Opinion of the Advocate General — ECLI:EU:C:2022:905
Date: 2022-11-17
Language of the case: Polish
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Poland

Summary C-628/21–1 
Case C-628/21 
Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
Date lodged: 
11 October 2021 
Referring court: 
Sąd Okręgowy w Warszawie (Poland) 
Date of the decision to refer: 
21 July 2021 
Applicant: 
TB 
Other parties to the proceedings: 
Castorama Polska Sp. z o.o., ‘Knor’ Sp. z o.o. 
Subject matter of the main proceedings 
Request for information about the origin and distribution networks of goods or 
services infringing an intellectual property right 
Subject matter and legal basis of the request 
Interpretation of Article 8(1) of Directive 2004/48/EC of the European Parliament 
and of the Council of 29 April 2004 on the enforcement of intellectual property 
rights read in conjunction with Article 4(1)(a) of that directive – Legal basis: 
Article 267 TFEU 
Questions referred for a preliminary ruling 
(a) Should Article 8(1) read in conjunction with Article 4(1) of Directive 
2004/48/EC of the European Parliament and of the Council of 29 April 2004 on 
the enforcement of intellectual property rights be understood to refer to a measure 
to protect intellectual property rights only when the rightholder’s intellectual 
property right has been confirmed in these or other proceedings? 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-628/21 
 
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– if Question (a) is answered in the negative 
(b) Should Article 8(1) of the directive, read in conjunction with Article 4(1) of 
Directive 2004/48/EC of the European Parliament and of the Council of 29 April 
2004 on the enforcement of intellectual property rights be interpreted as meaning 
that it is sufficient to substantiate the fact that that measure refers to an existing 
intellectual property right, and not to prove that circumstance, especially in a case 
where a request for information about the origin and distribution networks of 
goods or services precedes the assertion of claims for compensation on account of 
an infringement of intellectual property rights? 
Provisions of European Union law and case-law relied on 
Recital 13, Article 4(1)(a), Article 8(1) and Article 9(1) and (2) of Directive 
2004/48; 
Judgment of 16 July 2009, Infopaq International, C-5/08, EU:C:2009:465; 
Judgment of 18 January 2017, NEW WAVE CZ, C-427/15, EU:C:2017:18; 
Provisions of national law relied on 
Ustawa z dnia 17 listopada 1964 r. – Kodeks postępowania cywilnego (Law of 
17 November 1964 – Code of Civil Procedure, ‘the CCP’) (Dziennik Ustaw 
(Journal of Laws) of 2020, item 1575, consolidated text; ‘the CPC’) – 
Articles 278, 47989, 479112 and 479113; 
Ustawa z dnia 4 lutego 1994 r. o prawie autorskim i prawach pokrewnych (Law of 
4 February 1994 on copyright and related rights) (Dziennik Ustaw (Journal of 
Laws) of 2021, item 1062, consolidated text) – Article 1; 
Ustawa z dnia 16 kwietnia 1993 r. o zwalczaniu nieuczciwej konkurencji (Law of 
16 April 1993 on combating unfair competition) (Dziennik Ustaw (Journal of 
Laws) of 2020, item 1913, consolidated text) – Article 3 and Article 13(1);  
Succinct presentation of the facts and procedure in the main proceedings 
1 For the purposes of the preliminary proceedings, the referring court has accepted 
that the facts are as follows. 
2 TB, the rightholder in the main proceedings, is the owner of online shops selling 
decorative items. As part of its business activity, the rightholder sells machine-
produced reproductions of the images labelled as A, B and C. The rightholder 
states that it is the creator of the images that it reproduces, which it believes are 
works, as defined by copyright law. Each of the images contains an uncomplicated 
graphic consisting of several colours and geometric figures and short sentences. 
CASTORAMA POLAND AND KNOR 
 
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3 Exact copies of images A and B are sold without the rightholder’s consent in the 
online shop and in the physical shops of obligor No 1 (the company Castorama 
Polska), to which they are supplied by obligor No 2 (the company Knor). Neither 
the reproductions originating from the rightholder, nor the reproductions supplied 
to obligor No 1 by obligor No 2 contain details of the authorship or origin of the 
product. Obligor No 1 also sells images supplied by obligor No 2 that contain 
identical text to image C, but with variations in terms of graphics and font. 
4 A visual comparison of the images is as follows: 
Graphic A of the rightholder Graphic A sold by the obligor (exact 
copy) 
  
Graphic B of the rightholder Graphic B sold by the obligor (exact 
copy) 
 
 
Graphic C of the rightholder Graphic C sold by the obligor (identical 
text, differences in terms of graphic 
elements and font) 
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5 After previously filing a pre-litigation request to obligor No 1 to desist from its 
copyright infringement, the rightholder filed the request sent to the referring court 
dated 15 December 2020 for the obligors to provide information about the 
distribution network, a full list of suppliers, information about the quantities of 
goods received and ordered, the date of first marketing the goods in physical 
shops and in the online shop, the quantity of goods sold in physical shops and in 
the online shop and the price received from the sale of the goods, broken down 
into physical sales and online sales. 
6 The legal basis for the request was given as Article 479113 of the CPC, as the 
provision implementing Article 8 of Directive 2004/48. In its request, the 
rightholder referred to images (graphics), reproductions of which are sold by 
obligor No 1 and supplied to them by obligor No 2, pointing out that it holds the 
financial and personal copyright to these images. It indicated that the information 
requested was required for further assertion of the copyright infringement claims 
and possible compensation claims for unfair competition. The request for 
information was therefore submitted prior to the start of the proceedings that 
would result in the possible determination of an intellectual property right 
infringement, which means that the request is not accompanied at this point by 
claims seeking to protect intellectual property rights. 
7 Obligor No 1 requested that the application be dismissed and applied for the 
possible issue of as narrow a judgment as possible, limited only to works as 
defined by copyright law (questioning, however, the status of the images in 
question as works). It also referred to the protection of business secrets and to the 
fact that the rightholder did not indicate that it held the financial copyright to the 
products sold, since the intellectual creations to which the application refers are 
not original. Accepting the rightholder’s request would therefore signify the 
granting of copyright protection to the concepts and ideas since the reproductions 
to which the request refers fit with the current trend of so-called simplified 
motivational graphics containing trivial sentences such as ‘be positive’ and ‘don’t 
forget to smile’. Obligor No 1 believes that all of the graphic elements of the 
CASTORAMA POLAND AND KNOR 
 
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disputed reproductions are trivial, reproducible and in no way original (in terms of 
their composition, colours, use of fonts, etc.) compared with other graphics 
available on the market. 
8 After examining the response of obligor No 1, the rightholder did not submit any 
evidence to demonstrate the existence of intellectual property rights through an 
expert opinion on the graphics and design. 
9 The referring court learned of this ex officio and presented the parties with its 
doubts concerning the interpretation of European Union law (Article 8(1) of 
Directive 2004/48), especially in reference to the response to the question of the 
need to prove or merely substantiate the nature of the legal interest to which the 
proceedings refer, taking into account the fact that Articles 6 and 7 of Directive 
2004/48 use different wording and Article 4 of Directive 2004/48, which 
recognises persons entitled to seek application of the measures, procedures and 
remedies as the holders of intellectual property rights. The court also had concerns 
about the possibility of a variable standard of evidence – and therefore the 
existence or absence of active procedural legitimisation – depending on whether 
this interest is a work or a product that does not have the characteristics of a work 
and is not protected by exclusive rights. 
The essential arguments of the parties in the main proceedings 
10 The rightholder and obligor No 2 did not take a position regarding the concerns of 
the referring court, while obligor No 1 stated that pursuant to Article 8 of 
Directive 2004/48, implemented by Article 479113, paragraph 1, of the CPC, the 
violation of an intellectual property right must be proven, not merely 
substantiated. 
Succinct presentation of the reasoning in the request for a preliminary ruling 
11 The referring court must issue a decision on the validity of the request for 
information about the origin and distribution networks of the goods or services 
which infringe an intellectual property right. A prerequisite for this decision is a 
determination as to whether the rightholder holds the intellectual property right. 
This is, however, conditional upon the answer to the question of whether the right 
to which the rightholder refers is linked to interests protected under Directive 
2004/48 and whether this circumstance should be confirmed in the proceedings to 
provide information, or merely substantiated. 
12 The referring court notes that in accordance with recital 13 of Directive 2004/48, 
it covers all the intellectual property rights covered by Community provisions in 
this field or by the national law of the Member State concerned, including 
copyright. Its provisions may also be extended, for internal purposes, to include 
‘acts involving unfair competition, including parasitic copies, or similar 
activities’. 
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13 Although the referring court believes that Polish case-law does not provide an 
unequivocal answer in this respect, for the purposes of this case this court accepts 
the interpretation by which national law, for internal purposes, has extended the 
application of the provisions of Directive 2004/48 to acts of unfair competition 
consisting of the exact copying of products (even if they are not subject to 
copyright, rights to a registered trademark or other exclusive rights). Therefore, in 
terms of images A and B, there is no issue with the interpretation of European 
Union law. The rightholder has certainly not only substantiated but also proved 
that obligor No 1 sold products that were an exact copy of its images A and B. 
14 A decision on the request in terms of image C, however, requires the 
interpretation of European Union law. In the case of this image, we are not dealing 
with a copy of the external form of the product. What has been used is the text, 
maintaining its layout on the page, but using other graphic elements and other 
fonts. The referring court therefore needs to determine whether we are dealing 
with a work. 
15 According to Polish case-law, the examination of the features of a work, in terms 
of its creativity, is a task for the relevant court, which in principle does not have to 
seek the opinion of an expert in this respect, unless a particular case is 
complicated by the factual matters of the case and the judge’s experience is 
insufficient. It is also accepted that the burden of proof and the submission of a 
request for an expert opinion lies with the party, so the court should notify the 
party if it has doubts in this respect. 
16 Polish legal commentators have adopted two contradictory viewpoints on the 
interpretation of Article 479113 of the CPC, which implements Article 8 of 
Directive 2004/48. According to one viewpoint, the circumstances indicating an 
infringement of a right must be reliably demonstrated, which results in an 
obligation to prove this, rather than just substantiate it. According to the other 
viewpoint, there is no need to prove the infringement, but merely substantiate it 
since a claim for information under Article 8(1) of the directive may be sent not 
only to the infringer but also to a third party. 
17 Concerns regarding the interpretation of Article 8(1) of Directive 2004/48 
influence the interpretation of Article 479113 of the CPC. Their settlement affects 
the way in which the request for information is settled. So, if Article 8(1) of 
Directive 2004/48 is to be understood to refer to a measure to protect intellectual 
property rights only when an infringement is proven in relation to the interest of 
the copyright holder, then in a situation where the court is unable to carry out an 
independent assessment without the support of an expert on account of a lack of 
specialist knowledge, the request in this respect should be dismissed (if such 
evidentiary proceedings with the participation of an expert are not carried out). 
However, if substantiation is sufficient and it is not necessary to confirm (or 
assume) the existence of an intellectual property right in these proceedings, but 
only substantiate this, the request for information should be accepted in full. 
CASTORAMA POLAND AND KNOR 
 
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18 The concerns regarding the interpretation of Article 8(1) of Directive 2004/48 also 
come from the fact that Article 4(1)(a) of Directive 2004/48 states that ‘Member 
States shall recognise as persons entitled to seek application of the measures, 
procedures and remedies referred to in this Chapter: … the holders of intellectual 
property rights, in accordance with the provisions of the applicable law’. It is the 
court’s view that this provision shows that the issue of entitlement to an 
intellectual property right should be proven and not merely substantiated. 
Protective measures are for the rightholder, not the person who is the alleged 
subject of the intellectual property rights. 
19 In turn, Article 9(1) of Directive 2004/48 refers to the concept of the alleged 
infringer – which indicates that the matter of the infringement itself does not have 
to be prejudged unequivocally in reference to the measures set out in Articles 6, 7 
and 8 of Directive 2004/48 – but this concept is not applicable to the applicant 
rightholder. In turn, in accordance with Article 4(1)(a) of Directive 2004/48, this 
may only be the holder of the intellectual property rights. 
20 In the referring court’s opinion, the judgment of the Court of Justice of the 
European Union of 18 January 2017, NEW WAVE CZ, C-427/15, EU:C:2017:18, 
shows that a request for information (pursuant to Article 8(1) of Directive 
2004/48) may be submitted in the context of court proceedings concerning an 
infringement of an intellectual property right, with it not being necessary in the 
proceedings relating to the right to information to confirm the infringement of an 
intellectual property right, which means that the applicant has only to substantiate 
the circumstances of the infringement. It seems clear, therefore, that Article 8(1) 
of Directive 2004/48 recognises the right to information in order to determine the 
scope, extent and fact of an intellectual property right infringement in the event of 
the uncertainty of the rightholder in terms of these facts. 
21 This reasoning, however, cannot be applied to the issue determining the 
submission of a request for information (Article 8(1) of Directive 2004/48), in 
other words the matter of whether a given person holds the intellectual property 
right at all. If we acknowledge that this issue may only be substantiated, we would 
be dealing with an imbalance between basic rights – to the detriment of the 
commercial secrets, business secrets and business interests to which the request 
for information refers. In the proceedings to request information, the information 
required should be provided to determine the scope and source of the 
infringement. It does not seem reasonable to simultaneously adopt this same 
standard in relation to the fact of whether a given person is the intellectual 
property right holder. This matter should be confirmed, rather than merely 
substantiated 
22 Taking the above comments into account, the referring court proposes that 
Question (a) be answered in the affirmative. If that question is answered in the 
negative, the court proposes answering Question (b) in the negative, in other 
words that it is not sufficient to substantiate that the protective measure in 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-628/21 
 
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question concerns an existing intellectual property right, since that circumstance 
would need to be proven.