22 June 2016 (*1)

‘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’

In Case C‑419/15

REQUEST for a preliminary ruling under Article 267 TFEU from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), made by decision of 21 July 2015, received at the Court on 30 July 2015, in the proceedings

Grüne Welle Vertriebs GmbH,

THE COURT (Seventh Chamber),

composed of C. Toader, President of the Chamber, A. Rosas and E. Jarašiūnas (Rapporteur), Judges,

Advocate General: M. Wathelet,

Registrar: A. Calot Escobar,

having regard to the written procedure,

after considering the observations submitted on behalf of:

—the German Government, by T. Henze, J. Möller and J. Mentgen, acting as Agents,

—the Polish Government, by B. Majczyna, acting as Agent,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

1This request for a preliminary ruling concerns the interpretation of Article 32(3) and the first sentence of Article 33(2) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

2The request has been made in proceedings between Thomas Philipps GmbH & Co. KG and Grüne Welle Vertriebs GmbH concerning an action for damages resulting from the infringement of a Community design, brought by Grüne Welle Vertriebs against Thomas Philipps.

Legal context

3As set out in recital 29 of Regulation No 6/2002:

‘It is essential that the rights conferred by a Community design can be enforced in an efficient manner throughout the territory of the Community.’

4Articles 32 and 33 of Regulation No 6/2002, interpretation of which is sought, and also Articles 28 and 29 of that regulation are in Title III, entitled ‘Community Designs as Objects of Property’.

5Article 28 of the regulation, entitled ‘Transfer of the registered Community design’, provides:

‘The transfer of a registered Community design shall be subject to the following provisions:

(a)at the request of one of the parties, a transfer shall be entered in the register and published;

(b)until such time as the transfer has been entered in the register, the successor in title may not invoke the rights arising from the registration of the Community design;

6Article 29 of Regulation No 6/2002, entitled ‘Rights in rem on a registered Community design’, states:

‘1. A registered Community design may be given as security or be the subject of rights in rem.

Under Article 32 of Regulation No 6/2002, headed ‘Licensing’:

‘1. A Community design may be licensed for the whole or part of the Community. A licence may be exclusive or non-exclusive.

Article 33 of the regulation, entitled ‘Effects vis-à-vis third parties’, provides:

‘1. The effects vis-à-vis third parties of the legal acts referred to in Articles 28, 29, 30 and 32 shall be governed by the law of the Member State determined in accordance with Article 27.

The dispute in the main proceedings and the questions referred for a preliminary ruling

9Grüne Welle Vertriebs is the exclusive licensee for the Federal Republic of Germany for a Community design for laundry balls, registered under number 0008770030-0001 by EMKER SA which has its seat in Switzerland. That licence has not been entered on the register of Community designs (‘the register’).

10Thomas Philipps operates from approximately 200 branches and an on-line shop. It sells, along with other products, a laundry ball under the description ‘washing machine ball with ceramic granules’.

11Taking the view that that product was a copy of the registered Community design for washing balls and that it was empowered by the rightholder of that model to bring all claims arising from the design in its own name, Grüne Welle Vertriebs sent a letter before action to Thomas Philipps demanding that it refrain from selling the laundry balls, which Thomas Philipps undertook so to do.

12The national court, hearing a claim for damages and requests for measures of inquiry by Grüne Welle Vertriebs, held Thomas Philipps liable, finding that the applicant had established that it was entitled to bring the action for damages in its own name. Thomas Phillips appealed that decision and contends before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) that Grüne Welle Vertriebs is not entitled to bring claims arising from the Community design.

13The Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) asks, in the first place, whether Grüne Welle Vertriebs, which acts with the consent of the rightholder in the design, as Article 32(3) of Regulation No 6/2002 prescribes, is entitled to bring proceedings although it is not entered on the register as a licensee. It observes that a purely literal reading of that provision could lead to a negative reply but the specified rule can also be understood as meaning that it merely governs the possibility of good faith acquisition, which the rule set out in Article 33(2), second sentence, of that regulation would tend to support.

The Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) raises, in the second place, the question of the connection between paragraphs 3 and 4 of Article 32 of Regulation No 6/2002. Noting that Grüne Welle Vertriebs seeks compensation for its own loss resulting from loss of revenue, that court observes that that claim can be successful, where there is no action by the rightholder in the Community design, only if Article 32(3) of the regulation allows the licensee to pursue its own claim for damages independently. It is not clear to the national court whether the latter provision allows only the rights of the holder of the Community design to be exercised in a third party claim or whether that article must be interpreted as meaning that the procedure referred to therein also includes proceedings for damages for loss suffered by the licensee. In addition, the national court notes that Article 32(4) of that regulation could also be interpreted as meaning that it is that paragraph alone which governs the power of the licensee to bring proceedings for that purpose.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

(1)Does the first sentence of Article 33(2) of Regulation No 6/2002 preclude a licensee who has not been entered in the register of Community designs from bringing claims for the infringement of a registered Community design?

(2)In the event that the first question is answered in the negative: may the exclusive licensee of a Community design, with the consent of the rightholder, bring an action on its own claiming damages for its own loss under Article 32(3) of Regulation No 6/2002 or can the licensee only intervene in an action brought by the rightholder for an infringement of its Community design under Article 32(4) of that regulation?

Consideration of the questions referred

The first question

By its first question, the referring court asks, in essence, whether the first sentence of Article 33(2) of Regulation No 6/2002 must be interpreted as meaning that the licensee cannot bring proceedings alleging infringement of a registered Community design which is the subject of the licence if that licence has not been entered in the register.

It is apparent from the first sentence of Article 33(2) of Regulation No 6/2002, according to which ‘as regards registered Community designs, legal acts referred to in Articles 28, 29 and 32 shall only have effect vis-à-vis third parties in all the Member States after entry in the register’, that the legal acts thus covered are the transfer of the registered Community design, the creation of rights in rem over that design and the grant of licences. Read in isolation, that sentence could be interpreted as meaning that the licensee cannot, if the licence has not been entered in the register, rely on the rights conferred by that licence vis-à-vis third parties, including the party infringing the design.

However, in interpreting a provision of EU law, it is necessary to consider not only its wording but also the context in which it occurs and the objectives pursued by the rules of which it is part (judgments in Brain Products, C‑219/11, EU:C:2012:742, paragraph 13, and Lanigan, C‑237/15 PPU, EU:C:2015:474, paragraph 35 and the case-law cited).

As regards the context of which the first sentence of Article 33(2) of Regulation No 6/2002 is part, it should be observed, first of all, that the second sentence of that paragraph qualifies the rule set out in that first sentence as regards ‘third parties who have acquired rights’ in the registered Community design after the date of the legal act in question but who knew of the act at the date on which the rights were acquired. Article 33(3) establishes an exception to that rule in the case of a ‘person who acquires the registered Community design or a right concerning the registered Community design’ by way of transfer of the whole of the undertaking or by any other universal succession. Accordingly, 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 (see, by analogy, judgment of 4 February 2016 in Hassan, C‑163/15, EU:C:2016:71, paragraph 20).

Next, the Court notes 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, the Court observes 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 ‘[a]s 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, having regard to what has been established in paragraphs 19 and 20 of the present judgment, 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, by analogy, judgment of 4 February 2016 in Hassan, C‑163/15, EU:C:2016:71, paragraph 25).

In the light of all of the foregoing, the answer to the first question is that the first sentence of Article 33(2) of Regulation No 6/2002 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.

The second question

By its second question, the referring court asks whether, in the event that the first question is answered in the negative, the exclusive licensee of a Community design, with the consent of the rightholder, may bring an action on its own claiming damages for its own loss under Article 32(3) of Regulation No 6/2002 or can the licensee only intervene in an action brought by the rightholder for an infringement of its Community design under Article 32(4) of that regulation?

It is apparent from the wording of Article 32(3) of Regulation No 6/2002 that the licensee may bring an action for infringement of a Community design, provided that the proprietor of that design has given his consent. The question arises as to whether the licensee may also bring an action for damages for its own loss resulting from the infringement of the Community design, in the event that the first question is answered in the negative.

In that regard, it should be noted that the first sentence of Article 32(3) of Regulation No 6/2002 provides that the licensee may bring proceedings for infringement of a Community design, without prejudice to the provisions of the licensing contract. It follows that the licensee’s right to bring proceedings for infringement of a Community design is subject to the provisions of the licensing contract, which may provide for the licensee’s right to claim damages for its own loss resulting from the infringement of the Community design. However, if the licensing contract does not provide for such a right, the licensee cannot bring an action for damages for its own loss.

In the light of the foregoing, the answer to the second question is that the exclusive licensee of a Community design, with the consent of the rightholder, may bring an action on its own claiming damages for its own loss under Article 32(3) of Regulation No 6/2002, provided that the licensing contract does not preclude such a claim.