Source: EURLEX
Language: en
Format: md

Case C‑419/15

Thomas Philipps GmbH & Co. KG

v

Grüne Welle Vertriebs GmbH

(Request for a preliminary ruling from the Oberlandesgericht Düsseldorf)

‛Reference for a preliminary ruling — Intellectual property — Community designs — Regulation (EC) No 6/2002 — Articles 32 and 33 — Licence — Register of Community designs — Right of the licensee to bring proceedings for infringement notwithstanding the fact that the licence has not been entered in the register — Right of the licensee to bring proceedings for infringement in order to obtain damages for its own loss’

Summary — Judgment of the Court (Seventh Chamber), 22 June 2016

1. EU law — Interpretation — Methods — Literal, systematic and teleological interpretation
2. Community designs — Community designs as objects of property — Effects vis-à-vis third parties — Right of the licensee to bring proceedings for infringement notwithstanding the fact that the licence has not been entered in the register of Community Designs

   (Council Regulation No 6/2002, Arts 28, 29, 32, 33(2) and (3))
3. Community designs — Community designs as objects of property — Licences — Right of the licensee to claim damages for its own loss in infringement proceedings brought by it

   (Council Regulation No 6/2002, Recital 29 and Art. 32(3) and (4))

1. See the text of the decision.

   (see para. 18)
2. The first sentence of Article 33(2) of Council Regulation No 6/2002 on Community designs must be interpreted as meaning that the licensee may bring proceedings alleging infringement of a registered Community design which is the subject of the licence although that licence has not been entered in the register of Community designs.

   An interpretation of Article 33(2) and (3) of Regulation No 6/2002 which is both literal and schematic gives support to the idea that it, as a whole, is intended to govern the enforceability of the legal acts referred to in Articles 28, 29 and 32 of the regulation in respect of third parties who have, or are likely to have, rights in the registered Community design.

   Next, it should be noted that Title III of Regulation No 6/2002, which includes Article 33, is entitled ‘Community Designs as objects of property’. Accordingly, all of the articles in that section contain rules relating to the Community designs as objects of property. This is the case with regard to Articles 28, 29 and 32 of the regulation which relate to acts the purpose or effect of which is to create or transfer a right in respect of the design.

   Finally, it should be noted that, in the first sentence of Article 32(3) of Regulation No 6/2002, the licensee’s right to bring proceedings for infringement of a Community design, without prejudice to the provisions of the licensing contract, is subject only to the consent of the proprietor of that design.

   It must also be stated that, according to Article 32(5) of Regulation No 6/2002, the licence is entered in the register on request of one of the parties. However, that article, like Article 29 of the regulation, does not contain any provision analogous to that of Article 28(b) of the regulation, under which ‘as long as the transfer has not been entered in the register, the successor in title may not invoke the rights arising from the registration of the Community design’.

   Moreover, Article 28(b) of Regulation No 6/2002 would serve no useful purpose if Article 33(2) of that regulation had to be interpreted as precluding reliance, vis-à-vis all third parties, on all of the legal acts referred to in Articles 28, 29 and 32 of the regulation unless they have been entered in the register.

   With regard to the purpose of the rule laid down in the first sentence of Article 33(2) of Regulation No 6/2002, it must be held that the lack of effects, vis-à-vis third parties, of the legal acts referred to in Articles 28, 29 and 32 of that regulation which have not been entered in the register is intended to protect a person who has, or may have, rights in a Community design as an object of property. It follows that the first sentence of Article 33(2) does not apply to a situation such as that in the main proceedings, in which the licence holder complains that a third party, by infringing the design, infringes the rights conferred by the registered Community design.

   (see paras 19-25, operative part 1)
3. Article 32(3) of Council Regulation No 6/2002 on Community designs must be interpreted as meaning that the licensee can claim damages for its own loss in proceedings for infringement of a Community design brought by it in accordance with that provision.

   Article 32(3) and (4) of Regulation No 6/2002 which establish a system of legal remedies open to the licence holder of a Community design against the infringer of that Community design, must be read together. Those provisions allow the licensee to bring proceedings either by way of an action, by bringing infringement proceedings with the consent of the design holder or, in the case of an exclusive licence, if having been given notice the rightholder does not itself bring infringement proceedings within an appropriate period, or by way of intervention in infringement proceedings brought by the rightholder in a Community design. The latter route is the only one available to the holder of a non-exclusive licence who does not obtain the consent of the rightholder of the design to act alone.

   Whilst the licensee may seek damages for the loss it has incurred by intervening in the infringement proceedings brought by the rightholder of the Community design, nothing prevents it from also doing so where it brings the infringement proceedings itself with the consent of the rightholder of the design, or, if it is the holder of an exclusive licence, without that consent in the case of inaction by that rightholder after having given it notice to bring proceedings.

   The system of legal remedies open to the licence holder would, moreover, lack coherence if the licensee could defend its own interests only by joining an action brought by the rightholder of the Community design when he may act alone by way of an action with the consent of that rightholder, or without its consent in the case of an exclusive licence, to defend their common interests.

   Furthermore, the possibility for the licensee to seek, in the proceedings laid down in Article 32(3) of Regulation No 6/2002, compensation for damage suffered by it is consistent with the objective set out in recital 29 of that regulation, consisting of ensuring that the rights conferred by a Community design can be enforced in an efficient manner throughout the territory of the European Union and also with the purpose of that provision and of Article 32(4) of that regulation, which is to give to the licensee the procedural means to bring proceedings in respect of the infringement and thus to defend those rights which have been conferred on it. To prohibit it from acting for that purpose in those proceedings would make it totally dependent, including in the case of an exclusive licence, on the rightholder of the design to obtain compensation for damage suffered by it and, should that right holder not bring proceedings, would, therefore, be detrimental to the exercise of those rights. Therefore, such a prohibition is contrary both to the objective of Regulation No 6/2006 and to the purpose of Article 32(3) and (4) of that regulation.

   (see paras 28-32, operative part 2)

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