Opinion of the Advocate General — ECLI:EU:C:2013:537
Date: 2013-09-05
Language of the case: German
Subject matter: General provisions;Intellectual, industrial and commercial property;Designs
Procedure: Reference for a preliminary ruling
Origin: Germany

summary of that decision was published, under the title ‘Chinese pre-publication precludes European Community unregistered design right’, in Journal of Intellectual Property Law & Practice, 2007, Vol. 2, No 7, pp. 441 to 443. 8 – Opinion of the Economic and Social Committee of 6 July 1994 on the proposals for a regulation of the European Parliament and the Council on Community designs and the proposal for a Directive of the European Parliament and the Council on the legal protection of designs (OJ 1994 C 388, pp. 9 to 13). 9 – See Article 5 of the Proposal for a Regulation of the European Parliament and of the Council on Community designs [COM (93) 342 final]. 10 – See paragraph 3.1.4 of the abovementioned Economic and Social Committee opinion. 11 – Saez, V.M. ‘The unregistered Community design’, European Intellectual Property Review, 2002, Vol 24, No 12, pp. 585 to 590, in particular p. 587. Regarding the distinction between disclosure and perceived disclosure, see also Massa, Ch.-H. and Strowel, A., ‘Community design: Cinderella revamped’, European Intellectual Property Review, 2003, Vol 25, No 2, pp. 68 to 78, particularly p. 73. 12 – For the Spanish definitions, see Diccionario del Español actual (Manuel Seco, Olimpia Andrés and Gabino Ramos); 1999, for the English definitions, see Oxford Dictionary of English, 2nd ed., 2005; for the French definitions, see Le Petit Robert, dictionnaire de la langue française, 2003, and for the Dutch definitions, see van Dale, Groot Woordenboek der Nederlandse Taal, 1992. 13 – It is true that the adverb ‘reasonably’ does not appear in the German, Latvian, Romanian or Slovakian versions of Article 7 of the Regulation. However, the fact that it appears in 18 of the 22 language versions seems to me to be sufficiently significant to confirm the interpretation which is suggested, moreover, by the general scheme and the purpose of the Regulation and is not at odds with settled case-law according to which the wording used in one language version of a provision of EU law cannot serve as the sole basis for the interpretation of that provision, or be made to override the other language versions in that regard. Such an approach would be incompatible with the requirement for uniform application of EU law. Where there is difference between the various language versions, the provision in question must therefore be interpreted by reference to the purpose and general scheme of the rules of which it forms part (see, among others, the judgments in Case C‑149/97 Institute of the Motor Industry [1998] ECR I‑7053, paragraph 16, and Case C 451/08 Helmut Müller [2010] ECR I‑2673, paragraph 38). 14 – Example given by Casado Cerviño, A. and Blanco Jiménez, A., p. 44). 15 – For a detailed study of the issue, see, to that effect, Mouncif Moungache M., Les dessins et modèles en droit de l’Union européenne, Bruylant, Brussels, 2012 (see, in particular, Chapter 2 of Title I in Part II). See also Llobregat Hurtado, M.-L., ‘Régimen jurídico de los dibujos y modelos registrados y no registrados en el Reglamento 6/2002 del Consejo, del 12 de diciembre de 2001, sobre dibujos y modelos comunitarios’, in La marca comunitaria, modelos y dibujos comunitarios. Análisis de la implantación del Tribunal de marcas de Alicante, Estudios de Derecho Judicial, No 68, Madrid 2005, pp. 119 to 198, in particular, p. 129. 16 – Judgment in Case C‑405/03 [2005] ECR I‑8735, paragraph 70. 17 – OJ 1989, L 40, p. 1. 18 – OJ 1994, L 11, p. 1. Following various amendments, Regulation No 40/94 was codified by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade-mark (OJ 2009, L 78 p. 1). 19 – The parallel between the two regulations has been made expressly clear from the outset. When presenting its draft regulation on Community designs, the Commission explained, with regard to Articles 83 to 89 concerning arrangements for settling disputes regarding Community designs (which became Articles 79 to 94 of the Regulation), that they ‘have been largely modelled on the corresponding provisions of the draft Regulation on the Community trade-mark’ [COM(93) 342 final, p. 46]. 20 – Points 81 and 82 of the Opinion of Advocate General Jacobs in Class International. 21 – Judgment in Class International, paragraph 74. 22 – Judgment of the Court in Case C‑32/08 [2009] ECR I‑5611. 23 – Judgment in Class International, (paragraph 73). 24 – Judgment in Case C‑55/06 Arcor [2008] ECR I‑2931, paragraph 191. 25 – See, to that effect, the judgment in Case C‑526/04 LaboratoiresBoiron [2006] ECR I‑7259, paragraph 55. 26 – ‘The Regulation contains no provisions that deal specifically with the limitation of the right to obtain a prohibitory injunction provided for in Article 89(1)(a). Article 89(1)(a) of the Regulation does, however, provide that, in the event of infringement or threatened infringement, a Community design court must order a prohibition unless there are special reasons for not doing so’ (paragraph 40 of the order for reference, emphasis added). 27 – Paragraph 44 of the order for reference. 28 – Proposal for a Regulation, cited above [COM (93) 342 final, page 51]. 29 – Judgment in Case C‑316/05 Nokia [2006] ECR I‑12083, paragraph 38. 30 – Article 15 of the Regulation is worded as follows: ‘1. If an unregistered Community design is disclosed or claimed by, or a registered Community design has been applied for or registered in the name of, a person who is not entitled to it under Article 14, the person entitled to it under that provision may, without prejudice to any other remedy which may be open to him, claim to become recognised as the legitimate holder of the Community design. 2. Where a person is jointly entitled to a Community design, that person may, in accordance with paragraph 1, claim to become recognised as joint holder. 3. Legal proceedings under paragraphs 1 or 2 shall be barred three years after the date of publication of a registered Community design or the date of disclosure of an unregistered Community design. This provision shall not apply if the person who is not entitled to the Community design was acting in bad faith at the time when such design was applied for or disclosed or was assigned to him. …’ 31 – See Article 54 of Regulation No 207/2009. 32 – Judgment in Case C‑591/10 Littlewoods Retail and Others [2012] ECR, paragraph 31. 33 – See, to that effect, the judgment in Case C‑46/08 Uniplex (UK) [2010] ECR I‑817, paragraph 32. 34 – See, to that effect, the judgment in Joined Cases C‑295/04 to C‑/298/04 Manfredi and Others [2006] ECR I‑6619, paragraphs 78 to 80. 35 – Emphasis added. 36 – This article reproduces Article 98 of Regulation No 40/94. 37 – Point 58 of his Opinion of 7 October 2010 in the case which gave rise to the judgment in Case C‑235/09 DHL Express France [2011] ECR I‑2801. 38 – Ibidem, point 58. 39 – According to Mouncif-Moungache, M., cited above, p. 333: ‘It appears that the court applies the regulation with regard to all orders issued by it. On the other hand, those penalties are implemented by the law of each Member State. This means that, in the event of an infringement taking place in various territories, the Community design court seised will be required to apply the various laws regarding calculation of reparation, confiscation or publication of notices’. See also, to that effect, Massa, Ch.-H., and Strowel, A., cited above, pp. 68 to 78, in particular p. 70: ‘Any other appropriate remedy under the national law of the place of infringement, including damages or an ‘astreinte’ (penalty for non-compliance), may also be granted. Thus, a CDC may sanction differently infringing acts committed in several Member States’.