Opinion of the Advocate General — ECLI:EU:C:2016:900
Date: 2016-11-24
Language of the case: Polish
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Poland

summary, it is my conclusion as regards the application of Articles 3 and 13(1)(b) of Directive 2004/48 to the calculation of damages in the case in the main proceedings, first, that the onus will be on the rightholder to establish that the circumstances of the case in question justify the making of an award of damages under the national equivalent of subparagraph (b) of Article 13(1) of the directive and that it is accordingly ‘appropriate’ to do so and, second, that they preclude a national rule whereunder a rightholder may claim a fixed sum of two or three times the amount of the fee which would have been payable if the rightholder had given permission for the work to be used. They do not, however, render unlawful a national rule under which the rightholder may claim a sum which is limited to two or three times that amount provided that the rightholder can establish that the sum claimed is proportionate to the damage suffered. The onus is on the rightholder to demonstrate that this is the case. The applicability of Article 2(1) of Directive 2004/48 to the case in the main proceedings 49. For the reasons indicated in point 24 above, it is necessary to consider the applicability of Article 2(1) of Directive 2004/48 to the case in the main proceedings. It provides for the measures, procedures and remedies provided for by the directive to apply to any infringement of intellectual property rights under EU or national law. Such application is, however, ‘without prejudice to the means which are or may be provided for in [EU] or national legislation, in so far as those means may be more favourable to rightholders’. (27) 50. At EU level, the provision thus makes it clear that Directive 2004/48 is to have no impact on remedies for the infringement of intellectual property rights laid down by other EU legislation which go beyond those specified in the directive itself. (28) An obvious example of such a remedy would be the entitlement given to a trade mark holder to apply for a declaration of invalidity of an EU trade mark under what are now Articles 52 and 53 of Regulation No 207/2009 (29) where he considers that the effect of the registration of another mark is to infringe his rights. 51. As regards the means in place at national level, some guidance as to the EU legislature’s intention in enacting the provision can be found in the Proposal of the European Parliament and the Council for a directive on measures and procedures to ensure the enforcement of intellectual property rights, (30) on which Directive 2004/48 was based. The Explanatory Memorandum to that Proposal states as regards Article 2 of the draft directive, which was the equivalent of Article 2 of the directive as adopted, that: ‘… The Member States may lay down that the competent authorities may order other measures adapted to the circumstances such as to put an end to the infringement of the intellectual property right or to prevent further infringements, as well as any other appropriate measures. …’ (31) 52. Article 2(1) thus leaves Member States free to adopt provisions at national level which provide additional remedies in favour of a rightholder. They may therefore adopt rules in terms of which a right may be deemed forfeited, for example in the event of a serious and continuing infringement, or impose restrictions on the exercise of such a right above and beyond those laid down by the directive where that right infringes an intellectual property right held by another party. 53. But I do not see that Article 2(1) can serve as a basis for an argument which states that Directive 2004/48 introduces only minimal harmonisation in those areas which it does cover. (32) First, such a proposition runs counter to the wording of that provision, which refers not to ‘measures’ which are or may be provided for in EU or national legislation but to ‘means’. Second, it fails to reflect the general scheme of the directive, which, as indicated in recital 8, is to ensure that intellectual property rights enjoy an equivalent level of protection throughout the European Union. In so far as the directive lays down rules applying to a particular form of remedy, as it does in the case of damages, the rules should in my view be the same throughout the European Union. 54. I therefore conclude that Article 2(1) of Directive 2004/48 does not authorise a Member State to provide a rightholder whose intellectual property rights have been infringed with an entitlement to punitive damages. Conclusion 55. I therefore suggest that the Court should answer the questions referred by the Sąd Najwyższy (Supreme Court, Poland) as follows: (1) Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights should be interpreted as precluding a national rule which provides for the automatic payment of a predetermined sum to a rightholder whose rights have been infringed on the application of the rightholder and without any intervention on the part of the competent national judicial authorities in setting the amount of the damages in question. (2) Articles 3 and 13(1)(b) of Directive 2004/48 should be interpreted as meaning, first, that the onus will be on the rightholder to establish that the circumstances of the case in question justify the making of an award of damages under the national equivalent of subparagraph (b) of Article 13(1) of the directive and that it is accordingly ‘appropriate’ to do so and, second, that they preclude a national rule whereunder a rightholder may claim a fixed sum of two or three times the amount of the fee which would have been payable if the rightholder had given permission for the work to be used. They do not, however, render unlawful a national rule under which the rightholder may claim a sum which is limited to two or three times that amount provided that the rightholder can establish that the sum claimed is proportionate to the damage suffered. The onus is on the rightholder to demonstrate that this is the case. (3) Article 2(1) of Directive 2004/48 does not authorise a Member State to provide a rightholder whose intellectual property rights have been infringed with an entitlement to punitive damages. 1 – Original language: English. 2 – Directive of the European Parliament and of the Council of 29 April 2004 (OJ 2004 L 157, p. 45). 3 – The facts narrated are as described in the order for reference. It is unclear what took place in the period between 1998 and 2008. 4 – Equivalent at the time of writing to approximately EUR 8 000. This implies that the total monthly net income during that period was PLN 2 144 543.12. 5 – Equivalent at the time of writing to approximately EUR 91 000. 6 – Equivalent at the time of writing to approximately EUR 19 600. 7 – Equivalent at the time of writing to approximately EUR 39 450. It is not entirely clear how this figure was arrived at: 2.8% of PLN 2 144 543.12 is PLN 60 047.20; and if the award was to be ‘three times the appropriate fee’, that would generate a total of PLN 180 141.62. 8 – Equivalent at the time of writing to approximately EUR 34 000. 9 – See judgment of 10 April 2014, ACI Adam and Others, C‑435/12, EU:C:2014:254, paragraph 61 and the case-law cited. 10 – See points 24 and 49 et seq. below. 11 – The directive also lays down rules providing for: a right of access to evidence and measures for preserving evidence (Section 2); a right of information (Section 3); provisional and precautionary measures (Section 4); and corrective measures, injunctions and alternative measures (Section 5). 12 – The concept of punitive damages was addressed by Advocate General Mengozzi in his Opinion in Arjona Camacho, C‑407/14, EU:C:2015:534, where he described punitive damages as follows: ‘With punitive damages, the system of liability also takes on a moral function which is truly punitive. Punitive damages have their theoretical basis in private sanctions: the objective is no longer simply to compensate, but also to award damages which go beyond full compensation, in the hope that the deterrent effect which is in the nature of such damages will deter the person who has caused the damage from engaging … in further [infringing] conduct, while also deterring others from engaging in like conduct’ (point 49). 13 – Or at least sets the damages payable by reference to a multiplier of the fee payable by the infringer to the rightholder had the latter given permission for the property right in copyright in question to be used. 14 – For the sake of good order, I should mention that in response to a question put at the hearing, the Polish Government indicated that such an entitlement would not arise if there had been an abuse of the law or if it was not possible to calculate the amount of the fee which would have been payable to the rightholder. 15 – See footnote 13 above. 16 – See point 21 above. 17 – See recital 26 of the directive. 18 – Although subparagraph (b) of Article 13(1) uses the expression ‘in the alternative’, the Court has made it clear in its recent judgment of 17 March 2016, Liffers, C‑99/15, EU:C:2016:173, that a rightholder whose claim is based on that subparagraph may also claim compensation for moral prejudice, the words ‘at least’ being intended to make it clear that the basis of calculation specified is not exhaustive. 19 – Judgment of 13 July 2006, C‑295/04 to C‑298/04, EU:C:2006:461, paragraphs 99 and 100. The case involved the interpretation of Article 81 EC (now Article 101 TFEU). 20 – It should be pointed out that that judgment preceded the entry into force of Directive 2014/104/EU of the European Parliament and of the Council of 26 November 2014 on certain rules governing actions for damages under national law for infringements of the competition law provisions of the Member States and of the European Union (OJ 2014 L 349, p. 1). Member States must transpose that directive into national law no later than 27 December 2016. Article 3(3) of that directive provides that ‘full compensation under this Directive shall not lead to overcompensation, whether by means of punitive, multiple or other types of damages’. 21 – Emphasis added. 22 – For my further observations on the nature of the causal link which must be established, see point 47 below. 23 – See, to similar effect, in the context of plant variety rights, judgment of 9 June 2016, Hansson, C‑481/14, EU:C:2016:419, paragraphs 33 to 40. 24 – Judgment of 17 December 2015, C‑407/14, EU:C:2015:831. 25 – Directive of the European Parliament and of the Council of 5 July 2006 (OJ 2006 L 204, p. 23). 26 – See, to that effect, paragraph 40 of the judgment. 27 – Emphasis added. 28 – For a note of the remedies laid down by Directive 2004/48 apart from damages, see footnote 11 above. 29 – Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). That regulation superseded Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), the equivalent provisions of which were Articles 51 and 52. 30 – COM(2003) 46 final. 31 – The text of the French-language equivalent is rather better (and certainly more elegantly) worded. It states: ‘Les États membres peuvent prévoir que les autorités compétentes peuvent ordonner d’autres mesures adaptées aux circonstances et propres à faire cesser l’atteinte au droit de propriété intellectuelle ou à prévenir de nouvelles atteintes, ainsi que toutes autres mesures appropriées’. 32 – See, in that regard, point 24 above.