H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH.
Date: 2014-02-13
40. However, as the Advocate General notes in points 67 to 74 of his Opinion, making reference to trade mark law, if the issue of the onus of proving that the contested use results from copying the protected design were a matter for the national law of the Member States, the consequence for holders of Community designs could be that protection would vary according to the legal system concerned, with the result that the objective of providing uniform protection with uniform effect throughout the entire territory of the European Union, as set out in recital 1 of Regulation No 6/2002 in particular, would not be attained (see, by analogy, Case C‑405/03 Class International  [2005] ECR I‑8735, paragraph 73).
42. As Regulation No 6/2002 does not provide any express rules on producing evidence, it follows from Article 88 of that regulation that such rules are to be determined according to the national law of the Member States. However, according to case-law, the Member States must, in accordance with the principles of equivalence and effectiveness, ensure that such rules are not less favourable than those applicable to similar domestic actions and that they do not make it in practice impossible or excessively difficult for individuals to exercise rights conferred by EU law (see, to that effect, Case C‑55/06 Arcor  [2008] ECR I‑2931, paragraph 191).
43. Therefore, as the Commission points out, if the Community design court finds that the fact of requiring the holder of the protected design 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 (see, by analogy, Case C‑526/04 Laboratoires Boiron  [2006] ECR I‑7529, paragraph 55, and Case C‑264/08 Direct Parcel Distribution Belgium  [2010] ECR I‑731, paragraph 35). Thus, that court may, where appropriate, apply rules of national law which provide for the burden of proof to be adjusted or lightened.
48. The term ‘special reasons’, as used in Article 89(1) of that regulation, relates to factual circumstances specific to a given case (see, by analogy, Case C‑316/05 Nokia  [2006] ECR I‑12083, paragraph 38). Consequently, it does not cover the extinction of rights over time or an action being time-barred, both of which constitute legal circumstances.
49. Accordingly, pursuant to Article 88(2) of Regulation No 6/2002, 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 that regulation are governed by national law, which must be applied in a manner that observes the principles of equivalence and effectiveness, the substance of which is set out in paragraph 42 above (see also, by analogy, Joined Cases C‑295/04 to C‑298/04 Manfredi and Others  [2006] ECR I‑6619, paragraphs 77 to 80; Case C‑406/08 Uniplex (UK)  [2010] ECR I‑817, paragraphs 32 and 40; Case C‑246/09 Bulicke  [2010] ECR I‑7003, paragraph 25; Case C‑177/10 Rosado Santana  [2011] ECR I‑7907, paragraphs 89, 90, 92 and 93; and Case C‑591/10 Littlewoods Retail and Others  [2012] ECR, paragraph 27).
52. First, regarding the claim for destruction of the infringing products, it is clear from Article 89(1) of Regulation No 6/2002, which refers, in subparagraph (a) thereof, to an order prohibiting the defendant from proceeding with the acts which have infringed or would infringe the Community design and, in subparagraphs (b) and (c), to an order to seize the infringing products and to an order to seize materials and implements used in order to manufacture those products, that the destruction of those products falls within the ‘other sanctions appropriate under the circumstances’ referred to in Article 89(1)(d) of that regulation. It follows that, under Article 89(1)(d) of Regulation No 6/2002, the law applicable to that claim is the law of the Member State in which the acts of infringement or threatened infringement have been committed, including its private international law.
53. Secondly, regarding the claims for compensation for the 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, it must be found that the obligation to provide such information and to pay compensation for the damage suffered does not, by contrast, constitute a sanction within the meaning of Article 89 of Regulation No 6/2002.
54. Accordingly, pursuant to Article 88(2) of Regulation No 6/2002, the law applicable to the claims listed in paragraph 53 above is the national law of the Community design court hearing the proceedings, including its private international law. That finding is borne out, moreover, by recital 31 of that regulation, which states that the regulation does not preclude the application to designs protected by Community designs of the laws of the Member States relating to civil liability.