• Judgment of 13 February 2014, C-479/12, Gautzsch Großhandel GmbH & Co. KG v. Münchener Boulevard Möbel Joseph Duna GmbH

The parties to the main proceedings trade in garden furniture. MBM Joseph Duna’s product range includes a canopied gazebo, marketed in Germany, the design for which was created by the manager of MBM Joseph Duna in the autumn of 2004. For its part, Gautzsch Großhandel began marketing a gazebo called ‘Athen’ (‘the “Athen” gazebo’) manufactured by Zhengte, an undertaking established in China, in 2006. MBM Joseph Duna brought an action for infringement against Gautzsch Großhandel before the Landgericht Düsseldorf (Regional Court, Düsseldorf) (Germany), claiming the protection afforded to unregistered Community designs for its design and seeking the following orders against that company: that it cease to use that gazebo; that it surrender, for purposes of destruction, the infringing products currently in its possession or ownership; that it disclose information relating to its activities; and that it be required to pay compensation for the damage resulting from those activities. In support of its action, MBM Joseph Duna claimed, inter alia, that the ‘Athen’ gazebo was a copy of its own design, which, in April and May 2005, appeared in its ‘MBM-Neuheitenblätter’ (new products leaflets), which had been distributed to the sector’s largest furniture and garden furniture retailers and to German furniture-purchasing associations. Gautzsch Großhandel opposed the action, contending that the ‘Athen’ gazebo had been independently created by Zhengte, which was unaware of MBM Joseph Duna’s design, at the beginning of 2005. It stated that its gazebo had been presented to European customers in March 2005 in Zhengte’s showrooms in China and that a model had been sent to Kosmos, a company established in Belgium, in June 2005. In its defence, Gautzsch Großhandel contended that MBM Joseph Duna’s rights had been extinguished over time (‘extinction of rights over time’) and that the right to bring an action was time-barred (‘time-barring’), maintaining that MBM Joseph Duna had been aware of the ‘Athen’ gazebo’s existence since September 2005 and that it had known that it was being marketed since August 2006. The Landgericht Düsseldorf found that, in view of the expiry of the three-year protection period for unregistered Community designs, there was no need to give a ruling on the first two heads of claim, asking for Gautzsch Großhandel to cease its use of the ‘Athen’ gazebo and to surrender the infringing products. Ruling on the other heads of claim, it ordered Gautzsch Großhandel to disclose information relating to its activities and found that it was obliged to pay financial compensation for the damage resulting from those activities. The appeal brought by Gautzsch Großhandel against that judgment was dismissed by the appeal court, which held that the first two heads of claim were, in the light of Articles 19(2) and 89(1)(a) and (d) of Regulation No 6/2002 and the German legislation on the legal protection of designs, well founded originally and that MBM Joseph Duna was indeed entitled to obtain both the information sought and compensation for the damage it had suffered. In the context of the appeal on a point of law brought by Gautzsch Großhandel before the Bundesgerichtshof (Federal Court of Justice) (‘the referring court’), that court seeks to ascertain, in view of the facts before it, the scope of the concept of ‘disclosure’ which appears in, inter alia, Articles 7(1) and 11(2) of Regulation No 6/2002 for the purposes of determining whether the unregistered design for which protection is claimed was made available to the public for the purpose of that regulation and whether the design on which the opposition is based was made available to the public at an earlier date. In addition, the referring court is uncertain whether proof of infringement of the unregistered design and the defences of the extinction of rights over time and that the action was time-barred that may be raised against the action for infringement are governed by EU law or whether they are a matter for national law. It is also uncertain whether the law applicable to claims for destruction of infringing products, disclosure of information relating to the activities of the infringing party and compensation for the damage resulting from those activities is its own national law or the law of the Member State in which the acts of infringement were committed.

First, the referring court asks if Article 11(2) of Regulation No 6/2002 shall be interpreted as meaning that, in the normal course of business, a design could reasonably have become known to the circles specialised in the sector concerned, operating within the European Union, if images of the design were distributed to traders.

Second, the referring court asks if the first sentence of Article 7(1) of Regulation No 6/2002 shall be interpreted as meaning that a design could 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 is made available to only one undertaking in the specialised circles, or it is exhibited in a showroom of an undertaking in China which lies outside the scope of normal market analysis.

Also, the referring court asks if Article 19(2) of Regulation No 6/2002 shall be interpreted as meaning that the holder of an unregistered Community design bears the burden of proving that the contested use results from copying the protected design. In the affirmative, it is asked if the burden of proof is reversed or if the burden of proof incumbe on the holder of the unregistered Community design lightened if there are material similarities between the design and the contested use.

The fourth question asked by the referring court consists in determining if the right to obtain an injunction prohibiting further infringement of an unregistered Community design, provided for in Article 19(2) and Article 89(1)(a) of Regulation No 6/2002, extinguished over time or not. In the affirmative, it is asked if such extinction is governed by European Union law and. The fifth question asked by the referring court is to determine if the right to bring an action seeking an injunction prohibiting further infringement of an unregistered Community design, provided for in Article 19(2) and Article 89(1)(a) of Regulation No 6/2002, is subject to time-barring, and if so, to fix the European Union law governing this situation.

Lastly, the referring court asks if article 89(1)(d) of Regulation No 6/2002 shall be interpreted as meaning that claims for destruction, disclosure of information and damages by reason of infringement of an unregistered Community design which are pursued in relation to the entirety of the European Union are subject to the law of the Member States in which the acts of infringement are committed.

The court concluded that, on a proper construction of Article 11(2) of Council Regulation (EC), No 6/2002 of 12 December 2001 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. The court ruled that on a proper construction of the first sentence of Article 7(1) of Regulation No 6/2002, 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. Furthermore, the court concluded that, on a proper construction of the first subparagraph of Article 19(2) of Regulation No 6/2002, 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. The same court has also considered that 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 are governed by national law, which must be applied in a manner that observes the principles of equivalence and effectiveness. Lastly, the court ruled that, on a proper construction of Article 89(1)(d) of Regulation No 6/2002, 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 that regulation, by the national law of the Community design court hearing the proceedings, including its private international law.

• Judgment of 21 September 2017, Joined Cases C-362/15 P and C-405/15 P, Easy Sanitary Solutions BV and EUIPO v Group Nivelles NV (Appeals)

In 2004 Easy Sanitary solutions filed an application for registration of a community design with EUIPO under Regulation 6/2002. The design was related to a shower drain. In 2009, I-Drain the predecessor of Group Nivelles NV filled an application for invalidity of the contested design. In support of that application, I-Drain relied on the ground of invalidity set out in Article 25(1)(b) of the regulation, namely that the design did not fulfil the requirements of Articles 4 to 9 of that regulation. Those requirements include, inter alia, the novelty (within the meaning of Article 5 of that regulation) and individual character (within the meaning of Article 6 of the same regulation) of the design concerned, as assessed at the date on which it was made available to the public, determined in accordance with Article 7 of the same regulation. The Invalidity Division held the design invalid due to lack of novelty, however the Board of Appeal reversed its decision.

Group Nivelles brought an action in front of the General Court for the annulment of the contested decision stating that EUIPO’s Board of Appeal erred when comparing the contested design with earlier designs and that the design lacked novelty. The General Court accepted the action and annulled the contested decision made by the EUIPO Board of Appeals stating that the contested decision was not sufficiently comprehensive.

EUIPO and Easy Sanitary Solutions appealed arguing that, inter alia, the judgment under appeal was not in conjunction with articles 5 and 7 of the Regulation 6/2002 and also that the Court misjudged the law when it held that in the assessment of individual character of the design, within the meaning of Article 6 of the Regulation, the nature of the products relevant to the design had an influence on the likelihood of the relevant informed user knowing the earlier design.

In relation to disclosure and article 7, the Court held that the question of whether there is disclosure to the public is dependent only upon how that disclosure is in fact achieved and not upon the product in which that design is intended to be incorporated or to which it is intended to be applied. The Court continued by explaining that the purpose of the exception in Article 7(1) of that regulation, relating to cases in which certain events, listed in that provision, cannot constitute a disclosure to the public, is to ensure that events that are difficult to verify and that occur in a third country are not capable of constituting such disclosure, and not to make a distinction between various business sectors within the European Union and to exclude the possibility that events that relate to a business sector that cannot reasonably be known to the specialised circles of another sector within the European Union may constitute a disclosure to the public.

(for the designs’ registered images see the link provided hereafter)