29.3.2014

Official Journal of the European Union

C 93/12

(Case C-479/12) (<span class="super">1</span>)

(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)

2014/C 93/19

Language of the case: German

Referring court

Parties to the main proceedings

Appellant: H. Gautzsch Großhandel GmbH & Co. KG

Respondent: Münchener Boulevard Möbel Joseph Duna GmbH

Re:

Request for a preliminary ruling — Bundesgerichtshof — Interpretation of the first sentence of Article 7(1), Article 11(2), Article 19(2) and Article 89(1)(a) and (d) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) — ‘Making available to the public’ — Burden of proving that contested use results from copying the unregistered design — Design presented in showrooms lying beyond the usual field of observation of the profession and then made available to an undertaking in those specialised circles without any conditions of confidentiality — Whether the right to obtain an injunction prohibiting any use by a third party has been extinguished over time — Time-barring — Determining the law applicable to disputes concerning infringement and invalidity of Community designs.

Operative part of the judgment

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;

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;

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 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;

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.

(<span class="super">1</span>) OJ C 32, 2.2.2013.

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