Source: EURLEX
Language: en
Format: md

Case C‑479/12

H. Gautzsch Großhandel GmbH & Co. KG

v

Münchener Boulevard Möbel Joseph Duna GmbH

(Request for a preliminary ruling from the Bundesgerichtshof)

‛Reference for a preliminary ruling — Intellectual property — Community designs — Regulation (EC) No 6/2002 — Articles 7(1), 11(2), 19(2), 88 and 89(1)(a) and (d) — Unregistered Community design — Protection — Making available to the public — Novelty — Action for infringement — Burden of proof — Extinction of rights over time — Time-barring — Applicable law’

Summary — Judgment of the Court (Third Chamber), 13 February 2014

1. Community designs — Unregistered Community designs — Disclosure — Concept — Distribution to traders operating in the sector

   (Council Regulation No 6/2002, Art. 11(2))
2. Community designs — Unregistered Community designs — Disclosure — Concept — Disclosure to only one undertaking in the sector or presentation only in the showrooms of an undertaking outside the European Union

   (Council Regulation No 6/2002, Art. 7(1), first sentence)
3. Community designs — Unregistered Community designs — Use, without the holder’s consent, resulting from copying the protected design — Burden of proof

   (Council Regulation No 6/2002, Art. 19(2), first subpara)
4. Community designs — Unregistered Community designs — Use, without the holder’s consent, resulting from copying the protected design — Action for infringement — Extinction of rights over time and time-barring — Applicable law

   (Council Regulation No 6/2002, Arts 19(2) and 89(1)(a))
5. Community designs — Action for infringement — Penalties — Applicable law

   (Council Regulation No 6/2002, Arts 88(2) and 89(1)(d))

1. On a proper construction of Article 11(2) of Regulation No 6/2002 on Community designs, it is possible that an unregistered design may reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union, if images of the design were distributed to traders operating in that sector, which it is for the Community design court to assess, having regard to the circumstances of the case before it.

   (see para. 30, operative part 1)
2. On a proper construction of the first sentence of Article 7(1) of Regulation No 6/2002 on Community designs, it is possible that an unregistered design may not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union, even though it was disclosed to third parties without any explicit or implicit conditions of confidentiality, if it has been made available to only one undertaking in that sector or has been presented only in the showrooms of an undertaking outside the European Union, which it is for the Community design court to assess, having regard to the circumstances of the case before it.

   (see para. 36, operative part 2)
3. On a proper construction of the first subparagraph of Article 19(2) of Regulation No 6/2002 on Community designs, the holder of the protected design must bear the burden of proving that the contested use results from copying that design. However, if a Community design court finds that the fact of requiring that holder to prove that the contested use results from copying that design is likely to make it impossible or excessively difficult for such evidence to be produced, that court is required, in order to ensure observance of the principle of effectiveness, to use all procedures available to it under national law to counter that difficulty, including, where appropriate, rules of national law which provide for the burden of proof to be adjusted or lightened.

   (see para. 44, operative part 3)
4. The defences of the extinction of rights over time and of an action being time-barred that may be raised against an action brought on the basis of Articles 19(2) and 89(1)(a) of Regulation No 6/2002 on Community designs are governed by national law, which must be applied in a manner that observes the principles of equivalence and effectiveness.

   (see para. 50, operative part 4)
5. On a proper construction of Article 89(1)(d) of Regulation No 6/2002 on Community designs, claims for the destruction of infringing products are governed by the law of the Member State in which the acts of infringement or threatened infringement have been committed, including its private international law. Claims for compensation for damage resulting from the activities of the person responsible for the acts of infringement or threatened infringement and for disclosure, in order to determine the extent of that damage, of information relating to those activities, are governed, pursuant to Article 88(2) of Regulation No 6/2002, by the national law of the Community design court hearing the proceedings, including its private international law.

   (see para. 55, operative part 5)

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Case C‑479/12

H. Gautzsch Großhandel GmbH & Co. KG

v

Münchener Boulevard Möbel Joseph Duna GmbH

(Request for a preliminary ruling from the Bundesgerichtshof)

‛Reference for a preliminary ruling — Intellectual property — Community designs — Regulation (EC) No 6/2002 — Articles 7(1), 11(2), 19(2), 88 and 89(1)(a) and (d) — Unregistered Community design — Protection — Making available to the public — Novelty — Action for infringement — Burden of proof — Extinction of rights over time — Time-barring — Applicable law’

Summary — Judgment of the Court (Third Chamber), 13 February 2014

1. Community designs — Unregistered Community designs — Disclosure — Concept — Distribution to traders operating in the sector

   (Council Regulation No 6/2002, Art. 11(2))
2. Community designs — Unregistered Community designs — Disclosure — Concept — Disclosure to only one undertaking in the sector or presentation only in the showrooms of an undertaking outside the European Union

   (Council Regulation No 6/2002, Art. 7(1), first sentence)
3. Community designs — Unregistered Community designs — Use, without the holder’s consent, resulting from copying the protected design — Burden of proof

   (Council Regulation No 6/2002, Art. 19(2), first subpara)
4. Community designs — Unregistered Community designs — Use, without the holder’s consent, resulting from copying the protected design — Action for infringement — Extinction of rights over time and time-barring — Applicable law

   (Council Regulation No 6/2002, Arts 19(2) and 89(1)(a))
5. Community designs — Action for infringement — Penalties — Applicable law

   (Council Regulation No 6/2002, Arts 88(2) and 89(1)(d))

1. On a proper construction of Article 11(2) of Regulation No 6/2002 on Community designs, it is possible that an unregistered design may reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union, if images of the design were distributed to traders operating in that sector, which it is for the Community design court to assess, having regard to the circumstances of the case before it.

   (see para. 30, operative part 1)
2. On a proper construction of the first sentence of Article 7(1) of Regulation No 6/2002 on Community designs, it is possible that an unregistered design may not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union, even though it was disclosed to third parties without any explicit or implicit conditions of confidentiality, if it has been made available to only one undertaking in that sector or has been presented only in the showrooms of an undertaking outside the European Union, which it is for the Community design court to assess, having regard to the circumstances of the case before it.

   (see para. 36, operative part 2)
3. On a proper construction of the first subparagraph of Article 19(2) of Regulation No 6/2002 on Community designs, the holder of the protected design must bear the burden of proving that the contested use results from copying that design. However, if a Community design court finds that the fact of requiring that holder to prove that the contested use results from copying that design is likely to make it impossible or excessively difficult for such evidence to be produced, that court is required, in order to ensure observance of the principle of effectiveness, to use all procedures available to it under national law to counter that difficulty, including, where appropriate, rules of national law which provide for the burden of proof to be adjusted or lightened.

   (see para. 44, operative part 3)
4. The defences of the extinction of rights over time and of an action being time-barred that may be raised against an action brought on the basis of Articles 19(2) and 89(1)(a) of Regulation No 6/2002 on Community designs are governed by national law, which must be applied in a manner that observes the principles of equivalence and effectiveness.

   (see para. 50, operative part 4)
5. On a proper construction of Article 89(1)(d) of Regulation No 6/2002 on Community designs, claims for the destruction of infringing products are governed by the law of the Member State in which the acts of infringement or threatened infringement have been committed, including its private international law. Claims for compensation for damage resulting from the activities of the person responsible for the acts of infringement or threatened infringement and for disclosure, in order to determine the extent of that damage, of information relating to those activities, are governed, pursuant to Article 88(2) of Regulation No 6/2002, by the national law of the Community design court hearing the proceedings, including its private international law.

   (see para. 55, operative part 5)

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