COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT, THE COUNCIL AND THE EUROPEAN ECONOMIC AND SOCIAL COMMITTEE Guidance on certain aspects of Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights
Date: 2017-11-29
Institutions: Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, European Commission
Subjects: EU law - national law, TRIPS, application of EU law, approximation of laws, directive (EU), fundamental rights, intellectual property, judicial proceedings, legal expenses, right to information

EN 

  EN 

   EUROPEAN COMMISSION  Brussels, 29.11.2017  COM(2017) 708 final  COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT, THE COUNCIL AND THE EUROPEAN ECONOMIC AND SOCIAL COMMITTEE Guidance on certain aspects of Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights {SWD(2017) 431 final} - {SWD(2017) 432 final}  
 
 
I. 

INTRODUCTION 

Intellectual property rights (‘IPR’) protect intangible assets, allowing creators, inventors and 
artists  to  profit  from  their  creative  and  innovative  activities.  Intangible  assets  account  for 
more than half the value of companies, and their importance is growing. In a world where EU 
companies  are  increasingly  competing  on  innovation,  creativity  and  quality,  intellectual 
property (‘IP’) is a powerful tool for growing the competitiveness of all companies, including 
small- and medium-sized enterprises (‘SMEs’).  
Directive 2004/48/EC on the enforcement of intellectual property rights1 (hereinafter referred 
to  as  the  ‘Directive’  or ‘IPRED’)  provides  for  a  minimum  but  standard  set  of measures, 
procedures and remedies allowing effective civil enforcement of intellectual property rights. 
The objective  of IPRED  is  to  bring  national  legislative  systems  closer  together  to ensure  a 
high, equivalent and homogeneous level of protection in the internal market2. 

The evaluation of the Directive has demonstrated that the measures, procedures and remedies 
set out in IPRED have effectively helped to better protect IPR throughout the EU and better 
deal with IPR infringements in civil courts. The Directive has led to the creation of a common 
legal framework where the same set of tools is to be applied across the Union. In this respect, 
it has  achieved  the  objective  of  approximating  the legislative  systems  of  the  Member  States 
for the civil enforcement of IPR3.  

However, the measures, procedures and remedies set out in the Directive are not implemented 
and  applied  in  a  uniform  manner  among  the Member  States.  This  is  because,  since  the 
Directive  provides  for  minimum  harmonisation  (i.e.  Article  2  explicitly  allows  national 
legislation to provide for means that are more favourable to rightholders), there is no uniform 
interpretation  of  the  Directive’s  provisions  and  there  are  differences  in  national  civil  law 
proceedings  and  judicial  traditions4.  Thus, the  EU  legal  framework  for  civil  enforcement 
of IPR could benefit from the clarification of certain aspects of the Directive allowing a more 
consistent and effective interpretation and application. 

This being said, it is also clear that the scope of IPRED, even if properly applied, is limited to 
regulating  measures,  procedures  and  remedies  available  for  the  civil  enforcement  of  IPR. 
Therefore,  IPRED  as  such cannot  address  all  the  challenges  reported  by  stakeholders 
in the course of the Directive’s evaluation5, in particular those which related more generally 
to the  protection  of  IPR  outside  the  context  of,  or  prior  to,  litigation.  For instance,  some 
stakeholders  would  like  clarification  or  a  review  of  the  rules  on  limiting  the  liability  of 
intermediary  service  providers,  which  is  primarily  addressed  in  the  e-Commerce  Directive6. 
The Commission has taken account of the feedback received from stakeholders on this issue, 

In  particular,  according 

1  Directive  2004/48/EC  of  the  European  Parliament  and  of  the  Council  of  29  April  2004  on  the  enforcement 
of intellectual property rights, OJ L 157, 30.4.2004, p. 45-86. 
2 Recital 10 of IPRED. 
3  Commission  Staff  Working  Document  (CSWD)  –  Evaluation  of  Directive  2004/48/EC  the  European 
Parliament  and  of  the  Council  of  29  April  2004  on  the  enforcement  of  intellectual  property  rights 
SWD(2017) 431.  
4 
(results  available 
at http://ec.europa.eu/DocsRoom/documents/18661), while the majority of respondents felt that the existing rules 
have helped effectively in protecting IP and preventing IP infringements, many rightholders and intermediaries 
in particular consider that the measures, procedures and remedies provided for by the Directive are not applied in 
a homogeneous manner across the Member States. 
5 CSWD – Evaluation of Directive 2004/48/EC; Annex II - Synopsis report. 
6  Articles  12-15  of  Directive  2000/31/EC  of  the  European  Parliament  and  of  the  Council  of  8  June  2000  on 
certain legal aspects of information society services, in particular electronic commerce, in the Internal Market, 
OJ L 178, 17.7.2000, p. 1-16. 

recent  consultation  on 

the  Directive 

the  most 

to 

1 

 
 
                                                            
and while it has committed to maintaining the present liability regime7, it has also, in a recent 
initiative,  provided  more  clarity  on  intermediaries’  responsibility  in  detecting  and  removing 
illegal online content (including content infringing IPR)8.  

Against  this  background,  and  notably  based  on  stakeholder  feedback  during  the  IPRED 
evaluation, the Commission has decided to issue the present guidance to clarify its views on 
the provisions of the Directive where there have been differing interpretations9.  

This Guidance Communication is part of a comprehensive IP package. The challenges for IPR 
enforcement which do not concern the interpretation and application of those provisions and 
the 
the 
Commission Communication  ‘A  balanced  IP  enforcement  system  responding  to  today's 
societal challenges’, which is also part of that package10.  

possible  means 

challenges 

to address 

presented 

those 

are 

in 

The focus of this guidance is on the following provisions of IPRED: 

  scope (Articles 1 and 2) 
  general obligation (Article 3) 
  entitlement to apply for measures, procedures and remedies (Article 4) 
  presumption of authorship or ownership (Article 5) 
  rules on obtaining and preserving evidence (Articles 6 and 7) 
  right of information (Article 8) 
  injunctions (Articles 9 and 11) 
  corrective measures (Article 10) 
  calculation of damages (Article 13) and  
  legal costs (Article 14)  

The  objective  of  this  guidance  is  to  facilitate  the  Directive’s  interpretation  and  application 
by competent  judicial  authorities  and  other  parties  involved  in  the  enforcement  of  IPR  in 
proceedings before those authorities. More specifically, this guidance document aims at: 
-  strengthening  the  efficiency  and  effectiveness  of  the IPR  civil  enforcement  framework 
(Section II),  
-  ensuring  a  balanced  approach  to  IPR  enforcement  and  preventing  abuse  of  measures, 
procedures and remedies set out in the Directive (Section III),  
- ensuring effective IPR enforcement, including in a digital context (Section IV), and  
- ensuring the Single Market dimension of IPR enforcement (Section V).  

While the guidance takes into account the fact that the measures, procedures and remedies set 
out  in the  Directive  are  available  to all  the  users  of  the  IPR  enforcement  systems,  it  pays 
particular  attention  to  the  means  which  are  especially  important  to  SMEs.  For  example,  it 
looks at the rules on calculating damages and awarding legal costs and the means to prevent 
abuse. 

the  European  Union  (‘CJEU’)  since 

The views presented in the guidance are based on the preliminary rulings issued by the Court 
the  Directive’s  adoption,  and 
of Justice  of 
on the conclusions  from  IPRED’s  evaluation,  including  public  consultations,  as  well  as  best 
practices  identified  at  national  level.  This  guidance  therefore  combines  authoritative  legal 
interpretation with the Commission’s views that could serve as an inspiration for those who 
use the guidance.  

7 Commission Communication "Online Platforms and the Digital Single Market Opportunities and Challenges 
for Europe" COM(2016) 288. 
8 Commission Communication "Tackling Illegal Content Online – Towards an enhanced responsibility of online 
platforms" COM(2017) 555.  
9 As identified in Commission SWD – Evaluation of Directive 2004/48/EC. 
10 COM(2017) 707.  

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The  present  document  is  not  legally  binding,  and  the guidance  provided  does  not  affect  the 
jurisprudence of the CJEU. The guidance should make it easier to interpret and apply IPRED 
and  in  so  doing  will  also  inform  and  contribute  to  the Commission’s  enforcement  policy 
under Article 258 TFEU.  

II.  MAKING THE IPR CIVIL ENFORCEMENT FRAMEWORK MORE 

EFFICIENT AND EFFECTIVE 

1.  Ensuring appropriate compensation for the prejudice suffered 

The  unpredictable  amount  of  compensation  to  be  awarded  and  the  low  probability 
of obtaining  appropriate  compensation  for  the  damages  suffered  were  some  of the main 
reasons  given  to  explain  why  rightholders  do  not  seek  civil  redress  in  cases  of  IPR 
infringement11. This aspect is of particular importance to SMEs12. 

Practice  shows  that  assessing  damages  for  infringement  of  IPR  can  be  complicated.  As 
a result, rightholders, the judiciary, legal profession, and the public have asked for more legal 
clarity on calculating damages, as well as fairer allocation. 

Calculating damages  

In  accordance  with  Article  13(1)  of  the  Directive,  Member  States  are  required  to  enable 
the competent  judicial  authorities  to  order  the  infringer  who  knowingly,  or  with  reasonable 
grounds to know, engaged in an infringing activity to pay the rightholder damages appropriate 
to  the  actual  prejudice  suffered  by  him  as  a  result  of  the  infringement.  Where  the infringer 
acted  not  knowingly,  or  without  reasonable  grounds  to  know,  Member  States  have  the 
possibility to enable the judicial authorities to order the recovery of profits or the payment of 
damages, which may be pre-established (Article 13(2)). 

According to Article 13(1), the damages should be appropriate to the actual prejudice suffered 
as a result of the infringement. The aim is to compensate that prejudice in full13.  

The  Directive  provides  for  two  possibilities  to  set  such  damages.  Their  amount  can  be 
determined by the judicial authorities:  
  by  taking  into  account  all  appropriate  aspects,  such  as  the  negative  consequences, 
including  lost  profits,  which  the injured  party  has  suffered,  any  unfair  profits  made  by the 
infringer and, in appropriate cases, elements other than economic factors, such as the moral 
prejudice  caused  to  the  rightholder  by  the  infringement  (Article  13(1)(a)),  or,  as  an 
alternative, 
  in  appropriate  cases,  by  setting  as  a  lump  sum  on  the  basis  of  elements  such  as  at  least 
the amount  of  royalties  or  fees  which  would  have  been  due  if  the  infringer  had  requested 
authorisation to use the IPR in question (‘hypothetical royalty/fee’) (Article 13(1)(b)). 

The aim of this provision is not to introduce an obligation to provide for punitive damages, 
but  to  allow  for  compensation  based  on  an  objective  criterion  while  taking  into 

11 Consultation on the evaluation and modernisation of the IPR enforcement legal framework, p. 26-28. 
12  Ibidem,  p.  10.  The  main  reasons  reported  for  SMEs  not  to  litigate  were  the  costs  of  litigation,  the  lack  of 
resources and the lack of predictability as regards the outcome. 
13  Judgment  of  the  CJEU  (Fifth  Chamber)  of  17  March  2016,  C-99/15,  Christian  Liffers  v  Producciones 
Mandarina  SL  and  Mediaset  España  Comunicación  SA,  anciennement  Gestevisión  Telecinco  SA, 
EU:C:2016:173, para. 25. 

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account the expenses  incurred  by  the  rightholder,  such  as  the  costs  of  identification  and 
research14.  

The wording  of Article 13(1) of IPRED indicates that the Member States  are to  ensure that 
both  methods  for  setting  the  damages  established  in  this  provision  are  reflected  in their 
national legislation. Contrary to for instance Article 13(2), these are therefore not two options 
for  the  Member  States;  rather,  it  is  for  the  applicant  and  ultimately  the  competent  judicial 
authority  to  decide  which  of  these  two  alternative  methods  is  to  be  applied  in  order  to  set 
the damages in a given case.  

Where it comes to the choice between both alternative methods in a given case, the wording 
of Article  13(1)  indicates  that  it  should  be  ‘appropriate’  to  apply  the  lump  sum  method 
referred to in its point (b) of that provision. Recital 26 of IPRED gives an example, namely 
situations  where  it  would  be  difficult  to  determine  the  amount  of  actual  prejudice  suffered. 
It has  been  reported15  that  in  some  cases  under  the applicable  national  rules  applicants  can 
only request calculation of damages in accordance with that method if the use of the method 
referred to in point (a) is impossible. Such interpretation is, in the view of the Commission, 
not  in line with  the Directive, considering that Recital  26 only  mentions  this as an example 
and  moreover  refers  to  the  use  of  the  other  method  being  difficult  and  not  impossible. 
Instead, in  light  of  Recital  17,  the  general  requirements  of Article  3, including  effectiveness 
and  proportionality,  as  well  as  the  aim  to  allow  for compensation  based  on  an  objective 
criterion,  it  should  be  determined  in  function  of the circumstances  of  each  individual  case 
whether it is appropriate to apply the lump sum method. 

In  the  Commission’s  view,  the  possibility  to  set  damages  on  the  basis  of  a lump  sum 
in accordance with Article 13(1)(b) is an alternative to the method set out in Article 13(1)(a) 
requiring  the  identification  and  quantification  of  all  appropriate  aspects,  and  both  methods 
should in principle be available to the competent judicial authorities. Those authorities should 
be able to award damages set on a lump sum basis under point (b) where they consider this 
to be appropriate in light of the circumstances of the specific case before them, in particular 
where it is difficult to set the damages based on the method of point (a).  

Moral damages 

A difficulty in calculating damages has been reported when there is the possibility to obtain 
compensation for the moral prejudice suffered16. Examples where moral damages have been 
claimed include cases where there has been injury to the rightholder’s reputation, emotional 
distress, suffering caused by an infringement, etc.17. 

In this regard Article 13(1)(a) of IPRED is clear, as it expressly mentions that other elements 
than  economic  factors,  such  as  the  moral  prejudice  caused  to  the  rightholder  by 
the infringement, can be one of the ‘appropriate aspects’ to be taken into account when setting 
the damages in accordance with the method provided for in this provision.  

Article  13(1)(b)  of  IPRED,  in  contrast,  does  not  expressly  mention  the  possibility 
of compensation for moral prejudice when setting the damages in accordance with the lump 
sum  method.  However,  the  CJEU  has  indicated18  that  that  provision  does  not  preclude 
awarding such compensation either and that it is in fact required to take the moral prejudice 

14 Recital 26 of IPRED. 
15 CSWD – Evaluation of Directive 2004/48/EC, Annex II - Synopsis report. 
16 CSWD – Evaluation of Directive 2004/48/EC, p. 17 and Annex III. 
17  European  Observatory  on  Infringements  of  Intellectual  Property  Rights  "Damages  in  Intellectual  Property 
Rights", p. 4. 
18 C-99/15 Liffers, para. 15-27.  

4 

 
 
                                                            
suffered into account when setting the lump sum in order to achieve the objective of providing 
for full compensation of the actual prejudice suffered.  

A  party  injured  by  an  IPR  infringement  who brings  a  claim  for  damages  to  compensate  for 
the prejudice  suffered,  set  in  accordance  with  the  lump  sum  method  of  Article 13(1)(b) 
of IPRED, may claim and, if the claim is substantiated, be awarded not only compensation for 
material damage but also for the moral prejudice caused by that infringement. 

Setting damages as a lump sum 

In the IPRED evaluation, difficulties in setting damages on the basis of the method mentioned 
in  Article 13(1)(b)  were  reported19.  In particular,  it  was  claimed  that  awarding  damages 
corresponding  to  only  the single  amount  of  the  hypothetical  royalty/fee  is  not  sufficient 
to compensate for the actual prejudice suffered and does not provide for a sufficient deterrent 
effect. In that context it was discussed whether the Directive allows for a possibility to award 
damages that would consist in a multiple value of the hypothetical royalty/fee. 
In a recent case20, the CJEU indicated that a holder of economic rights of copyright that have 
been  infringed  may  require  the  person  who  has  infringed  those  rights  to  compensate 
for the loss  caused  by  paying  a  sum  corresponding  to  twice  the  amount  of  a  hypothetical 
royalty/fee, where the applicable national law provides for such possibility. The CJEU further 
explained that, where an IPR has been infringed, mere payment of a hypothetical royalty/fee 
is not capable of guaranteeing compensation in respect of all the loss actually suffered. This is 
because, the CJEU noted, payment of that royalty would not, in itself, ensure reimbursement 
of any costs linked to researching and identifying possible acts of infringement, compensation 
for possible moral  prejudice or  payment of interest on the sums due21. In that case it is  also 
noted that the use of the lump sum method inherently means that the damages thus set may 
not be precisely proportional to the loss actually suffered and that the requirement of causality 
must not be interpreted and applied in an excessively strict manner in this regard22. 

On the basis of this case law the Commission concludes that the damages set using the lump 
sum  method  are  by  no  means  to  be  restricted  to  only  once  the  amount  of a hypothetical 
royalty/fee and may, depending on the case, well need to constitute a higher amount. It also 
appears  that  the  competent  judicial  authorities  have  a  margin  of  discretion  when  setting  the 
damages through applying this method. Accordingly, the method described in Article 13(1)(b) 
can  be  seen  as  resembling  an empowerment  for  those authorities  to estimate  the amount  of 
prejudice suffered on the basis of the available elements23. 

Article  13(1)(b)  of  IPRED  does  not  preclude  national  legislation  under  which  a  holder  of 
an infringed IPR may claim from the infringer the payment of a sum corresponding to twice 
the  hypothetical  royalty/fee.  While  Article  13(1)(b)  of  IPRED  does  not  necessarily  require 
such  doubling  of  that  hypothetical  royalty/fee,  the  national  legislation  implementing  this 
provision  should  enable  the  rightholder  to  demand  that  the damages  set  as  a lump  sum  are 
calculated not only on the basis of the single amount of that hypothetical royalty/fee, but also 
on the basis of other appropriate aspects. This can include compensation for any costs that are 

19 CSWD – Evaluation of Directive 2004/48/EC, Annex III. 
20 Judgment of the CJEU (Fifth Chamber) of 25 January 2017,  C-367/15, Stowarzyszenie “Oławska Telewizja 
Kablowa” w Oławie v Stowarzyszenie Filmowców Polskich w Warszawie, EU:C:2017:36. 
21 C-367/15 OTK, para. 30. See also C-99/15 Liffers, para. 18. 
22 C-367/15 OTK, para. 26 and 32. 
23 A similar empowerment, although applicable only under specific circumstances, has been included in Article 
17(1) 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 L 349, 5.12.2014, p. 1-19. 

5 

 
 
                                                            
linked  to  researching  and  identifying  possible  acts  of infringement  and  compensation  for 
possible moral prejudice or interest on the sums due.  

2.  Providing for clear and effective rules on the reimbursement of legal costs 

The results of the public consultation24 show that the main reasons rightholders do not seek 
civil redress for alleged IPR infringement are because of lawyers’ fees and other costs related 
to litigation  and  because  of  the  perceived  unlikelihood  they  will  obtain  appropriate 
compensation for legal costs and other expenses. The IPRED evaluation indicated25 that rules 
on reimbursing legal costs differ across the EU and are in some situations insufficient to cover 
the full costs incurred by the successful party.  

According  to  Article  14  of  the  Directive,  the  reasonable  and  proportionate  legal  costs  and 
other  expenses  incurred  by  the  successful  party  are  to  be  borne  by  the  unsuccessful  party, 
unless  equity  does  not  allow  it.  The  principle  on  reimbursing  legal  costs  expressed  in 
Article 14 applies to all types of legal proceedings covered by the Directive, i.e. proceedings 
on infringement of IPR. As clarified by the CJEU, this also includes for instance proceedings 
for compensating  injury  caused  to  parties  wrongfully  subjected  to  certain  enforcement 
measures in accordance with Articles 7(4) and 9(7) of the Directive26, as well as an exequatur 
procedure  to  recognise  and  enforce  a  judgment  seeking  to enforce  an  IPR27.  Invalidation 
proceedings are not covered28. 

While  this  general  principle  provides  the  national  judicial  authorities  with  the  basis  for 
reimbursing  costs,  these  authorities,  when  calculating  the  actual  amount  that  should  be 
awarded, are typically bound by more detailed national regimes on this subject matter. Some 
of  these  national  regimes  are  not  specific  to  intellectual  property,  are  based  on  a  flat-rate 
scheme (caps), and/or refer to the national rules governing the minimum costs of assistance of 
attorneys-at-law  or  patent  attorneys.  As  a  result,  the  Member  States’  regimes  vary 
considerably when it comes to calculating and reimbursing legal costs and in the procedures 
which govern this issue29.  

Flat-rate scheme 

In that context it was questioned whether national regimes based on a flat-rate scheme, which 
indicate  a  maximum  amount  of  costs  that  can  be  reimbursed,  are  in  line  with  Article  14  of 
IPRED.  
The CJEU explained30 that legislation providing for a flat rate of reimbursement of a lawyer’s 
fees  could,  in  principle,  be  justified,  provided  that  the  legislation  is  intended  to  ensure  that 
the costs to be reimbursed are reasonable. It would have to take into account factors such as 
the subject  matter  of  the  proceedings,  the  sum  involved,  or  the  work  to  be  carried  out 
to represent  the  client  concerned.  This  may  be  the  case  if  that  legislation  is  intended 
to exclude the reimbursement of excessive costs. These are costs due to unusually high  fees 
agreed between the successful party and its lawyer or due to the lawyer providing services not 
considered necessary to enforce the intellectual property rights concerned. 

24 Consultation on the evaluation and modernisation of the IPR enforcement legal framework, p. 28-30. 
25 CSWD – Evaluation of Directive 2004/48/EC; p. 20 and Annex III. 
26  Judgment  of  the  CJEU  (First  Chamber)  of  16  July  2015,  C-681/13,  Diageo  Brands  BV  v  Simiramida-04 
EOOD, EU:C:2015:471. 
27 Judgment of the CJEU (Grand Chamber) of 18 October 2011,  C-406/09, Realchemie Nederland BV v Bayer 
CropScience AG. EU:C:2011:668. 
28 C-180/11, Bericap, para. 77-82. 
29  "Support  study  for  the  ex-post  evaluation  and  ex-ante  impact  analysis  of  the  IPR  enforcement  Directive", 
Technopolis Group in a consortium with EY and Schalast Rechtsanwälte, 2017, p. 69-70. 
30 C-57/15, UVP, para. 25. 

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The CJEU also held that31 the requirement of Article 14 of IPRED that the unsuccessful party 
must  bear  ‘reasonable’  legal  costs  cannot  justify  national  legislation  which  implements  this 
provision  imposing  a  flat-rate  significantly  below  the  average  rate  actually  charged  for  the 
services  of  a  lawyer  in  that  Member  State.  Such  legislation  would  be  incompatible  with 
Article 3(2) of IPRED, which states that the measures, procedures and remedies provided for 
must be dissuasive.  

In addition, Article 14 of IPRED provides that the legal costs to be borne by the unsuccessful 
party  must  be  ‘proportionate’.  In  this  regard  the  CJEU  found  that,  while the requirement  of 
proportionality  does  not  imply  that  the  unsuccessful  party  must  necessarily  reimburse  the 
entirety  of  the  costs  incurred  by  the  other  party,  it  does,  however,  mean  that  the  successful 
party should have the right to reimbursement of, at the very least, a significant and appropriate 
part of the reasonable costs actually incurred by that party. Therefore, national legislation that 
lays down an absolute limit on costs for lawyer’s assistance must ensure, on the one hand, that 
that  limit  reflects  the  reality  of the  rates  charged  for  the  services  of  a  lawyer  in  the  field 
of intellectual  property.  But  such  legislation  must  also  ensure  that,  at  the  very  least,  a 
significant  and  appropriate  part  of  the  reasonable  costs  actually  incurred  by  the  successful 
party are borne by the unsuccessful party32. 

Article  14  of  IPRED  does  not  preclude  national  legislation  providing  for  a flat-rate  scheme 
to reimburse costs for a lawyer’s assistance, provided that those rates ensure that the costs to 
be  borne  by  the  unsuccessful  party  are  reasonable,  taking  into  account  features  which  are 
specific to the case. However, Article 14 precludes national legislation providing for flat rates 
which  are  too  low  to  ensure  that,  at  the  very  least,  a  significant  and  appropriate  part  of  the 
reasonable costs incurred by the successful party are borne by the unsuccessful party. 

Types of costs to be reimbursed 

Other differences between the Member States and their national legislation refer to the types 
of costs covered by provisions of national law implementing Article 14 of IPRED. In practice, 
while court fees for instituting proceedings and other procedural costs are often fully covered, 
external experts’ costs, attorneys’ charges and additional attorneys’ fees are at least in some 
cases only partly covered33. 

Under  Article  14,  the  infringer  must  generally  bear  all  the  financial  consequences  of  his 
conduct34;  on  the  other  hand,  the successful  party  is entitled  to  reimbursement  of  at  least 
a significant and appropriate part of reasonable legal costs it actually incurred35.  

More  specifically,  while  Article  14  of  IPRED  refers  to  ‘legal  costs  and  other  expenses 
incurred  by  the  successful  party’,  the  Directive  does  not  define  what  these  concepts  entail 
precisely.  The  CJEU  has  held  that  the  concept  of  ‘legal  costs’  includes,  amongst  others, 
lawyer’s fees36. It also held that the concept of ‘other expenses’ includes, in principle, costs 
incurred  for  the  services  of  a  technical  adviser37.  However,  the  CJEU  also  indicated  that 
the latter concept is to be interpreted narrowly and that, accordingly, only those costs that are 
directly and closely related to the judicial proceedings concerned qualify as ‘other expenses’ 
within the meaning of Article 1438.  

31 C-57/15 UVP, para. 26-27. 
32 C-57/15 UVP, para. 29-30. 
33 Consultation on the evaluation and modernisation of the IPR enforcement legal framework, p. 28. 
34 C-406/09, Realchemie, para. 49. 
35 Judgment of the CJEU (Fifth Chamber) of 28 July 2016, C-57/15, United Video Properties Inc. v Telenet NV 
(UVP), EU:C:2016:611, para. 29. 
36 C-57/15 UVP, para. 22. 
37 C-57/15, UVP, para. 34. 
38 C-57/15, UVP, para. 36. 

7 

 
 
                                                            
In this context, the CJEU found that the costs of research and identification incurred inter alia 
when  a  technical  adviser  performs  a general  observation  of the market  and  detects  possible 
infringements  of  intellectual  property  law,  attributable  to  unknown  infringers  at  that  stage, 
do not appear to show such a close direct link. On the other hand, it held that, the services of 
a  technical  adviser,  regardless  of  the  nature  of  such  services,  are  essential  to  usefully  take 
legal action in a specific case to have such a right upheld, the costs linked to the assistance of 
that  adviser  fall  within  ‘other  expenses’.  Pursuant  to Article 14  of  IPRED,  these  are  ‘other 
expenses’ that must be borne by the unsuccessful party39. 
The  CJEU  has  also  clarified40  that  Article  14  of  IPRED  precludes  national  rules  providing 
that  the  costs  of  a  technical  adviser  can  be  reimbursed  only  if  the  unsuccessful  party  has 
committed  a  fault,  given  that  those  costs  are  directly  and  closely  linked  to a judicial  action 
seeking to have such an intellectual property right upheld. 

Finally,  it  is  important  to  indicate  here  that  the  foregoing  does  not  necessarily  mean  that 
expenses  not  covered  by  Article  14  cannot  be  compensated.  Rather,  it  means  that,  where 
appropriate,  claims  for  compensation  of  such  costs,  for  instance  costs  of  identification 
and research41, are to be brought by means of an action for damages under Article 13 instead. 

Article 14 of IPRED applies to legal costs, which includes lawyers’ fees, as well as to other 
costs  directly  and  closely  related  to  the  judicial  proceedings  concerned.  The  latter  includes 
costs  incurred  for  the  services  of  a  technical  adviser,  where  those  services  are  essential  in 
order  for  a legal  action  to  be  usefully  brought  seeking,  in  a  specific  case,  to  have  a  right 
upheld.  

3.  Focus on commercial scale infringements 

Some  of  the  means  set  out  in  IPRED  need  to  be  applied  only  to  commercial  scale 
infringements of IPR (Article 6(2) and Article 9(2)) or concern persons other than infringers 
(Article 8(1)(a)-(c)) which were either found to be in possession of infringing goods, or using 
the  infringing  services  on  a  commercial  scale,  or  providing  on  a  commercial  scale  services 
used in infringing activities42.  

In the context  of  the  legal  framework  for enforcement  of  IPR,  the  concept  of ‘commercial 
scale’  requires  the  application  of  certain  more  far-reaching  or  intrusive  measures  in  cases 
of infringements of particular gravity, thus ensuring that the most harmful infringements are 
effectively  tackled  while  also  ensuring  proportionality  and  a  balanced  approach.  It  appears, 
however, that this concept is understood and applied differently across the Member States. 

The  concept  of  commercial  scale  has  not  been  defined  in  the  Directive.  The  Directive  also 
does  not  make  any  express  reference  to  the  laws  of  the  Member  States  for  the  purpose 
of determining  its  meaning.  It  is  settled  case  law  that,  in  light  of  the  need  for  uniform 
application of EU law and the principle of equality, this concept should in such cases be given 
an autonomous and uniform interpretation throughout the EU43. 

39 C-57/15, UVP, para. 39-40. 
40 C-57/15, UVP, para. 40.  
41 See Recital 26 of IPRED. 
42 As indicated in Recital 14 of IPRED: “This is without prejudice to the possibility for Member States to apply 
those measures also in respect of other acts.”. 
43  E.g.  Judgment  of  the  Court  (Grand  Chamber),  3  September  2014,  C-201/13,  Johan  Deckmyn  and 
Vrijheidsfonds VZW v Helena Vandersteen and Others, EU:C:2014:2132, para. 14. 

8 

 
 
                                                            
In addition, Recital 14 of IPRED provides some clarification, by stating that it concerns acts 
‘carried  out  for  direct  or  indirect  economic  or  commercial  advantage,  normally  excluding 
acts carried out by end consumers acting in good faith’.  

Moreover, the  concept  of  commercial  scale,  within  the  meaning  of  Article 61  of  the  TRIPS 
Agreement,  was  thoroughly  discussed  in  a  World  Trade  Organization  (‘WTO’)  dispute 
settlement panel report44. The panel examining this has taken account of the ordinary meaning 
of  the  terms  ‘scale’  and  ‘commercial’  and  found  that  the  concept  is  to  be  understood  with 
reference to qualitative as well as quantitative elements, and that it refers to the magnitude or 
extent  of typical  or  usual  commercial  activity  with  respect  to  a  given  product  in  a  given 
market45.  Although  in  the  TRIPS  Agreement  this  concept  is  used  in  a  somewhat  different 
context than in IPRED46 and that in the EU’s legal order such panel reports are in themselves 
not binding when it comes to the interpretation of an act of secondary EU law such as IPRED, 
the Commission considers this report nonetheless a useful point of reference47.   

It follows from the above that, in the Commission’s view, the concept of commercial scale, 
as used  in  various  provisions  of  IPRED,  should  not  be  understood  in  purely  quantitative 
terms;  instead,  certain  qualitative  elements,  such  as  whether  the  activity  in  question  is 
normally carried out for economic or commercial advantage, should be taken into account as 
well.  

The concept of ‘commercial scale’ as provided for in Articles 6(2), 8(1) and 9(2) of IPRED 
should  be  interpreted  and  applied  taking  into  account  qualitative  elements,  such  as 
the economic  or  commercial  advantage  which  may  be  pursued  by  the infringements 
the number  and  extent  of 
in question,  as  well  as  quantitative  elements,  such  as 
the infringements, which are relevant in the case at hand. 

III.  ENSURING A BALANCED APPROACH TO IPR ENFORCEMENT AND 

PREVENTING ABUSE  

1.  General obligation and fundamental rights 

The general obligation in the Directive is to provide for measures, procedures and remedies 
necessary to enforce IPR. These are to be ‘fair and equitable’ and must not be ‘unnecessarily 
complicated  or costly,  or  entail  unreasonable  time-limits  or  unwarranted  delays’;  they  must 
also  be effective,  proportionate  and  dissuasive,  must  not  act  as  barriers  to  trade  and  must 
provide  safeguards  against  abuse  (Article  3(1)  and  (2)).  In  addition,  such  measures, 
procedures and remedies should be determined in each case in a manner allowing the specific 
characteristics of that case to be taken into due account, including the specific features of each 
intellectual  property  right  and,  where  appropriate,  the  intentional  or  unintentional  character 
of the infringement48.  As  a  result,  in  order  to  ensure  the  balanced  use  of  the  civil  IPR 
enforcement  system,  the competent  judicial  authorities  should  generally  conduct  a  case-by-

44 Report of the WTO Panel of 26 January 2009, WT/DS362/R, p. 75 – 98. 
45 WT/DS362/R, para. VII, 601-603 and VII.635-636. 
46 Namely, in connection to certain criminal law measures, whereas in IPRED the concept is used in connection 
to certain civil law means. 
47  It  can  be  noted  in  this  regard, firstly,  that the  EU  is also a  party  to  the  TRIPS  Agreement  (see  Recital  4  of 
IPRED), meaning that its provisions form an integral part of the EU's legal order (see e.g. C-180/11, Bericap, 
para. 67) and, secondly, that also under the CJEU's case law the ordinary meaning of undefined terms used in 
acts  of  secondary  EU  law  such  as  IPRED  is  an  important  element  when  interpreting  such  terms  (see  e.g.  C-
201/13, Deckmyn, para. 19). 
48 Recital 17 of IPRED. 

9 

 
 
                                                            
case  assessment  when  considering  the  grant  of the  measures,  procedures  and  remedies 
provided for by IPRED. 

IPRED  respects  all  of  the  fundamental  rights  and  observes  the principles  recognised 
in particular  by  the  Charter  of  Fundamental  Rights  of  the  European  Union  (‘Charter’); 
in particular, it seeks to ensure full respect for intellectual property, in accordance with Article 
17(2) of the Charter49. In consequence, the rules set out in the Directive must be interpreted 
and  applied  in  such  a  way  that  not  only  is  this  specific  fundamental  right  safeguarded,  but 
other  fundamental  rights  at  issue  are  also  fully  considered  and  respected.  The  latter  can 
include,  as  the  case  may  be,  the  rights  to  effective  judicial  protection  and  to  protection 
of privacy  and  personal  data,  as  well  as  the  freedoms  of expression  and  to  conduct 
a business50. A range of CJEU judgements issued after the adoption of the Directive address 
this issue.  
In  particular,  in  the  Promusicae  judgment51  the  CJEU  addressed  the  issue  of  balancing 
different fundamental rights when it interpreted the provisions of the e-Commerce Directive, 
the  Information  Society  Directive52,  IPRED  and  the  E-Privacy  Directive53,  in  light  of  the 
Charter. The CJEU explained that when interpreting these directives, the national authorities 
and  courts  concerned  must  ensure  that  a  fair  balance  is  struck  between  the  different 
fundamental  rights  involved  and  that  there  is  no  conflict  with  the  other  general  principles 
of EU  law,  such  as  the  principle  of proportionality.  In  this  particular  case,  the  CJEU 
concluded  that  Member  States  are  not  required  to  lay  down  an obligation  to  communicate 
personal  data  to  ensure  effective  protection  of copyright  in  civil  proceedings.  However, 
the CJEU also concluded that they should, when transposing the directives mentioned above, 
interpret  them  in  such  a  way  that  a  fair  balance  is  struck  between  the  fundamental  right 
guaranteeing  protection  of  personal  data  and  private  life  and  the fundamental  rights 
to property and effective judicial protection. 
This  approach  was  further  reflected  in  subsequent  decisions  of  the  CJEU54,  providing  more 
guidance  on  how  to  strike  a  fair  balance  between  different  conflicting  fundamental  rights, 
inter alia when deciding on right of information requests and the awarding of injunctions55.  

Although these decisions were issued in the specific context of litigation relating to copyright 
infringements, the CJEU’s analysis addresses in general the balance between the fundamental 
rights  at  issue.  Therefore,  the Commission  believes  that  the  requirement  of  ensuring  a  fair 
balance  between  such  rights,  in  light  of  the  general  principle  of  proportionality,  applies  not 

49 Recital 32 of IPRED. 
50 See, respectively, Articles 47, 7, 8, 11 and 16 of the Charter. 
51 Judgment of the CJEU (Grand Chamber) of 29 January 2008, C-275/06, Productores de Música de España 
(Promusicae) v Telefónica de España SAU, EU:C:2008:54, para. 68. 
52 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation 
of certain aspects of copyright and related rights in the information society, OJ L 167, 22.06.2001, p. 10–19. 
53  Directive  2002/58/EC  of  the  European  Parliament  and  of  the  Council  of  12  July  2002  concerning  the 
processing  of  personal  data  and  the  protection  of  privacy  in  the  electronic  communications  sector,  OJ  L  201, 
31.07.2002, p. 37–47 (which complements Directive 95/46/EC of the European Parliament and of the Council of 
24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free 
movement of such data, OJ L 281, 23.11.1995,p.31–50). 
54  E.g.  Order  of  the  CJEU  (Eighth  Chamber)  of  19  February  2009,  C-557/07,  LSG-Gesellschaft  zur 
Wahrnehmung  von  Leistungsschutzrechten  GmbH  v  Tele2  Telecommunication  GmbH,  EU:C:2009:107; 
Judgment of the CJEU (Third Chamber) of 19 April 2012,  C-461/10, Bonnier Audio AB and Others v Perfect 
Communication  Sweden  A,B  EU:C:2012:219;  Judgment  of  the  CJEU  (Fourth  Chamber)  of  16  July  2015,  C-
580/13, Coty Germany GmbH v Stadtsparkasse Magdeburg, EU:C:2015:485.  
55 See also further discussion concerning Article 8 on- right of information (chapter III) and Articles 9 and 11 on 
injunctions (chapter IV) of IPRED. 

10 

 
 
                                                            
only  in  copyright  infringement  cases,  but  in  cases  concerning  all  the  IPR  falling  within 
IPRED’s scope. 

In  all  cases  where  the  provisions  of  IPRED  are  interpreted  and  applied  and  where  various 
conflicting  fundamental  rights  protected  in  the  EU’s  legal  order  are  at  stake,  it  should  be 
ensured that a fair balance is struck between them, in light of the principle of proportionality.  

2.  Striking a fair balance between the applicable fundamental rights in the case of the 

right of information 

Striking  a  fair  balance  between  different  fundamental  rights  is  particularly  important  when 
applying the  right  of information  set  out  in  Article  8  of  IPRED.  Article  8  obliges  Member 
States to enable the competent judicial authorities to order that the infringer or certain other 
persons  provide  precise  information  on the origin  of  the  infringing  goods  or  services, 
the distribution channels and the identity of any third parties involved in the infringement56. 

When dealing with right of information requests brought under Article 8, situations can exist 
where  several  fundamental  rights  need  to  be  balanced  with  one  another.  This  could  be 
the case notably with the fundamental rights to protection of property (including intellectual 
property)  and  to  effective  judicial  protection  on the  one  hand  and  the  fundamental  rights 
to protection  of privacy  and  personal  data,  as  well  as  the  freedom  to  conduct  a business, 
on the other hand.   

Any order by the competent judicial authorities to provide information issued under Article 8 
should only concern information which is actually needed to identify the source and scope of 
the  infringement.  This  follows  in  the  view  of  the  Commission  from  the  requirement  of 
a justified and proportionate request laid down in Article 8(1) and the general obligations laid 
down  in  Article  3  (notably  the  requirements  that  any  measure  enacted  must  be  fair  and 
equitable  and  may  not  be  unnecessarily  complicated  or costly,  and that  safeguards  against 
abuse must be provided for).  
The CJEU has clarified57 that EU law, in particular Article 8(3) of IPRED read in conjunction 
with  Article  15(1)  of  the  E-Privacy  Directive,  does  not  preclude  Member  States  from 
imposing  an  obligation  to  disclose  to  certain  private  third  parties  personal  data  relating  to 
internet  traffic  in  order  to  enable  such  third  parties  to  bring  civil  proceedings  for  copyright 
infringements. However, it was also found that the rules of EU law at issue in that case do not 
require Member States to impose such an obligation either.  

The  CJEU  has  also  indicated  that  those  rules  do  not  preclude  the application  of  national 
legislation based on Article 8 of IPRED which, in order to identify an internet subscriber or 
user, permits an internet service provider in civil proceedings to give a copyright holder or its 
representative information on the subscriber to whom the internet service provider provided 
an  IP  address  which  was  allegedly  used  in  an  infringement.  Such  national  legislation, 
however, should enable the national court seized to weigh the conflicting interests involved, 
on  the  basis  of  the  facts  of  each  case  and  taking  due  account  of the  requirements  of  the 
principle of proportionality58.  

In  another  case,  the  CJEU  clarified  that  Article  8(3)(e)  of  IPRED  precludes  provisions 
of national  law  allowing,  in  an  unlimited  and unconditional  manner,  a  banking  institution 
to invoke  banking  secrecy  to  refuse  to  provide,  pursuant  to  Article  8(1)(c)  of  IPRED, 

56 See also recital 21 of IPRED. 
57 C-275/06, Promusicae, para. 58-59. See also section 1 above. 
58 C-461/10, Bonnier, para. 51-61. 

11 

 
 
                                                            
information  on  the  name  and  address  of  an  account  holder59.  Such  unlimited  and 
unconditional  authorisation  to  invoke  banking  secrecy  can  seriously  impair  the  effective 
exercise of the fundamental right to intellectual property to the benefit of the right of persons 
covered by Article 8(1) of IPRED to the protection of personal data concerning them60. 

Under  Article  8  of  IPRED,  the  competent  judicial  authorities  can  require  an  infringer  or 
certain  other  persons  to  provide  information  on  the  origin  and  the  distribution  networks  of 
the goods  or  services  which  infringe  an  IPR.  This  information  can  include  personal  data, 
where such disclosure occurs in compliance with the applicable legislation on the protection 
of  personal data  and  provided  safeguards  exist  to  ensure  a  fair  balance  between  the  various 
fundamental rights at issue.  

3.  Presentation of specified evidence in control of the opposing party 

According  to  Article  6(1)  of  IPRED,  the  competent  judicial  authorities  may  order  that 
evidence which lies in the control of an opposing party be presented, where the applicant has 
presented  reasonably  available  evidence  sufficient  to  support  its  claims  and  has,  in 
substantiating those claims, specified the evidence. 

During  the  evaluation  it  has  been  reported  that  in  some  Member  States  the  process 
of specifying the evidence laying in the control of the opposing party can be very burdensome 
for the applicant and thus in practice significantly limit the possibility to obtain such evidence. 
It was  reported  that  applicants  are  in  some  cases  requested  to  specify  the  exact  nature, 
location, reference numbers or contents of the requested documents, even if such information 
is  obviously  difficult,  if  not  impossible  to  obtain  for  an external  person  who  has  not 
necessarily seen the documents requested61.  

While  some  degree  of  specification  is  undoubtedly  necessary,  requiring  an  excessive  level 
of detail  calls  into  question  the  effectiveness  of  the  disclosure  measures  provided  for  by 
Article  6(1)  and  raises  concerns  as  to  the  proportionality  of  the  requirements  set  out  on  the 
national  level.  It also  raises  the  question  of  the  ‘fair  and  equitable’  nature  of  such 
requirements and could make it overly complicated to use the Directive’s measures. As such, 
detailed  national  requirements  of  this  kind  could  be  contrary  to  Article  6(1),  read  in 
conjunction with the obligations set out in Article 3 of the Directive. 
The  Competition  Damages  Directive62  is  more  elaborate  in  this  respect.  The  Directive's 
Article 5(2) on the disclosure of evidence obliges  the Member States to ensure that  national 
courts are able to order the disclosure of specified items of evidence or relevant categories of 
evidence  circumscribed  as  precisely  and  as  narrowly  as  possible  on  the  basis  of  reasonably 
available facts in the reasoned justification. 

The  Commission  is  of  the  view  that  there  may  well  be  grounds  for  adopting  a  similar 
approach when interpreting and applying Article 6(1) of IPRED. While the applicant should 
specify the information he is requesting to the furthest extent possible, the obligation to do so 
should be interpreted within the reasonable limits, in light of the specifics of the case at hand. 
That  means  that,  in  the  view  of  the  Commission,  while  in  principle  the  applicant  should 

59 Judgment of the CJEU (Fourth Chamber) of 16 July 2015, C-580/13, Coty Germany GmbH v Stadtsparkasse 
Magdeburg, para. 43. 
60 C-580/13, Coty Germany, para. 40. 
61  Consultation  on  the  evaluation  and  modernisation  of  the  IPR  enforcement  legal  framework,  p.  18.  See  also 
SEC(2010) 1589 final, p. 9. 
62 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 L 349, 5.12.2014, p. 1. 

12 

 
 
                                                            
specify  in his  request  individual  items  of  evidence,  Article  6(1)  does  not  preclude  that  in 
certain  cases  an  applicant  specifies  a concrete  category  of  items  of  evidence,  provided  that 
the degree of specification allows the opposing party to identify concrete evidence lying in its 
control and the competent judicial authority to decide on the disclosure request.  

In addition, there are difficulties in understanding what is meant by the ‘evidence which lies in 
the control of the opposing party’. More specifically, uncertainties have arisen as to whether 
the  term  ‘control’  should  only  refer  to  possession  of  evidence,  or  whether  it  should  be 
understood  more  broadly,  and  extend  even  to  require  the  opposing  party  to  undertake 
a reasonable search63.  

While,  in  the  Commission’s  view,  Article  6(1)  appears  to  offer  no  clear  basis  for  requiring 
a party  to  actively  look  for  evidence  in  possession  of  third  parties  outside  its  control  with 
a view to presenting such evidence, it notes that the use of the word ‘control’ suggests that it 
is not necessarily required that the party is actually in possession of the evidence. Therefore, 
in the Commission’s view, where justified, Article 6(1) could give grounds to an obligation 
on  a  party  to  carry  out  a  diligent  search  for  the  evidence  within  its  organisation  (including 
separate  legal  entities  which  it  controls),  provided  that  the  applicant  has  adequately 
substantiated and specified the request for the evidence concerned, the obligation does not go 
beyond what is proportionate and is not unnecessarily costly, and safeguards against abuse are 
provided for where necessary64. 

Any  request  for  the  presentation  of  evidence  under  Article  6(1)  of  IPRED  should  be 
adequately  substantiated  and  specified,  and  remain  limited  to  what  is  proportionate  in 
the specific  circumstances  of  the  case.  This  requirement  need  not  however  exclude  the 
possibility of the party subject to this measure from being required, in certain cases, to present 
concrete  categories  of  evidence  or  to  carry  out  a  diligent  search  for  evidence  within  its 
organisation. 

4.  Ensuring protection of confidential information 

The possibility to obtain the measures specified in Articles 6(1), 6(2), 7(1), 8(1) and 8(2) of 
IPRED is subject to the protection of confidential information. This restriction is particularly 
important  when  the documents  indicated  as  evidence  or  information  to  be  potentially 
presented  contain  trade  secrets  or  other  commercially  sensitive  information  of  the  party 
subject to those measures. 

For  right  of  information  requests  under  Article  8,  it  was  reported65  that  the  fact  that  certain 
types of information may be subject to different confidentiality regimes in different Member 
States may cause additional problems for rightholders. This is because it is not clear whether 
they  could  use  information  legally  obtained  in  one  country  in  another  country,  where 
the confidentiality of such information would fall under stricter confidentiality rules.  

For  the  sake  of  proportionality,  requests  for  the  presentation  of  evidence  brought  under 
Article 6, for preservation measures under Article 7 and for the provision of the information 
referred  to  in  Article  8  should  be  relevant  to  prove  the claim(s)  at  issue  in  the  legal 
proceedings  concerned.  However,  even  if  some  of  the  information  in the possession  of  the 
opposing  party  will  be  crucial  for  demonstrating  the  alleged  infringement  or  its  scope  or 

63  CSWD  -  Analysis  of  the  application  of  Directive  2004/48/EC  of  22.12.2010,  p.  9;  Commission  document 
"Synthesis  of  the  comments  on  the  Commission  Report  on  the  application  of  Directive  2004/48",  July  2011, 
p. 19. 
64 See Article 3 of IPRED. 
65 Consultation on the evaluation and modernisation of the IPR enforcement legal framework, p. 18-25. 

13 

 
 
                                                            
consequences, the specific nature of this information could in certain cases e.g. still be of such 
an important commercial value that it should not be disclosed to the applicant. According to 
the  feedback  from  the  evaluation,  judicial  authorities  can  find  it  difficult  to  deal  with  these 
conflicting interests, especially when the parties are competitors.  

The Commission notes in this regard that said Articles do not provide that such confidential 
information  cannot  be  used  in  the  proceedings  at  hand.  Rather,  they  provide  that 
the information must be protected. In some Member States66, measures have been introduced 
to allow the disclosure of confidential information only to the court or a third party bound by 
specific  confidentiality  rules.  Also,  Article  60(3)  of  the  Agreement  on  a  Unified  Patent 
Court67  provides  for  the  possibility  for  the  Unified  Patent  Court  (‘UPC’)  to  order 
an inspection of premises by a person appointed by the UPC. While the applicant cannot be 
present  during  such  inspection,  he  may  be  represented  by  an  independent  professional 
practitioner whose name has to be specified in the order. 

In  the  Commission’s  view  the  competent  judicial  authorities  should  be  able  to  decide,  in 
accordance with the detailed rules of national law, on their own initiative or at the request of a 
party to the proceedings, on the appropriate means to protect confidential information where 
such information may be affected by the measures provided for in Articles 6, 7 or 8. While 
this  is  not  expressly  required  under  these  provisions,  it  considers  that  such  means  could 
include,  where  justified,  the  possibility  to present  such  information  only  to  the  competent 
judicial authorities or to an independent and impartial third party which is appointed to assist 
in the proceedings or inspections with a view to description or seizure and which is subject to 
appropriate confidentiality obligations. Any such means should ensure that the information is 
not  disclosed  to  the  applicant,  another  party  to  the  proceedings  or the  public  at  large,  while 
having due regard to the rights of defence of the applicant or such other parties68. 

Effect  should  be  given  to  the  obligation  to  protect  confidential  information  laid  down 
in Articles 6, 7 and 8 of IPRED through appropriate means which provide for the necessary 
safeguards. Such appropriate means could include the presentation of confidential information 
only  to the competent  judicial  authorities  or  the  inspection  of  premises  with  a  view  to 
description or seizure only by certain independent and impartial third parties.  

5.  Importance of securities 

IPRED prescribes that measures to preserve evidence (Article 7(2)) and provisional measures 
(Article  9(6))  may  be  subject  to  the  lodging  by  the  applicant  of  adequate  security  or 
an equivalent assurance to ensure compensation for any prejudice suffered by the defendant. 
Such  securities  or  assurances  are  an  important  instrument  not  only  to  compensate  for  such 
injury ex post where necessary, but also to prevent potential abuse of the measures provided 
for by IPRED. In that respect, the specific obligations provided for in Articles 7(2) and 9(6) 
implement the general obligation in Article 3(2), in particular that the measures, procedures 
and remedies provided for by the Directive must be applied in such a manner as to provide for 
safeguards against their abuse.  

However,  Article  3(2)  also  stipulates  that  the  measures,  procedures  and  remedies  must  be 
effective, proportionate and dissuasive and, according to Article 3(1), fair and equitable and 

66 E.g. the Netherlands.  
67 OJ C 175, 20.6.2013, p. 1. 
68  Cf.  Judgment  of  the  Court  (Third  Chamber)  of  14  February  2008,  C-450/06,  Varec  SA  v Belgian  State, 
EU:C:2008:91,  regarding  the  balancing  of  the  conflicting  rights  at  issue  in  litigation  relating  to  public 
procurement procedures. 

14 

 
 
                                                            
must  not  be  unnecessarily  costly.  This  underlines  that  whereas  abuse  must  be  prevented, 
the means  to  do  so  may  not  be  such  as  to  be  in  conflict  with  these  latter  requirements. 
That means,  for  instance,  that  the  securities  that  need  to  be  lodged  for  the  provisional 
measures  to  be  awarded  should  not  be  set  at  such  levels  that  in  practice  applicants  will  no 
longer apply for the provisional measures in question. This is particularly relevant for SMEs, 
as the costs of civil proceedings, together with the risk of losing the case and having to pay 
the fees of both parties, are a main deterrent to enforce IPR in civil court proceedings69.  

Requiring  the  applicant  to  lodge  an  adequate  security  or  equivalence  assurance  as 
a precondition for issuing provisional and precautionary measures in accordance with Articles 
7  and  9  of  IPRED  can  be  a  suitable  means  to  prevent  the  abusive  use  of  such  measures. 
When determining what security or equivalent assurance is to be deemed adequate in a given 
case,  account  should  be  taken,  inter  alia,  of  the  economic  capacity  of  the  applicant  and  the 
potential effects for the effectiveness of the measures applied for, in particular for SMEs.  

6.  Possibilities and merits of a protective brief 

Article  7(1)  of  IPRED  provides  for  the  possibility,  in  appropriate  cases,  to  issue  measures 
to preserve  evidence  without  the  other  party  having  been  heard  (i.e.  ex  parte),  in  particular 
where  any  delay  is  likely  to  cause  irreparable  harm  to  the  rightholder  or  where  there  is 
a demonstrable  risk  of evidence  being  destroyed.  Similarly,  as  provided  in  Article  9(4) 
of IPRED provisional and precautionary measures may be issued ex parte in particular where 
any  delay  would  cause  irreparable  harm  to  the  rightholder.  In  such  cases,  due  to  the  urgent 
nature  and/or  the  need  not  to  inform  the  defendant  in  advance,  the  decision  on  the  award 
of the measures is taken on a unilateral basis without prior notification and hearing. Thus, it is 
without  the  defendant  being  given  the  chance  to  submit  arguments  in  its  defence,  even  if 
the defendant may suffer from the possible severity of the impact of the measure awarded.  

Articles  7  and  9  provide  for  a  number  of  safeguards,  notably  the  fact  that  such  ex  parte 
injunctions  can  be  granted  only  on  specific  grounds,  must  be  immediately  communicated 
to the  defendant  after  their  execution  and  are  subject  to  judicial  review  ex  post,  where 
the defendant  can  be  heard.  Nonetheless,  the  fact  remains  that  such  ex  parte  measures 
significantly affect the defendant’s fundamental right to be heard and defend himself in court, 
which  is  part  of  the  fundamental  right  to  a  fair  trial70.  Limitations  to  the  right  to  be  heard 
should  therefore  in  principle  only  be  imposed  under  these  articles  while  providing  for  the 
necessary safeguards and to the extent that such limitations are necessary to ensure the rights 
to  protection  of intellectual  property  and  to  effective  judicial  protection  of  the  applicant, 
which are also fundamental rights guaranteed under the Charter.  

In order to achieve a fair balance between these conflicting interests and fundamental rights, 
some Member States (Belgium, France, Germany, the Netherlands and Spain) and Rule 207 
of  the  Rules  of  Procedure  of  the  Unified  Patent  Court71  provide  for  the  instrument  of 
protective brief, referred to also as protective letter or protective writ. With a protective brief, 
a defendant fearing to be sued for an IPR infringement (for instance, because it has received a 
warning  letter  from  the rightholder)  informs  the  competent  judicial  authorities  in  advance, 
(i.e.  even  before  an application  has  been  made),  why  the  potential  infringement  claim  is, 
according  to the defendant,  not  founded.  The  main  purpose  of  the  protective  brief  is  to 

69  "Intellectual  Property  SME  Scoreboard  2016",  EUIPO,  European  Observatory  on  Infringements  of 
Intellectual Property Rights, 2016. 
70 Article 47 of the Charter. See also Article 42 of the TRIPS Agreement. 
71 Preliminary set of provisions for the Rules of Procedure of the Unified Patent Court (18th Draft), available at: 
https://www.unified-patent-court.org/documents. 

15 

 
 
                                                            
provide the judicial authorities with as much relevant information as possible, without hearing 
the defendants once the application for a preliminary injunction has been made, before taking 
a decision on that application. 

Although  not  expressly  provided  for  in  IPRED,  the  instrument  of  a  protective  brief  can  be 
seen  as  a  good  instrument  to  help  balance,  in  a  fair  and  proportionate  manner,  the  various 
conflicting interests and fundamental rights at issue in relation to the possibility of issuing ex 
parte measures set out in Articles 7(1) and 9(4) of IPRED.  

IV.  ENSURING EFFECTIVE IPR ENFORCEMENT, INCLUDING IN A DIGITAL 

CONTEXT 

The  focus  of  this  chapter  is  on  the  issue  of  injunctions  and  intermediaries.  The  views 
expressed  in  the public consultation  show  that rightholders consider  preliminary  injunctions 
as  an  essential  instrument  to  protect  their  rights.  Besides,  as  outlined  in  the  Directive  on 
the harmonisation of certain aspects of copyright and related rights in the information society 
(‘Information  Society  Directive’)72,  in the  digital  environment,  in  particular,  the  services  of 
intermediaries  may  increasingly  be  used  by  third  parties  for  infringing  activities;  in  many 
cases, such intermediaries are best placed to bring such infringing activities to an end.  

1.  Injunctions and liability 

IPRED sets out two types of injunctions. First, under Article 9(1)(a) the Member States are 
obliged  to  ensure  that  rightholders  are  in  a  position  to  apply  for  an interlocutory  injunction 
against  an infringer  or  an  intermediary.  The  aim  of  such  injunctions  is  to  prevent  imminent 
infringement  or  to  prohibit  the  continuation  of  an  infringement.  Second,  Article  11  obliges 
Member States to ensure that, in proceedings on the merits of the case, the competent judicial 
authorities  may  issue  an  injunction  either  against  the  infringer  to  prohibit  the  continuation 
of the  infringement,  or  against  an  intermediary  aimed  not  only  at  bringing  to  an  end 
infringements but also at preventing further infringements73.  

In  this  context  it  is  important  to  stress  that  EU  law  distinguishes  between  the  concept 
of liability  and  the  possibility  to  issue  injunctions  against  an  intermediary  as  established  in 
Articles  9(1)(a)  and  11  of IPRED74.  The CJEU  has  confirmed  that  the  obligation  imposed 
on Member  States  by  Article  11  of  IPRED  applies  ‘regardless  of  any  liability  of its  own 
[i.e. of the intermediary] in relation to the facts at issue’75.  

The possibility to issue an injunction against an intermediary on the basis of Articles 9(1)(a) 
and 11 of IPRED does not depend on the intermediary's liability for the (alleged) infringement 
in  question.  Consequently,  the  competent  judicial  authorities  cannot require  applicants  to 
demonstrate that the intermediary is liable, even  indirectly, for an (alleged) infringement, as 
a condition for an injunction to be granted. 

72 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of 
certain aspects of copyright and related rights in the information society, OJ L 167, 22.6.2001, p. 10–19, Recital 
59. 
73C-324/09, L’Oréal v. eBay, para. 131; C-70/10, Scarlet Extended, para. 31; C-360/10, SABAM, para. 29. 
74 Such possibility – also irrespective of the liability of the intermediary – is also provided for in Art. 8(3) of the 
Information Society Directive. 
75Judgment  of  the  CJEU  (Grand  Chamber)  of  12  July  2011,  C-324/09,  L’Oréal  SA  and  Others  v  eBay 
International  AG  and  Others,  EU:C:2011:474,  para.  127.  See  e.g.  also  C-494/15,  Tommy  Hilfiger, 
EU:C:2016:528, para. 22. Articles 12-14 of the e-Commerce Directive establish specifically in respect of certain 
online intermediaries, that the liability exemptions provided for in those provisions do not affect the possibility 
for a court or administrative authority of requiring them to terminate or prevent an infringement. 

16 

 
 
                                                            
2.  Clarifying the concept of intermediary 

IPRED  refers  in  its  Articles  9(1)(a)  and  11  to  the  possibility  of  issuing  injunctions  against 
‘any intermediary whose services  are used  by a third  party to infringe IPRs’. The  Directive 
does  not  specify  which  economic  operators  are  to  be  considered  as  intermediaries  for 
the purpose of the Directive.  

The CJEU has clarified that an economic operator can qualify as an intermediary  within the 
meaning of these provisions when it provides a service which is capable of being used by one 
or more other persons in order to infringe one or more IPR or to access infringing contents or 
goods76. For it to be qualified as such, the economic operator does not need to have a specific 
relationship, for instance through a contractual link, with those other persons77. 

In  consequence,  the  application  of  Articles  9(1)(a)  and  11  of  the  Directive  is  not  limited 
to a specific  group  of  intermediaries  but  spans  across  different  sectors,  and  includes  both 
offline and online services78.  
The  CJEU  has  specifically  stated  that  internet  service  providers79,  social  networking 
platforms80,  online  marketplaces81  and  tenants  of  market  halls82  should  be  seen  as 
intermediaries in the circumstances of the facts at issue in the legal proceedings at hand. 

The Commission considers, on the basis of the CJEU's case law available to date, that there is 
no  reason  to  believe  that  this  is  an  exhaustive  list  and  that,  therefore,  a  range  of  other 
economic operators which provide services capable of being used by other persons to infringe 
IPR  can  also  fall  within  the  scope  of  the  Directive's  notion  of  intermediary,  which  is  to  be 
determined on a case-by-case basis. In the Commission's view, such economic operators can, 
depending  on  the  case,  potentially  include  for  instance  providers  of certain  information 
society  services,  postal and  parcel  services  providers,  transport  and  logistics  companies  and 
retailers. 

The Commission further recalls that Articles 9(1)(a) and 11 should be interpreted and applied 
in  light  of  the general  requirements  of  Article  3  and  the  applicable  fundamental  rights 
protected  in  the  EU's  legal  order.  Accordingly,  on  the  one  hand,  the  involvement  of  such 
economic  operators,  which  did  not  themselves  engage  in  any  infringing  activity,  in 
the process of IPR enforcement under IPRED can be required to ensure that rightholders are 
in a position to effectively enforce their rights. On the other hand, there may in a given case 
be  no  justification  for  such  involvement  where  the  services  provided  are  so  distant  or 
immaterial  to  the  (alleged)  infringement  that  the  economic  operator  in  question  cannot 
reasonably be expected to significantly contribute to such effective enforcement, meaning that 
its involvement would be disproportionate and unnecessarily burdensome83.  

76 See C-314/12 UPC Telekabel; Judgment of the Court (Third Chamber) of 24 November 2011. 
77  Judgment  of  the  CJEU  (Second  Chamber)  of  7  July  2016,  C-494/15,  Tommy  Hilfiger  Licensing  LLC  and 
Others v DELTA CENTER a.s., para. 23. With respect to Article 8(3) of the Information Society Directive, see 
also C-314/12 UPC Telekabel, para. 34-35. 
78 As regards offline and online service providers, see C-494/15, Tommy Hilfiger, para. 29. 
79  C-557/07,  LSG-Gesellschaft,  para  46;  C-314/12  UPC  Telekabel,  para  43-46;  Judgment  of  the  Court  (Third 
Chamber)  of  24  November  2011,  C-70/10,  Scarlet  Extended  SA  v  Société  belge  des  auteurs,  compositeurs  et 
éditeurs SCRL (SABAM), EU:C:2011:771, para 30. 
80 Judgment of the CJEU (Third Chamber) of 16 February 2012,  C-360/10, Belgische Vereniging van Auteurs, 
Componisten en Uitgevers CVBA (SABAM) v Netlog NV, EU:C:2012:85, para. 28. 
81 C-324/09, L’Oréal v. eBay, para. 131.  
82 C-494/15 Tommy Hilfiger, para 28. 
83 Cf. Recital 59 of the Information Society Directive. 

17 

 
 
                                                            
Economic operators which provide a service capable of being used by other persons in order 
to  infringe  IPR  can,  depending  on  the  facts  of  the  case  at  hand,  qualify  as  intermediaries 
within  the  meaning  of  Articles  9(1)(a)  and  11  of  IPRED,  also  in  the  absence  of  a  specific 
relationship, such as a contractual link, between those two parties.  

3.  Ensuring a balanced regime for injunctions and intermediaries  

In the context of the balancing of rights and interests that is typically required in relation to 
the interpretation  and application  of IPRED's  regime  on  injunctions  and intermediaries,  two 
issues are, in addition to the foregoing, typically of particular importance, namely, the scope 
of any injunctions issued and filtering. 

Scope of injunctions 

While it is initially the applicant who is to specify in his application the scope of an injunction 
he considers appropriate to prevent an imminent infringement or to stop an ongoing one, it is 
the  competent  judicial  authority  which  is  to  decide  on  that  application.  It  is  also  therefore 
the competent  judicial  authority  which  determines  what  measures  will  have  to  be  taken  (if 
any)  by the  defendant.  That  judicial  authority  should  assess  the  application  by  taking  due 
account  of the  specific  characteristics  of  the  case  (see  Recital  17  of  IPRED)  and  any 
injunction  issued  must  be  in  accordance  with  the  principle  of  proportionality  and  the  other 
general requirements laid down in Article 3 as well as the applicable fundamental rights. 

It  follows  that  the  competent  judicial  authority  should  not  issue  injunctions  which  require 
the taking of measures that go beyond what is appropriate and necessary in light of the facts 
and  circumstances  of  the  case  at  hand  to  prevent  an imminent  infringement  or  to  forbid 
the continuation  of  an  infringement.  Therefore,  any injunction  issued  should  be  capable 
of being effective, but should have the minimal scope necessary to accomplish this objective. 
It is not necessary that the measures required by the injunction lead to a complete cessation 
of the  IPR  infringements;  it  can  under  certain  circumstances  be  sufficient  that  they  make 
the infringing  acts  difficult  or  seriously  discourage  them84.  At  the  same  time,  the  addressee 
of the injunction should not be required to make unbearable sacrifices85.  
In  litigation  relating  to  copyright  infringement,  the  CJEU  indicated86  that  the  measures 
adopted  by  an  internet  service  provider,  as  an  intermediary  to  whom  the  injunction  was 
addressed, must be strictly targeted. More specifically, such measures must serve to bring an 
end  to  a  third  party’s  infringement  of  copyright  or  of  a  related  right  but  without  thereby 
unnecessarily affecting internet users who are using the provider’s services to lawfully access 
information.  The  CJEU  found  in  the  circumstances  of  that  case  that,  failing  that,  the 
provider’s  interference  in  the freedom  of  information  of  those  users  would  be  unjustified  in 
the  light  of  the  objective  pursued.  As  was  noted  above87,  in  respect  of  intermediaries,  the 
CJEU has further clarified that injunctions can not only serve to bring the infringement to an 
end, but also to prevent further infringements. 

Accordingly,  in  case  of  an  infringement  of  IPR  consisting  of  the  publication  of  a  certain 
content online, it may be appropriate for an injunction addressed to an intermediary to require 
this  intermediary  to  take  down  or  disable  access  to  that  content.  Generally  speaking,  
requiring that access to the entire website is blocked might be too far-reaching, although there 
can  be  circumstances  where  the  competent  judicial  authority  deems  this  necessary  and 

84  Judgment  of  the  CJEU  (Fourth  Chamber),  27  March  2014,  C-314/12,  UPC  Telekabel  Wien  GmbH  v 
Constantin Film Verleih GmbH and Wega Filmproduktionsgesellschaft mbH, EU:C:2014:192, para. 63.  
85 C-314/12, UPC Telekabel, para. 53. 
86 C-314/12, UPC Telekabel, para. 56. 
87 See also discussion in chapter IV sec. 1 on injunctions and liability. 

18 

 
 
                                                            
proportionate  (e.g.  in  cases  of  large-scale  infringements  or  infringements  occurring  in 
a structural manner). In the Commission’s view any such decision should always be taken in 
function of the specifics of the case at hand. 
The CJEU also clarified88 that the competent judicial authorities may decide not to explicitly 
describe  the  specific  measures  which the  provider  must  take  to  achieve  the  result  sought. 
However,  the  CJEU  also  made  it  clear  that  in  such  cases  a  number  of  conditions  are  to  be 
respected,  notably  that  the  measures  do  not  go  beyond  what  is  reasonable,  respect  for 
the principle  of  legal  certainty,  compliance  with  the  fundamental  rights  of  the  parties 
concerned  including  the  internet  users’  freedom  of  information,  strict  targeting  of 
the measures  and  a  possibility  for  the  competent  judicial  authorities  to  verify  that  these 
conditions  have  been  complied  with,  notably  through  a  possibility  for  the  internet  users 
concerned to assert their rights once those measures are known.  

In  the  Commission’s  view,  whilst  the  above  case  law  relates  to  copyright  infringements, 
the principles  articulated  therein  should  be  also  analogically  applied  in  relation  to 
infringement of IPR other than copyright and related rights. 

Injunctions  issued  under  Articles  9(1)(a)  and  11  of  IPRED  should  be  capable  of  being 
effective,  but  they  should  not  go  beyond  what  is  necessary  and  proportionate  in 
the circumstances of the case at hand to achieve that objective. It can be sufficient that they 
make  the  infringing  acts  in  question  difficult  or  seriously  discourage  them,  without 
necessarily leading to the complete cessation thereof. However, in view of the CJEU case law, 
the addressee of the injunction cannot be required to make ‘unbearable sacrifices’89. Measures 
imposed need to be sufficiently precise and effective, without requiring that a measure must 
guarantee that an end is put to the infringement90. Compliance with the fundamental rights of 
all  parties  involved  should  be  ensured  in  this  regard,  including  those  of  third  parties  which 
may be affected by the measures taken to comply with the injunction such as internet users. 

Filtering systems 

A distinction must be made between an injunction requiring one or more specific infringing 
content  items  to  be removed  from  a  website  and  an  injunction  that  may  ultimately  result in 
obliging  an  intermediary  to actively  monitor  all  content  made  available  in  a  given  place 
to ensure that none of the individual items infringe IPR.  

According to Article 15(1) of the e-Commerce Directive, Member States are prohibited from 
imposing  a general  monitoring  obligation  on  online  intermediaries  within  the  meaning 
of Articles  12-14  of  that  Directive91.  Such  an  obligation  would  also  be  incompatible  with 
the general requirements of fairness, proportionality and any measures not being excessively 
costly set out in Article 3 of IPRED92.  
In the Scarlet Extended93 and SABAM94 cases the CJEU elaborated on the limits to the scope 
of  an  injunction resulting  from  those  provisions  as  well as  from  the  applicable  fundamental 
rights of the parties concerned. At issue in Scarlet Extended was a system to be installed by 
an internet service provider for filtering:  

88 C-314/12, UPC Telekabel, para. 52-57.  
89 C-314/12, UPC Telekabel, para. 53. 
90  Judgment  of  the  CJEUourt  (Third  Chamber)  of  15  September  2016,  C-484/14,  Tobias  Mc  Fadden  v  Sony 
Music Entertainment Germany GmbH, EU:C:2016:689, para. 93-95; C-314/12 UPC Telekabel, para. 56 and, 58-
62. 
91  Article  2(3)(a)  of  IPRED  specifies  that  that  Directive  shall  not  affect  the  e-Commerce  Directive  and  in 
particular its Articles 12-15. 
92 C-324/09, L’Oréal v. eBay, para. 139; C-70/10, Scarlet Extended, para. 36; C-360/10, SABAM, para. 34. 
93 C-70/10, Scarlet Extended. 
94 C-360/10, SABAM. 

19 

 
 
                                                            
  all electronic communications passing via its services, in particular those involving the use 

of peer-to-peer software, 

  which applies indiscriminately to its customers, 
  as a preventive measure, 
  exclusively at its expense, and 
  for an unlimited period,  
which  is  capable  of  identifying  on  the  provider’s  network  the  movement  of  electronic  files 
containing a musical, cinematographic or audio-visual work in respect of which the applicant 
claims  to  hold  intellectual-property  rights,  with  a  view  to  blocking  the  transfer  of  files 
the sharing of which infringes copyright. A largely similar system, to be installed by a hosting 
service provider in respect of information stored on its servers, was at issue in SABAM.  

In  both cases  the CJEU found that requiring the providers concerned to install such general 
filtering systems would not be compatible with Article 15 of the e-Commerce Directive and 
Article 3 of IPRED, read together with and construed in light of the requirements stemming 
from the protection of the applicable fundamental rights. 

At  the  same  time,  Recital  47  of  the  e-Commerce  Directive  recalls  that  Article  15  only 
concerns  monitoring  obligations  of  a  general  nature  and  does  not  automatically  cover 
monitoring  obligations  in  a  specific  case.  In  particular,  it  does  not  affect  orders  by  national 
authorities in accordance with national legislation. Recital 48 adds that this Directive does not 
affect  the  possibility  for  Member  States  to  require  the  service  providers  concerned  to  apply 
reasonable duties of care in order to detect and prevent certain types of illegal activities. 

Therefore, where appropriate and within the limits of the abovementioned provisions, certain 
due diligence obligations may be imposed e.g. on providers of online hosting services with a 
view  to  preventing  the  upload  of  IPR  infringing  content  identified  by  rightholders  and  in 
cooperation with them95.  
When  ordering  intermediaries  to  take  certain  measures  aimed  at  preventing  further 
infringements  in  accordance  with  Articles  9(1)(a)  or  11  of  IPRED,  the  competent  judicial 
authorities  may,  where  appropriate,  issue  injunctions  which  entail  specific  monitoring 
obligations.  However,  the  prohibition  of  imposing  a  general  obligation  to  monitor  resulting 
from Article 15(1) of the e-Commerce Directive and Article 3 of IPRED, read in conjunction 
with 
the  applicable  fundamental  rights,  preclude 
intermediaries from being made subject by means of such injunctions to obligations requiring 
them  to  install  and  operate  excessively  broad,  unspecific  and  expensive  filtering  systems  of 
the type and in the circumstances at issue in the Scarlet Extended and SABAM cases. 

the  requirements  stemming  from 

4.  Forward-looking, catalogue-wide and dynamic injunctions 

There  are  differences  in  Member  States'  national  legislation  on  the  scope  of  an injunction 
granted by a competent judicial authority, in particular on the way it can address imminent or 
repetitive  infringements  of  IPR.  While  available  in  some  jurisdictions  such  as  Ireland  and 
the UK, catalogue- or repertoire-wide injunctions96 are not available in all Member States. 

Furthermore, injunctions may in certain cases lose some effectiveness because of changes in 
the subject matter in respect of which the injunction was ordered. This may be, for example, 

95 Cf. the obligations for certain online hosting service providers to prevent the upload of unauthorised protected 
content,  in  cooperation  with  rightholders,  that  are  proposed  in  Article  13  of  the  Commission's  proposal  for 
a Directive on copyright in the Digital Single Market (COM(2016) 593, of 14.9.2016). 
96 I.e. injunctions requiring e.g. intermediaries to prevent further infringements of all rights held by a rightholder 
or that are part of a licensee's catalogue or repertoire, based on an established infringement of a sample of those 
rights. 

20 

 
 
                                                            
the  case  of  website  blocking  injunctions,  where  a  competent  judicial  authority  grants 
the injunction  with  reference  to  certain  specific  domain  names,  whilst  mirror  websites  can 
appear easily under other domain names and thus remain unaffected by the injunction. 

Dynamic injunctions are a possible means to address this. These are injunctions which can be 
issued  for  instance  in  cases  in  which  materially  the  same  website  becomes  available 
immediately  after  issuing  the  injunction  with  a  different  IP  address  or  URL  and  which  is 
drafted  in  a  way  that  allows  to  also  cover  the  new  IP  address  or  URL  without  the need  for 
a new  judicial  procedure  to  obtain  a  new  injunction.  The  possibility  of  issuing  such 
injunctions exists, inter alia, in the United Kingdom and Ireland. This objective could also be 
pursued  through  intervention  of  a  public  authority  or  the police,  as  it  occurred  in  a  specific 
case in Belgium97. 

As  was  noted  above,  it  is  clear  from  its  very  wording  that  the  interlocutory  injunctions 
provided for in Article 9(1)(a) of IPRED can be issued to prevent imminent infringement and 
the CJEU has clarified98 that, in respect of intermediaries, the injunctions referred to in Article 
11 can also be issued to prevent further infringements. Other than that, there are at present no 
clear indications as to the compatibility with or need for such injunctions under IPRED. In the 
view of the Commission, this should be assessed on case-by-case basis, it being understood 
that,  where  it  comes  to  injunctions  against  intermediaries,  the  relevant  conditions  and 
procedures are in principle to be specified in national law99. In any case, due account should 
be taken of the objective pursued by these two articles, the general requirements of Article 3 
of IPRED as well as the applicable fundamental rights. 

The Commission takes note of the fact that some Member States provide for the possibility of 
issuing  forward-looking,  catalogue-wide  and  dynamic  injunctions.  Whilst  this  issue  is  not 
expressly  addressed  in  IPRED,  the  Commission  considers  that,  under  the  condition  that 
necessary safeguards are provided for, such injunctions can be an effective means to prevent 
the continuation of an IPR infringement.  

5.  Digital evidence 

Gathering, presenting and preserving evidence of infringements committed online may be, in 
some  situations,  a  major  challenge.  The  Directive  does  not  explicitly  refer  to  the  use  and 
presentation of digital evidence in proceedings for the enforcement of IPR. 

During the evaluation it was pointed out that evidence in digital form may be hard to preserve 
and that images of the content of a webpage at a certain moment (so-called ‘screenshots’) are 
in  some  situations  not  accepted  as  evidence  by  the  competent  judicial  authorities  in  some 
Member  States.  However,  the  use  of  screenshots  is  one  of  the  most  common  ways 
to demonstrate  that  a  certain  activity  took  place  in  the  online  environment.  In  practice, 
a screenshot  can,  for  instance,  demonstrate  a  characteristic  of  the online  distribution  of 
an infringing  good,  as  the  content  of  a  webpage  may  illustrate  what  kind  of  good  was 
available for sale, by whom, on which territory and targeted at which audience. As such, they 
can  help  rightholders  to  effectively  enforce  their  rights  also  in  an  online  context.  Likewise, 
defendants  may  also  wish  to  rely  on  screenshots  to  contest  allegations  of  IPR  infringing 
behaviour. 

97  Anvers,  14  February  2013,  Cases  2012/FR/303,  2012/PGA/3549,  2012/KC21/262,  and  Cass.,  22  October 
2013,  P.13.0550.N;  In  this  ruling,  the  judge  required  that  the  Belgian  police  (‘Computer  Crime  Unit’)  set  up 
a list of domain names related to the website ‘thepiratbay.org’. 
98 C-324/09, L’Oréal v. eBay, para. 131. 
99 See Recital 23 of IPRED. See also C-324/09, L’Oréal v. eBay, para. 135; C-70/10, Scarlet Extended, para. 31; 
C-360/10, SABAM, para. 29. 

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In some Member States100 the current practice of the competent judicial authorities is to admit 
screenshots as evidence, on the condition that they have been taken by a notary or bailiff and 
that  they  indicate  the  allegedly  infringing  goods  or  services  in  a  sufficiently  visible  and 
precise  manner.  Given  the  absence  of  any  express  rules  in  this  regard,  in  the  view  of 
the Commission, IPRED cannot be said to necessarily require such practice. However, in its 
view  such  approach  is,  generally  speaking,  compatible  with  IPRED.  It  can  be  seen  as  best 
practice, as it can be a good manner to address the aforementioned needs of the parties while 
ensuring  that  sufficient  certainty  exists  as  to  the  accuracy  and  reliability  of  the  evidence 
on the basis of which the competent judicial authority is to decide the case.   

The  possibility  which  exists  in  the  national  laws  of  certain  Member  States  to  allow 
screenshots  as  evidence  in  legal  proceedings  brought  under  IPRED,  provided  that  they 
indicate the allegedly infringing goods or services in a sufficiently visible and precise manner 
and comply with certain procedural safeguards, can in the Commission’s view be considered 
as  best  practice.  Depending  on  national  legal  systems,  such  safeguards  can  include  for 
instance the obligation to have such evidence taken by a notary or a bailiff. 

V.  ENSURING THE SINGLE MARKET DIMENSION FOR IPR 

ENFORCEMENT 

1.  Clarifying which rights are covered by the Directive 

IPRED concerns the measures, procedures and remedies necessary to ensure the enforcement 
of intellectual property rights101 (Article 1). The Directive applies to any infringement of IPR 
as  provided  for  by  Union  law  and/or  by  the  national  law  of  the Member  State  concerned, 
although  the  Directive  does  not  affect  means  which  are  or  may  be  provided  for  in  EU 
or national  legislation,  in so  far  as  those  means  may  be  more  favourable  for  rightholders 
(Article 2(1))102. IPRED applies without affecting the specific provisions on the enforcement 
of  rights  and  exceptions  contained  in  EU  legislation  on  copyright  and  rights  related 
to copyright (Article 2(2)). It does not affect EU law on protection of personal data or the e-
Commerce  Directive  in  general,  and  in  particular  Articles  12  to  15  of  that  Directive 
(Article 2(3) of IPRED). 

IPR covered by the Directive 

While  the  Directive  does  not  provide  a  list  of  the  specific  rights  which  are  considered 
intellectual  property  rights  for  its purposes,  Recital  13  explains  that  its  scope  should  be 
defined as widely as possible to encompass all the IPR covered by provisions of EU law in 
this field and/or by the national laws of the Member States.  
In  2005,  the  Commission  issued  a  non-legally  binding  Statement103  on  Article  2  of 
the Directive to help to clarify its scope. The Commission indicated in this Statement that it 
considers  that  at  least  the  following  intellectual  property  rights  are  covered  by  the  scope  of 
the Directive:  

  copyright and rights related to copyright,  

100 E.g. Belgium, France, Poland. 
101  According  to  its  Article  1,  for  the  purposes  of  the  Directive,  the  term  'intellectual  property  rights'  includes 
industrial property rights. 
102 Cf. C-367/15, OTK, para. 23: "Directive 2004/48 lays down a minimum standard concerning the enforcement 
of intellectual property rights and does not prevent the Member States from laying down measures that are more 
protective". 
103 Statement by the Commission concerning Article 2 of Directive 2004/48/EC of the European Parliament and 
of the Council on the enforcement of intellectual property rights (2005/295/EC), OJ L 94, 13.4.2005, p. 37–37. 

22 

 
 
                                                            
  sui generis right of a database maker,  
  rights of the creator of the topographies of a semiconductor product,  
  trade mark rights,  
  design rights,  
  patent rights, including rights derived from supplementary protection certificates, 
  geographical indications,  
  utility model rights,  
  plant variety rights,  
  trade names, in so far as these are protected as exclusive property rights in the national law 

concerned.  

In  the  Commission’s  view,  the  measures,  procedures  and  remedies  set  out  in  the  Directive 
should in any case be available in infringement proceedings on any of the rights listed in its 
Statement of 2005.  

Interlink with the Trade Secrets Directive 

However,  some  uncertainties  remain,  particularly  with  other  rights  protected  under  national 
law, such as domain names, trade secrets and other acts frequently covered by national unfair 
competition law (e.g. parasitic copies). While according to Recital 13 of IPRED the Member 
States  may  extend,  for  internal  purposes,  the  provisions  of  the  Directive  to  acts  of unfair 
competition,  including  parasitic  copies,  or  similar  activities,  they  are  not  obliged  to do  so. 
From  the  evaluations  that  have  been  carried  out  so  far104  it  seems  that  none  of  the Member 
States has decided to extend the Directive’s provisions to such acts.  
The adoption of the Trade Secrets Directive105 in 2016 brought some clarification on the acts 
covered so far by national unfair competition law. The Trade Secrets Directive indicates that 
it should not affect the application of any other relevant law in other areas, including IPR and 
that it should be seen as lex specialis when its scope overlaps with IPRED106. Therefore, once 
the  Trade  Secrets  Directive’s  transposition  is  complete107,  anyone  suffering  from  acts  that 
could be interpreted as unlawful acquisition, use or disclosure of trade secrets, as defined in 
that Directive, will be in a position to benefit in the first place from the measures, procedures 
and remedies set out in the Trade Secrets Directive. Having said that, for all the acts of unfair 
competition regulated at national level that do not fall within the scope of the Trade Secrets 
Directive, the general rules will apply; the provisions of IPRED will only be applicable if the 
Member  State  concerned  decided  to extend  its  application  on  the  national  level  in  line  with 
Recital 13 of IPRED. 

For trade secrets, the Trade Secrets Directive applies as a lex specialis in respect of IPRED.  

For  all  acts  of  unfair  competition  regulated  under  national  law  which  do  not  concern 
the infringement  of  an  IPR  within  the  meaning  of  IPRED,  nor  fall  within  the  scope  of 
the Trade  Secrets  Directive,  the provisions  of  IPRED  are  applicable  only  where  a  Member 
State decides to extend, for internal purposes, those provisions to the acts in question. 

104 In particular, Report from the Commission "Application of Directive 2004/48/EC of the European Parliament 
and the Council  of  29  April  2004  on  the  enforcement  of  intellectual  property  rights"  (COM(2010)0779  final); 
"Support  study  for  the  ex-post  evaluation  and  ex-ante  impact  analysis  of  the  IPR  enforcement  directive 
(IPRED)", Technopolis Group in a consortium with EY and Schalast Rechtsanwälte, 2017. 
105 Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of 
undisclosed  know-how  and  business  information  (trade  secrets)  against  their  unlawful  acquisition,  use  and 
disclosure, OJ L 157, 15.6.2016, p. 1. 
106 Recital 39 of the Trade Secrets Directive. 
107 Member States are to transpose that Directive by 9 June 2018. 

23 

 
 
                                                            
2.  Proceedings outside of the Directive’s scope 

The Directive specifically refers in its Article 2(1) to the infringement of IPR. In this context 
the possibility  to apply  the  provisions  implementing  the  Directive  in  proceedings  aiming 
at the invalidation of rights has been called into question.  
The CJEU clarified108 that while the Directive applies to the proceedings aiming to ensure that 
IPR are protected, it does not apply to invalidation proceedings, where a person who, without 
being  the  proprietor  of  an  IPR,  disputes  the protection  granted  to  the  proprietor  of 
the corresponding rights. 
In addition, the CJEU held109 that the Directive does not apply to proceedings in which those 
liable  for  payment  of the fair  compensation  bring  an  action  before  the  referring  court  for  a 
ruling  against  the  body  responsible  for  collecting  that  remuneration  and  distributing  it  to 
copyright holders, which defends that action. 

The  measures,  procedures  and  remedies  provided  for  in  IPRED  cannot  be  invoked  in 
proceedings  for  the  invalidation  of  IPR,  nor  in  proceedings  entailing  an  action  to  pay  fair 
compensation  to  copyright  holders  brought  against  the  body  responsible  for  collecting 
and distributing such remuneration.  

3.  Entitlement to apply for measures, procedures and remedies 

Article  4  of  the  Directive  indicates  that,  subject  to  certain  conditions,  Member  States  must 
recognise  the  following  as  persons  entitled  to  apply  for  the  measures,  procedures  and 
remedies set out in the Directive: (i) the holders of IPR, (ii) all other persons authorised to use 
those  rights,  in particular  licensees,  (iii)  intellectual  property  collective  rights-management 
bodies, and (iv) professional defence bodies. 

Licensees 

Article 4(b) of the Directive indicates that persons that are authorised to use IPR, in particular 
licensees,  in  so  far  as  permitted  by  and  in  accordance  with  the provisions  of  the applicable 
law, are entitled to seek application of the measures, procedures and  remedies set out in the 
Directive.  However,  it  has  been  questioned  whether  a  licensee  is  also  entitled  to seek 
application  of  these  measures  if  despite  obtaining  a licence  from  a  rightholder,  the  licensee 
did not, where relevant, register such licence in an appropriate register.  
The CJEU has clarified110 that in case of licences issued for a registered Community design 
(‘RCD’) or European Union trade mark (‘EUTM’), the licensee may bring proceedings under 
the  Regulations  in  question  alleging  infringement  of  the  RCD/EUTM  which  is  the  subject 
of the  licence,  even  if  that  licence  has  not  been  entered  in  respectively  the  Register 
of Community  designs  or  Register  of  EU  trade  marks,  and  that  such  licensee  should  in 
particular have the possibility to apply for injunctions. 

Whereas these judgments could be seen as indications that the same goes in respect of Article 
4(b)  of  IPRED,  this  will  depend  on  the  provisions  of  national  law  of  the  Member  State 

108  Judgment  of  the  CJEU  (Third  Chamber)  of  15  November  2012,  C-180/11,  Bericap  Záródástechnikai  Bt. 
v Plastinnova 2000 Kft, EU:C:2012:717, para. 79-81. 
109 Judgment of the CJEU (Fourth Chamber) of 10 April 2014, C-435/12, ACI Adam BV and Others v Stichting 
de Thuiskopie and Stichting Onderhandelingen Thuiskopie vergoeding, EU:C:2014:254, para. 63.  
110  Judgment  of  the  CJEU  (Seventh  Chamber)  of  4  February  2016,  C-163/15,  Youssef  Hassan  v  Breiding 
Vertriebsgesellschaft mbH, EU:C:2016:71, para. 26; Judgment of the CJEU (Seventh Chamber) of 22 June 2016, 
C-419/15, Thomas Philipps GmbH & Co. KG v Grüne Welle Vertriebs GmbH, EU:C:2016:468, para. 25. 

24 

 
 
                                                            
concerned  to  which  that  provisions  expressly  refers  to  determine  the  legal  standing 
of the persons in question under the Directive. 

Whereas in case law relating to the EU's Regulations on designs and trade marks, the CJEU 
has  held  that  licensees  have  legal  standing  to  apply  for  injunctions  even  without  prior 
registration. For other IPR, in accordance with Article 4(b) of IPRED, these matters depend 
on national law. 

Collective rights management bodies and professional defence bodies 

Article  4(c)  and  (d)  provides  that  IP  collective  rights  management  bodies  and  professional 
defence bodies, respectively, regularly recognised as having a right to represent rightholders, 
are  entitled  to  seek  the  application  of  the  civil  enforcement  means  provided  for  by 
the Directive  ‘in  so  far  as  permitted  by  and  in  accordance  with  the  provisions  of  the 
applicable  law’111.  In  this  context,  the  implementation  of  the  ability  of  collective  bodies  to 
bring proceedings varies considerably across Member States.  

While the wording  used in  these provisions indicates that Member States  have discretion in 
this  regard,  several  Member  States  provide  for  the  possibility  to  grant  such  bodies  legal 
standing  to bring  proceedings  on  behalf  of  their  members,  where  their  purpose  is  to  defend 
the rights  of  their  members  and  the  case  is  deemed  of  interest  to  those  members112. 
The Commission  notes  that  doing  so  generally  appears  to  improve  the  possibility  to 
effectively  enforce  IPR,  in  particular  because  such  bodies  may  in  some  cases  be  better 
positioned  and  equipped  (in  terms  of  access  to  information,  expertise,  human  resources, 
financial position, etc.) than the rightholders themselves to actually and effectively bring legal 
proceedings to address IPR infringements where needed, in particular where the rightholders 
are SMEs113.  

Several  Member  States  have  decided  to  use  the  possibility,  set  out  in  points  (c)  and  (d)  of 
Article 4 of IPRED, to entitle collective rights management bodies and professional defence 
bodies  which  are  regularly  recognised,  to  have  a  right  to  represent  rightholders  to  seek 
application  of  the  measures,  procedures  and  remedies  provided  for  in  IPRED.  Doing  so 
generally  improves  the  effective  enforcement  of  IPR  and  can  therefore  be  considered  best 
practice.  

4.  Presumption of authorship and ownership 

Article  5  of  the  Directive  sets  out  a  rebuttable  presumption  of  authorship  or  ownership  in 
favour  of  the  person  (the  author  or  the  holder  of  rights  related  to  copyright)  whose  name 
appears on the work or protected subject matter in the usual manner. This provision is aimed 
at  facilitating  the  enforcement  possibilities  of  these  persons,  considering  that  proof  of 
authorship  or  ownership  may  be  difficult  to  provide,  especially  when  several  works  are 
involved. 

In the view of the Commission, Member States have a degree of discretion when giving effect 
to  Article  5,  notably  as  regards  the  detailed  rules  on  when  and  how  the  necessary  proof 
to rebut  this  presumption  is  to  be  provided,  given  that  this  provision  does  not  contain  any 
express rules in this regard. However, it also notes that these detailed rules and the manner in 
which they are applied cannot be such as to call into question the effectiveness of Article 5. 

111 The same phrase has been included in Article 4(b) of IPRED. 
112 Provisions of this kind exist in France, Belgium, Portugal and the Netherlands. 
113 According with the general feedback received from the stakeholders. See also See "Support study for the ex-
post evaluation and ex-ante impact analysis of the IPR enforcement directive (IPRED)", Technopolis Group in a 
consortium with EY and Schalast Rechtsanwälte, 2017, p. 88-89. 

25 

 
 
                                                            
The  rebuttable  presumption  of  authorship  or  ownership  provided  in  Article  5  of  IPRED 
should  be  interpreted  and  applied  in  such  a  manner  that  its  objective  to  facilitate 
the enforcement  of  the  relevant  IPR  by  authors  and  holders  of  rights  related  to  copyright  is 
safeguarded. 

5.  Availability of certain specific measures 

Evidence  

Articles 6 and 7 of the Directive set out obligations on Member States to ensure that there are 
effective means to present and preserve evidence. The aim of these provisions is to guarantee 
that the information needed to determine whether an IPR infringement took place and if so, 
what its consequences are, even if the applicant is not in the possession of this information, is 
made  available  to  the  applicant  and  to  the  competent  judicial  authorities.  However,  these 
procedures  should  take  into  account  the  rights  of  the  defendant  and  provide  the  necessary 
guarantees,  including  the  protection  of  confidential  information  and  protection  of  personal 
data and private life114. 

Article 7(1) allows the competent judicial authorities to order, upon substantiated application, 
prompt  and  effective  provisional  measures  to  preserve  relevant  evidence  of  the  alleged 
infringement. The right to preserve evidence is expressly applicable before the proceedings on 
the  merits  begin,  subject  to  the  protection  of  confidential  information  and  on  condition  that 
the optional  safeguards  and  guarantees  (as  referred  to  in  Article  7(2))  to  avoid  potential 
abuses are provided for in the national law. That means, in particular, that the applicant may 
also lodge an appropriate request by means of preliminary  proceedings, including  in certain 
cases ex-parte proceedings115. 

In  some  Member  States,  it remains  difficult  to  apply  for  such  provisional  preservation 
measures before the proceedings on the merits of the case have actually begun116. However, 
the express wording of Article 7(1) of the Directive indicates that requests for such measures 
should not be denied on the mere grounds that the proceedings on the merits have not yet been 
initiated. 

Right of information 

The views expressed in the public consultation pointed to uncertainty as to whether the right 
of information  of  Article  8  IPRED  can  be  exercised  before  any  judgment  on  the  merits  of 
the case  concerning  an  IPR infringement  is  issued117.  Article  8(1)  indicates  that  a  right 
of information order can be issued ‘in the context of proceedings concerning an infringement 
of  an  intellectual  property  right’.  However,  it  does  not  indicate,  as  it  is  the  case  e.g.  in 
the Article  7(1)  that  such  order  can  be  issued  ‘even  before  the  commencement  of 
the proceedings  on  the  merits  of  the  case’,  nor  does  it  specifically  say  that  it  can  be  issued 
before the proceedings on the merits are concluded. As a result, in some Member States it is 
difficult to obtain a right of information order before the final decision in the proceedings on 
the merits. 
The CJEU recently clarified118 that the formulation used in  Article 8(1)  does  not imply  that 
the  right  to  information  must  be  necessarily  exercised  in  the  same  legal  proceedings  as 

114 Recital 20 of IPRED. 
115 See Sec. 'Possibilities and merits of a protective brief', p. 15. 
116 CSWD – Evaluation of Directive 2004/48/EC, p. 13. 
117 Consultation on the evaluation and modernisation of the IPR enforcement legal framework, p. 22.  
118 Judgment of the CJEU (Ninth Chamber) of 18 January 2017,  C-427/15, NEW WAVE CZ, a.s. v ALLTOYS, 
EU:C:2017:18, para. 27.  

26 

 
 
                                                            
the proceedings  concerning  an  IPR  infringement.  In  particular,  it  found  that  the  right  of 
information may be invoked where after the definitive termination of proceedings in which it 
was held that an IPR was  infringed, the applicant  in separate, subsequent  proceedings seeks 
the provision of information on the origin and distribution networks of the goods or services 
by which that IPR is infringed with a view to bringing an action for damages. 

While the approach differs across the Member States, some best practices can be identified. 
For  example,  in  Germany,  the  Trade  Marks  Act  provides119  that  in  cases  of  a  manifest 
infringement  of  the  IPR  at  issue,  the  obligation  to  provide  information  may  be  ordered  by 
means of a preliminary injunction in accordance with the relevant provisions of the German 
Code of Civil Procedure. 

The specification in Article 8 of IPRED that a right of information order is available ‘in the 
context  of’  proceedings  concerning  an  IPR infringement  means  that  the  provision  of 
information  need  not  necessarily  be  ordered  in those  same  legal  proceedings.  It  can  also  be 
ordered  in  separate  subsequent  proceedings  brought  with  a  view  to  a possible  action  for 
damages. Depending on the applicable provisions of national law, it may also be ordered at an 
earlier stage, by means of a preliminary injunction.    

Corrective measures 

Article 10 of the Directive states that the competent judicial authorities may order recall from 
the  channels  of  commerce  of  goods  which  have  been  found  to  be  infringing  an  IPR,  and in 
appropriate  cases  also  materials  and  implements  principally  used  in  the  creation  or 
manufacture  of  these  goods.  Furthermore,  their  definitive  removal  from  the  channels 
of commerce  or  their  destruction  may  be  ordered.  Such  measures  are  to  be  carried  out  at 
the expense of the infringer. 

Article 10 of the Directive is based on Article 46 of the TRIPS Agreement. Article 10(3) of 
IPRED  provides,  just  as  the  third  sentence  of  Article  46  of  the  TRIPS  Agreement,  that  in 
considering a request for corrective measures, it is necessary to take into account the need for 
proportionality between the seriousness of the infringement and the remedies ordered and the 
interests of third parties. In addition, according to the further sentence of Article 46, in regard 
to  counterfeit trade  mark goods, the simple removal of the trade mark unlawfully affixed is 
not sufficient, other than in exceptional cases, to permit release of the goods into the channels 
of commerce. It results from the CJEU's general case law in this regard120 that Article 10 of 
the Directive is to be interpreted and applied, as far as possible, in light of this provision of 
the TRIPS Agreement.  

It is also worth noting that, unlike the provisions on damages (Article 13), Article 10 does not 
expressly require that an infringer knowingly, or with reasonable grounds to know, engaged in 
an infringing activity, for the measures in question to be imposed. 

Article 10 of the Directive should be interpreted and applied, as far as possible, in the light of 
Article 46 of the TRIPS Agreement. According to that latter provision, the simple removal of 
the trade mark unlawfully affixed to counterfeit trademark goods is not sufficient, other than 
in exceptional cases, to permit release of the goods into the channels of commerce. 

119 Paragraphs 2 and 7 of Section 19 of the German Trade Marks Act. 
120 Cf. e.g. Judgment of the Court of 16 June 1998, C-53/96, Hermès International v FHT Marketing Choice BV, 
EU:C:1998:292, para. 28; C-275/06, Promusicae, para. 60. 

27 

 
 
 
 
                                                            
6.  Cross-border dimension 

IPRED  does  not  aim  to establish  harmonised  rules  for  judicial  cooperation,  jurisdiction,  or 
the recognition and enforcement of decisions in civil and commercial matters, nor does it aim 
to deal with applicable law. There are other EU legal instruments which govern such matters 
in  general  terms  and  which  are,  in  principle,  equally  applicable  to intellectual  property  and 
IPR-related litigation121. 

As regards these other EU legal instruments, in civil and commercial matters, the jurisdiction 
of  the  courts  of  the  Member  States  is  to  be  determined  in  accordance  with  the  Brussels  I 
Regulation122.  That  Regulation  governs  the  recognition  and  enforcement  of  the  decisions  of 
such  courts  throughout  the  EU.  Rules  on  the  applicable  law  in  respect  of  non-contractual 
obligations,  which  are  often  at  issue  in  IPR  enforcement  proceedings,  are  provided  by  the 
Rome II Regulation123. 

Competent courts, in particular for injunctions 

Many  IPR-related  disputes  have  a  transnational  dimension.  Consequently,  litigation  on  IPR 
infringements,  in  particular  those  committed  in  an  online  environment,  can  take  place 
simultaneously  in  several  Member  States.  That  can  be  challenging  for  rightholders, 
particularly  in  respect  of  determining  the  competent  national  court  and  the  scope  of  any 
injunctions sought. 

It  is  noteworthy  that  the  Brussels  I  Regulation  contains  several  clarifications  on 
the jurisdiction  of  courts  to  issue  provisional  measures  in  cross-border  cases.  Recital  25  of 
the Regulation  specifically  includes  a  reference  to  IPRED,  clarifying  that  the  notion  of 
'provisional,  including  protective,  measures'  within  the  meaning  of,  inter  alia,  Article  35  of 
the  Regulation124  include,  for  example,  protective  orders  aimed  at  obtaining  information  or 
preserving evidence as referred to in Articles 6 and 7 of IPRED. 

Under  the  Brussels  I  Regulation,  rightholders  are  as  a  general  rule  to  sue  the  alleged  IPR 
infringers before the court of the Member State of the alleged infringers' domicile (Article 4). 
However, in matters relating to tort, delict or quasi-delict, they can also do so before the court 
of the Member State of the place where the harmful occurred or may occur (Article 7(2)). 

In addition, the Brussels I Regulation also provides for a possibility to sue an alleged infringer 
who is one of a number of defendants in the court of the Member State where any one of them 
is domiciled, provided that the claims are so closely connected that it is expedient to hear and 
determine  them  together  to  avoid  irreconcilable  judgments  resulting  from  separate 
proceedings  (Article  8(1)).  The  CJEU  has  clarified125,  in  the  context  of  a  copyright 
infringement  case,  that  the  application  of  this  provision  is  not  precluded  solely  because 
actions  against  several  defendants  for  substantially  identical  copyright  infringements  are 
brought on national legal grounds which vary according to the Member States concerned. 

121 Recital 11 IPRED. 
122  Regulation  (EU)  No  1215/2012  of  the  European  Parliament  and  of  the  Council  of  12  December  2012 
on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast), OJ L 
351, 20.12.2012, p. 1. 
123  Regulation  (EC)  No  864/2007  of  the  European  Parliament  and  of  the  Council  of  11  July  2007  on  the  law 
applicable to non-contractual obligations, OJ L 199, 31.7.2007, p. 40–49.  
124 Article 35 of the Brussels I Regulation reads as follows: "Application may be made to the courts of a Member 
State for such provisional, including protective, measures as may be available under the law of that Member 
State, even if the courts of another Member State have jurisdiction as to the substance of the matter." 
125 Order of the Court (Third Chamber) of 7 March 2013, Case C-145/10 REC., Eva-Maria Painer v Standard 
VerlagsGmbH and Others, ECLI:EU:C:2013:138, p. 72-84. 

28 

 
 
 
                                                            
Recognition and enforcement of judgments  

In accordance with the Brussels I Regulation (Article 39), any decision taken by a court of a 
Member  State  which  is  enforceable  in  that  Member  State  is  directly  enforceable  in  other 
Member States as well, without any declaration of enforceability being required (i.e. abolition 
of exequatur).  

The CJEU has held that the concept of ‘civil and commercial matters’ within the meaning of 
Article  1  of  the  Brussels  I  Regulation  must  be  interpreted  as  meaning  that  this  Regulation 
applies to the recognition and enforcement of a decision of a national court that contains an 
order  to  pay  a  fine  in  order  to  ensure  compliance  with  a  judgment  given  in  a  civil  and 
commercial matter126. 

Issues  relating  to  jurisdiction  of  courts,  the  recognition  and  enforcement  of  court  decisions 
and  applicable  law  arising  in  the  context  of  IPR-related  litigation  are  to  be  decided  in 
accordance with the EU legal instruments regulating these matters, in particular the Brussels I 
and Rome II Regulations. 

The  Brussels  I  Regulation,  in  particular,  contains  certain  clarifications  concerning  the 
jurisdiction of courts with respect to the application of provisional measures based on Articles 
6 and 7 of IPRED in cross-border cases, as well as specific rules on the possibility to sue a 
person who is one of a number of defendants. 

VI.  NEXT STEPS 

The  Commission  will  continue  to  work  closely  with  all  EU  Member  States,  competent 
judicial authorities and other parties involved in the enforcement of IPR in proceedings before 
those authorities to ensure that the EU legal framework, and particularly IPRED, remains fit 
for purpose and to build on the guidance outlined in the present document.  

As  announced  in  the  Communication  ‘A  balanced  IP  enforcement  system  responding  to 
today's  societal  challenges’,  in  addition  to  the  guidance  and  best  practices  set  out  above, 
the Commission will, in particular: 

-  will  work  with  Member  States'  national  experts  and  judges  on  further,  more  targeted 
guidelines, to give more detailed and practical guidance on specific IPRED issues, based on 
best practices experience;  

- will bring the above-mentioned guidelines and best practices online, inter alia via the Your 
Europe portal. 

126 C-406/09 Realchemie. 

29 

 
 
 
 
                                                            
Appendix – List of relevant CJEU judgments 

1.  Judgment of the Court of 16 June 1998, C-53/96, Hermès International v FHT Marketing 
Choice BV, EU:C:1998:292, 61996CJ0053 
2.  Judgment of the Court (Grand Chamber) of 29 January 2008, C-275/06, Productores de 
Música de España (Promusicae) v Telefónica de España SAU, EU:C:2008:54, 62006CA0275 
/ 62006CJ0275  
3.  Judgment  of  the  Court  (Third  Chamber)  of  14  February  2008,  C-450/06,  Varec  SA 
v Belgian State, EU:C:2008:91, 62006CA0450 
4.  Order of the Court (Eighth Chamber) of 19 February 2009, C-557/07, LSG-Gesellschaft 
zur  Wahrnehmung  von  Leistungsschutzrechten  GmbH  v  Tele2  Telecommunication  GmbH, 
EU:C:2009:107, 62007CB0557  
5.  Judgment  of  the  Court  (Grand  Chamber)  of  12  July  2011,  C-324/09,  L’Oréal  SA  and 
Others v eBay International AG and Others, EU:C:2011:474, 62009CJ0324  
6.  Judgment  of  the  Court  (Grand  Chamber)  of  18  October  2011,  C-406/09,  Realchemie 
Nederland BV v Bayer CropScience AG., EU:C:2011:668, 62009CJ0406 
7.  Judgment  of  the  Court  (Third  Chamber)  of  24  November  2011,  C-70/10,  Scarlet 
Extended  SA  v  Société  belge  des  auteurs,  compositeurs  et  éditeurs  SCRL  (SABAM), 
EU:C:2011:771, 62010CJ0070  
8.  Judgment  of  the  Court  (Third  Chamber),  16  February  2012,  C-360/10,  Belgische 
Vereniging  van  Auteurs,  Componisten  en  Uitgevers  CVBA  (SABAM)  v  Netlog  NV, 
EU:C:2012:85, 62010CJ0360  
9.  Judgment of the Court (Third Chamber) of 19 April 2012, C-461/10, Bonnier Audio AB 
and Others v Perfect Communication Sweden AB, EU:C:2012:219, 62010CJ0461  
10.  Judgment  of  the  Court  (Third  Chamber)  of  15  November  2012,  C-180/11,  Bericap 
Záródástechnikai Bt. v Plastinnova 2000 Kft., EU:C:2012:717, 62011CJ0180.  
11.  Order of the Court (Third Chamber) of 7 March 2013, Case C-145/10 REC., Eva-Maria 
Painer v Standard VerlagsGmbH and Others, ECLI:EU:C:2013:138, 62010CO0145. 
12.  Judgment  of  the  Court  (Fourth  Chamber),  27  March  2014,  C-314/12,  UPC  Telekabel 
Wien GmbH v Constantin Film Verleih GmbH and Wega Filmproduktionsgesellschaft mbH, 
EU:C:2014:192, 62012CJ0314  
13.  Judgment of the Court (Fourth Chamber), 10 April 2014,  C-435/12, ACI Adam BV and 
Others  v  Stichting  de  Thuiskopie  and  Stichting  Onderhandelingen  Thuiskopie  vergoeding, 
EU:C:2014:254, 62012CJ0435  
14.  Judgment of the Court (Grand Chamber), 3 September 2014, C-201/13, Johan Deckmyn 
and Vrijheidsfonds VZW v Helena Vandersteen and Others, EU:C:2014:2132, 62013CA0201 
15.  Judgment  of  the  Court  (Fourth  Chamber)  of  16  July  2015,  C-580/13,  Coty  Germany 
GmbH v Stadtsparkasse Magdeburg, EU:C:2015:485, 62013CJ0580  
16.  Judgment of the Court (First Chamber) of 16 July 2015, C-681/13, Diageo Brands BV v 
Simiramida-04 EOOD, EU:C:2015:471, 62013CJ0681 
17.  Judgment  of  the  Court  (Seventh  Chamber)  of  4  February  2016,  C-163/15,  Youssef 
Hassan v Breiding Vertriebsgesellschaft mbH, EU:C:2016:71 
18.  Judgment of the Court (Fifth Chamber) of 17 March 2016,  C-99/15, Christian Liffers v 
Producciones  Mandarina  SL  and  Mediaset  España  Comunicación  SA,  anciennement 
Gestevisión Telecinco SA, EU:C:2016:173, 62015CJ0099  
19.  Judgment of the Court (Seventh Chamber) of 22 June 2016, C-419/15, Thomas Philipps 
GmbH & Co. KG v Grüne Welle Vertriebs GmbH EU:C:2016:468 

30 

 
 
 
20.  Judgment  of  the  Court  (Second  Chamber)  of  7  July  2016,  C-494/15,  Tommy  Hilfiger 
Licensing LLC and Others v DELTA CENTER a.s., EU:C:2016:528, 62015CJ0494  
21.  Judgment  of  the  Court  (Fifth  Chamber)  of  28  July  2016,  C-57/15,  United  Video 
Properties Inc. v Telenet NV, EU:C:2016:611, 62015CJ0057 
22.  Judgment  of  the  Court  (Third  Chamber)  of  15  September  2016,  C-484/14,  Tobias  Mc 
Fadden v Sony Music Entertainment Germany GmbH, EU:C:2016:689 
23.  Judgment of the Court (Ninth Chamber) of 18 January 2017, C-427/15, NEW WAVE CZ, 
a.s. v ALLTOYS, spol. s r. o., EU:C:2017:18 
24.  Judgment  of  the  Court  (Fifth  Chamber)  of  25  January  2017,  C-367/15,  Stowarzyszenie 
“Oławska  Telewizja  Kablowa”  w  Oławie  v  Stowarzyszenie  Filmowców  Polskich 
w Warszawie, EU:C:2017:36, 62015CN0367  

Pending: 
C-644/16  Synthon  –  Request  for  a  preliminary  ruling  from  the  Hoge  Raad  der  Nederlanden 
(Netherlands)  lodged  on  15  December  2016,  Synthon  BV  v  Astellas  Pharma  Inc.  (Article  6 
of IPRED) 
C-149/17  Bastei  Lübbe  –  Request  for  a  preliminary  ruling  from  Landgericht  München  I 
(Germany)  lodged  on  24  March  2017,  Bastei  Lübbe  GmbH  &  Co.  KG  v  Michael  Strotzer 
(Article 3(2) of IPRED) 
C-521/17  SNB-REACT  –  Request  for  a  preliminary  ruling  from  Tallinna  Ringkonnakohus 
(Estonia) lodged on 1 September 2017 

31