the interest 
of the law: 
‘jurisdiction 
4.1. High5 has argued, before submitting any defence, that the 
voorzieningenrechter of the Rechtbank has no jurisdiction to hear the present 
PROCUREUR-GENERAAL BIJ DE HOGE RAAD DER NEDERLANDEN 
 
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dispute. The main legal ground relied on by Spin Master is the infringement 
of its Community design. Therefore, according to High5, the rechtbank Den 
Haag (District Court, The Hague) has exclusive jurisdiction to hear the 
present dispute. Spin Master, on the other hand, has taken the position that 
the voorzieningenrechter of this Rechtbank does have jurisdiction to hear the 
present dispute.  
4.2. Like the parties, the voorzieningenrechter is of the view that the courts 
of the Netherlands have jurisdiction in these interim proceedings. However, 
there is a difference of opinion in Netherlands case-law as to whether the 
voorzieningenrechters of courts other than the rechtbank Den Haag have 
jurisdiction to hear a dispute concerning a Community design in interim 
proceedings. Article 90(1) of the Community Designs Regulation provides 
that national courts which have jurisdiction to hear disputes on national 
designs also have jurisdiction to grant provisional and protective measures in 
relation to a Community design. It follows in this case that the 
voorzieningenrechter of the present Rechtbank has jurisdiction because, 
under rules of jurisdiction in the Netherlands, it has jurisdiction to hear 
actions relating to a Benelux design. While it is true that Article 3 of the 
Uitvoeringswet EG-verordening betreffende Gemeenschapsmodellen 
(Implementing Law on the EC Regulation on Community Designs) 
stipulates that, for all claims referred to in Article 81 of the Regulation, the 
rechtbank Den Haag alone has jurisdiction at first instance, and in interim 
proceedings, the voorzieningenrechter of that Rechtbank, this does not mean 
that the voorzieningenrechter of the present Rechtbank would not have 
jurisdiction in the current interim proceedings, relating to an application for 
an injunction that is limited to Netherlands territory. Reference is made in 
this regard to the judgment of the Gerechtshof (Court of Appeal) Amsterdam 
of [Or. 5] 4 January 2007 [...]. High5 does not dispute the fact that the 
voorzieningenrechter of the present Rechtbank in any event has jurisdiction 
under Article 102 of the Rv (Code of Civil Procedure) to consider claims 
relating to infringement of copyright or slavish imitation. After all, the 
alleged infringement took place in the Amsterdam district.’ 
3.3 The Procureur-Generaal is seeking annulment of that decision of the 
voorzieningenrechter of the rechtbank Amsterdam, against which no ordinary 
appeal lies, ‘in the interest of the uniform application of the law’. The appeal in 
cassation implies that the voorzieningenrechter has disregarded the fact that the 
voorzieningenrechter of the rechtbank Den Haag alone has jurisdiction to deal 
with claims regarding the granting of provisional and protective measures relating 
to infringement of Community designs.  
3.4.1 The provisions of Regulation No 6/2002 which are relevant in this regard are 
Articles 80, 81 and 90. They read, in so far as is relevant here, as follows: 
‘Section 2 
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Disputes concerning the infringement and validity of Community 
designs  
Article 80 
Community design courts 
1. The Member States shall designate in their territories as limited a 
number as possible of national courts and tribunals of first and second 
instance (Community design courts) which shall perform the functions 
assigned to them by this Regulation. [Or. 6] 
Article 81 
Jurisdiction over infringement and validity 
The Community design courts shall have exclusive jurisdiction: 
(a) for infringement actions and — if they are permitted under national 
law — actions in respect of threatened infringement of Community 
designs; 
(b) for actions for declaration of non-infringement of Community designs, 
if they are permitted under national law; 
(c) for actions for a declaration of invalidity of an unregistered 
Community design; 
(d) for counterclaims for a declaration of invalidity of a Community 
design raised in connection with actions under (a).  
Article 90 
Provisional measures, including protective measures 
1. Application may be made to the courts of a Member State, including 
Community design courts, for such provisional measures, including 
protective measures, in respect of a Community design as may be available 
under the law of that State in respect of national design rights even if, under 
this Regulation, a Community design court of another Member State has 
jurisdiction as to the substance of the matter.  
2. (...) 
3. A Community design court whose jurisdiction is based on 
Article 82(1), (2), (3) or (4) shall have jurisdiction to grant provisional 
measures, including protective measures, which, subject to any necessary 
procedure for recognition and enforcement pursuant to Title III of the 
PROCUREUR-GENERAAL BIJ DE HOGE RAAD DER NEDERLANDEN 
 
5 
Convention on Jurisdiction and Enforcement, are applicable in the territory 
of any Member State. No other court shall have such jurisdiction.’  
3.4.2 Article 3 of the (Netherlands) Wet van 4 november 2004 tot uitvoering van 
de verordening van de Raad van de Europese Unie betreffende 
Gemeenschapsmodellen houdende aanwijzing van de rechtbank voor het 
Gemeenschapsmodel (Law of 4 November 2004 implementing the Regulation of 
the Council of the European Union on Community designs, designating the court 
for [Or. 7] the Community designs (Implementing Act EC Regulation on 
Community designs) (Uitvoeringswet EG-verordening betreffende 
Gemeenschapsmodellen; Law implementing the EC Regulation on Community 
designs) (Staatsblad 2004/573), provides as follows: 
‘In respect of all actions referred to in Article 81 of the Regulation, the 
rechtbank Den Haag shall have exclusive jurisdiction at first instance, and, 
in interim proceedings, the voorzieningenrechter of that Rechtbank.’ 
According to the legislative history of that law, as set out in the action of the 
Procureur-Generaal under 3.6, the legislature’s intention with that provision was 
to make the best possible use of the special expertise of the Rechtbank and the 
Gerechtshof Den Haag in matters of intellectual property.  
3.5.1 The plea raises the question referred to in 3.1 above, which is dealt with in 
different ways in the case-law and in literature, in other Member States too, as is 
evident from points 3.7-3.25 of the action of the Procureur-Generaal. The text of 
Regulation No 6/2002 does not provide any conclusive answer to that question.  
3.5.2 It is possible that the EU legislature’s intention with the Regulation, as far as 
the provisional and protective measures referred to in Article 90 of Regulation 
No 6/2002 are concerned, was to make a mandatory exception to the objective 
expressed in the preamble (recital 29) of promoting specialisation in the courts — 
with [Or. 8] a view to which Article 80(1) of Regulation No 6/2002 provides that 
the Member States must designate as limited a number as possible of national 
courts and tribunals of first and second instance as ‘Community design courts’ — 
so that the decisions on such provisional and protective measures, on the part of 
courts which do not belong to those designated courts, have no effect outside the 
territory of the Member State concerned (Article 90(3) Regulation No 6/2002). 
Such an interpretation would mean that Member States are not free to assign the 
hearing of all claims for provisional and protective measures in design matters 
exclusively to the Community design courts. 
3.5.3 It is also conceivable that the EU legislature did not intend anything more 
than to grant the Member States the power to lay down in their national legislation 
that the hearing of actions for the granting of measures as referred to in Article 90 
of Regulation No 6/2002 can, in addition to the Community design courts, also be 
assigned to the other courts and tribunals that are competent to grant such 
measures in cases concerning national designs (to which bodies the restriction laid 
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down in Article 90(3) of Regulation No 6/2002 would then apply). Given the 
provisions of Article 3 of the Netherlands Uitvoeringswet, referred to above in 
3.4.2, [Or. 9], the Netherlands legislature has apparently taken that interpretation 
as its point of departure and has accorded decisive importance to the expertise of 
specialised courts, designated on the basis of Article 80(1) of Regulation 
No 6/2002.  
3.5.4 Finally, the interpretation defended in the Procureur-Generaal’s action, to 
the effect that Article 81 of Regulation No 6/2002 makes the internal jurisdiction 
of the Community design courts compulsory for the claims referred to in that 
article (regardless of whether or not it concerns the substance of the case), is 
conceivable, with the result that Article 90 of Regulation No 6/2002 applies only 
to a different type of provisional and protective measures.  
3.5.5 This is a question of interpretation of EU law. It cannot be said that there can 
be no reasonable doubt as to how that question must be answered, nor that that 
question has already been answered in the case-law of the Court of Justice. The 
Hoge Raad will therefore refer to the Court of Justice for a preliminary ruling the 
question to be set out below.  
4. Description of the facts to which the interpretation to be given by the Court 
of Justice must be applied, and the nature of that procedure [Or. 10] 
4.1 The Hoge Raad refers to the facts set out above in paragraph 3.2.1, which 
should serve as the point of departure. 
4.2 The Hoge Raad draws attention to the fact that the question of interpretation 
has arisen in so-called cassation proceedings ‘in the interest of the uniform 
application of the law’. Under Article 111(2)(c) of the Wet op de rechterlijke 
organisatie (Law on Judicial Organisation; ‘the Wet RO’), the Procureur-Generaal 
has the power to bring such actions before the Hoge Raad for the annulment of 
judgments and decisions of courts and tribunals. The Hoge Raad is the court 
which has the jurisdiction to hear such an action, provided that no ordinary appeal 
can (any longer) be lodged against the judgment or decision in question. An 
annulment by the Hoge Raad has no effect on the legal position of the parties to 
the decision the subject of the appeal. The foregoing is provided for in Article 78 
of the Wet RO, which, in so far as is relevant here, reads as follows: 
‘1. The Hoge Raad shall take cognisance of appeals in cassation against 
acts, judgments, and decisions of the courts and tribunals, whether instituted 
by one of the parties or “in the interest of the uniform application of the law” 
by the Procureur-generaal before the Hoge Raad.  
(...) 
PROCUREUR-GENERAAL BIJ DE HOGE RAAD DER NEDERLANDEN 
 
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7. An appeal in cassation “in the interest of the uniform application of the 
law” cannot be instituted if an ordinary appeal is available to the parties and 
does not prejudice the rights acquired by the parties.’ [Or. 11] 
4.3 If the Procureur-Generaal sees reason to institute appeal proceedings in 
cassation in the interest of the uniform application of the law, there is without 
exception a disputed legal question which is at issue in many cases and on which, 
absent a ruling by the Hoge Raad, divergent views exist in the case-law. The 
instrument therefore promotes legal uniformity.  
Under Article 78 of the Wet RO, in conjunction with Article 26 of the Rv 
(prohibition of the denial of justice), the Hoge Raad is obliged to rule on the claim 
of the Procureur-Generaal, with the result that the answer to the question to be 
formulated and referred for a preliminary ruling is indispensable.  
5. The question of interpretation 
The question of interpretation which, in view of the foregoing considerations, 
must be submitted to the Court of Justice, reads as follows: 
Must Article 90(1) of Regulation No 6/2002 be interpreted as requiring the 
mandatory granting, to all courts and tribunals of a Member State referred to 
therein, of jurisdiction to grant provisional and protective measures, or does 
it leave the Member States — in full or in part — free to delegate 
jurisdiction to grant such measures exclusively to the courts and tribunals 
which, in accordance with Article 80(1) of Regulation No 6/2002, have been 
designated as courts (of first and second instance) for Community design? 
6. Decision 
[reference to the question formulated under 5, suspension of the procedure and 
procedural information] 
[...] [Or. 12] 
[...] 
[...]