Opinion of Advocate General Rantos delivered on 17 November 2022.

• Jurisdiction: European Union
• Celex Number: 62021CC0628
• ECLI: ECLI:EU:C:2022:905
• Date: 17 November 2022
• Court: Court of Justice (European Union)

Provisional text

OPINION OF ADVOCATE GENERAL

RANTOS

delivered on 17 November 2022 (1)

Case C‑628/21

TB

other parties to the proceedings:

Castorama Polska Sp. z o.o.,

‘Knor’ Sp. z o.o.

(Request for a preliminary ruling from the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland))

(Reference for a preliminary ruling – Approximation of laws – Directive 2004/48/EC – Enforcement of intellectual property rights – Article 4 – Persons entitled to apply for the application of the measures, procedures and remedies – Article 8(1) – Action relating to an infringement of an intellectual property right – Sale of infringing goods – Copyright and related rights – Right of information of the applicant concerning the origin and distribution networks of the goods – Whether the applicant is required to prove that he or she is the holder of the intellectual property right)

I. Introduction

1. An undertaking is marketing reproductions of graphic representations without the consent of the person claiming to be the creator of those representations. The person in question brings an action relating to an infringement of intellectual property on the basis of Article 8(1) of Directive 2004/48/CE, (2) which establishes an instrumental right aimed at ensuring effective protection of the intellectual property. (3) Must that person prove that she is the holder of the intellectual property right at issue or merely lend credence to the fact that she is the holder of that right? That, in essence, is the question put by the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland).

2. The present case will lead the Court to examine, in the light of its case-law, the standard of proof that is required in the context of a request for information on the origin and distribution networks of goods or services on the basis of the right of information provided for in Article 8(1) of Directive 2004/48. In order to answer the question, it will be necessary to weigh up, on the one hand, the right of information of holders of intellectual property and, on the other, the protection of the defendant against abuse of that right.

II. Legal framework

A. European Union law

3. According to recitals 10 and 17 of Directive 2004/48:

‘(10) The objective of this Directive is to approximate [the] legislative systems [of the Member States] so as to ensure a high, equivalent and homogeneous level of protection in the Internal Market.

…

(17) The measures, procedures and remedies provided for in this Directive should be determined in each case in such a manner as to take due account of the specific characteristics of that case, including the specific features of each intellectual property right and, where appropriate, the intentional or unintentional character of the infringement.’

4. Article 1 of that directive, entitled ‘Subject matter’, states:

‘This Directive concerns the measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights. …’

5. Chapter II of that directive, entitled ‘Measures, procedures and remedies’, consists of Articles 3 to 15. Article 3 of that directive, entitled ‘General obligation’, provides:

‘1. Member States shall provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by this Directive. Those measures, procedures and remedies shall be fair and equitable and shall not be unnecessarily complicated or costly, or entail unreasonable time limits or unwarranted delays.

2. Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.’

6.Article 4 of Directive 2004/48, entitled ‘Persons entitled to apply for the application of the measures, procedures and remedies’, provides:

‘Member States shall recognise as persons entitled to seek application of the measures, procedures and remedies referred to in this Chapter:

(a) the holders of intellectual property rights, in accordance with the provisions of the applicable law,

(b) all other persons authorised to use those rights, in particular licensees, in so far as permitted by and in accordance with the provisions of the applicable law,

(c) intellectual property collective rights management bodies which are regularly recognised as having a right to represent holders of intellectual property rights, in so far as permitted by and in accordance with the provisions of the applicable law,

(d) professional defence bodies which are regularly recognised as having a right to represent holders of intellectual property rights, in so far as permitted by and in accordance with the provisions of the applicable law.’

7. Article 8 of that directive, entitled ‘Right of information’, is worded as follows, in paragraphs 1 and 2:

‘1. Member States shall ensure that, in the context of proceedings concerning an infringement of an intellectual property right and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be provided by the infringer and/or any other person who:

(a) was found in possession of the infringing goods on a commercial scale;

(b) was found to be using the infringing services on a commercial scale;

(c) was found to be providing on a commercial scale services used in infringing activities;

or

(d) was indicated by the person referred to in point (a), (b) or (c) as being involved in the production, manufacture or distribution of the goods or the provision of the services.

2. The information referred to in paragraph 1 shall, as appropriate, comprise:

(a) the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers;

(b) information on the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the goods or services in question.’

B. Polish law

8. Article 278 of the ustawa – Kodeks postępowania cywilnego (Law establishing the Code of Civil Procedure) of 17 November 1964, in the version applicable to the dispute in the main proceedings (4) (‘the Code of Civil Procedure’), states, in paragraph 1:

‘In cases requiring special knowledge, the court, after hearing the parties’ requests concerning the number and choice of experts, may seek the opinion of one or more experts.’

9. Article 479⁸⁹ of that code provides:

‘1. The provisions of the present section shall apply to cases relating to the protection of copyright and related rights, the protection of industrial property and the protection of other rights concerning intangible assets (intellectual property cases).

2. The following shall also be considered to be intellectual property cases for the purposes of the present section:

(1) the prevention and combating of unfair competition;

…’

10. Article 479¹¹² of that code provides:

‘The provisions concerning the person required to provide the information shall apply to any person, including the defendant, who has the information referred to in Article 479¹¹³ or who has access to that information.’

11. Article 479¹¹³ of that code is worded as follows, in paragraphs 1 and 2:

‘1. Upon application by the rightholder, where he or she plausibly demonstrates the existence of circumstances characterising an infringement of an intellectual property right, the court may, before the commencement of proceedings relating to that infringement of the intellectual property right, or while such proceedings are pending, up to the close of the hearing at first instance, request the infringer to provide information on the origin and the distribution networks of the goods or services, where that is necessary for the requirements of the holder’s action.

2. Where the court’s request for information precedes the proceedings relating to the infringement of the intellectual property right, those proceedings must be brought no later than one month from the date of enforcement of the order relating to the request for information.’

III. The dispute in the main proceedings, the questions referred for a preliminary ruling and the procedure before the Court

12. TB is a natural person who, through her online shops, markets decorative articles. In the context of her economic activity, she sells reproductions, produced mechanically by the applicant herself, with simple graphics, consisting of a limited number of colours and geometric figures and short sentences. In that regard, images A, B and C (‘the reproductions at issue’) contain, respectively, the following sentences: ‘Mój dom moje zasady’ (‘In my house, I make the rules’); ‘Nie ma ludzi idealnych a jednak jestem’ (‘Perfect persons do not exist, and yet I am one’) and ‘W naszym domu rano słychać tupot małych stopek. Zawsze pachnie pysznym ciastem. Mamy dużo obowiązków, mnóstwo zabawy i miłości’ (‘In our house, the sound of tiny feet can be heard. There is always the aroma of delicious cake. We have many obligations, much pleasure and much love’). TB claims to be the creator of the images which she reproduces, which in her contention are works for the purposes of the legislation on copyright.

13. Exact copies of images A and B, supplied by ‘Knor’ Sp. z o.o. (‘Knor’), are sold without TB’s consent in the ‘bricks and mortar’ shops and online shop of Castorama Polska Sp. z o.o. (‘Castorama’). Neither TB’s reproductions of those images nor the reproductions offered by Castorama indicate the author or the origin of those images. Castorama also sells reproductions, supplied by Knor, with identical wording to that of image C, but with certain differences in terms of their graphics and fonts. On 13 October 2020, TB gave notice to...