Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL.

• Jurisdiction: European Union
• Celex Number: 62010CJ0488
• ECLI: ECLI:EU:C:2012:88
• Date: 16 February 2012
• Court: Court of Justice (European Union)
• Procedure Type: Reference for a preliminary ruling
• Docket Number: C‑488/10

JUDGMENT OF THE COURT (First Chamber)

16 February 2012 (*1 )

‛Regulation (EC) No 6/2002 — Article 19(1) — Community designs — Infringement or threatened infringement — Definition of ‘third parties’’

In Case C-488/10,

REFERENCE for a preliminary ruling under Article 267 TFEU from the Juzgado de lo Mercantil n° 1 de Alicante y n° 1 de Marca Comunitaria (Spain), made by decision of 15 September 2010, received at the Court on 11 October 2010, in the proceedings

Celaya Emparanza y Galdos Internacional SA

v

Proyectos Integrales de Balizamiento SL,

THE COURT (First Chamber),

composed of A. Tizzano, President of the Chamber, M. Safjan, M. Ilešič (Rapporteur), E. Levits and M. Berger, Judges,

Advocate General: P. Mengozzi,

Registrar: K. Malacek, Administrator,

having regard to the written procedure and further to the hearing on 14 September 2011,

after considering the observations submitted on behalf of:

— Celaya Emparanza y Galdos Internacional SA, by J.L. Gracia Albero, F. Rodríguez Domínguez, F. Miazetto and S. Ferrandis González, abogados,

— the Polish Government, by M. Laszuk, I. Żarski and M. Szpunar, acting as Agents,

— the European Commission, by F. Wenzel Bulst and R. Vidal Puig, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 8 November 2011,

gives the following

Judgment

1 This reference for a preliminary ruling concerns the interpretation of Article 19(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) (‘the Regulation’).

2 The reference was made in proceedings between Celaya Emparanza y Galdos Internacional SA (‘Cegasa’) and Proyectos Integrales de Balizamiento SL (‘PROIN’) concerning an action alleging infringement brought by Cegasa.

Legal context

3 It is apparent from recital 5 in the preamble thereto that the objective of the Regulation is ‘the creation of a Community design which is directly applicable in each Member State’ in order ‘to obtain … one design right for one area encompassing all Member States’.

4 Recital 18 in the preamble to the Regulation is worded as follows: ‘A registered Community design requires the creation and maintenance of a register in which will be registered all those applications which comply with formal conditions and which have been accorded a date of filing. This registration system should in principle not be based upon substantive examination as to compliance with requirements for protection prior to registration, thereby keeping to a minimum the registration and other procedural burdens on applicants.’

5 Article 1(2)(b) of the Regulation provides that a design is to be protected ‘by a “registered Community design”, if registered in the manner provided for in this Regulation’.

6 Article 1(3) of the Regulation is worded as follows: ‘A Community design shall have a unitary character. It shall have equal effect throughout the Community. It shall not be registered, transferred or surrendered or be the subject of a decision declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle and its implications shall apply unless otherwise provided in this Regulation.’

7 Article 3(a) of the Regulation provides as follows: ‘(a) “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’.

8 Article 4(1) of the Regulation is worded as follows: ‘A design shall be protected by a Community design to the extent that it is new and has individual character.’

9 Article 5(1)(b) of the Regulation provides that a registered Community design is to be considered to be new if no identical design has been made available to the public ‘before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority’.

10 Article 6(1)(b) of the Regulation provides that a registered Community design is to be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public ‘before the date of filing the application for registration or, if a priority is claimed, the date of priority’.

11 Article 10 of the Regulation, entitled ‘Scope of protection’, provides in paragraph 1 thereof as follows: ‘The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.’

12 Article 19 of the Regulation, entitled ‘Rights conferred by the Community design’, is worded as follows: ‘1. A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. 2. An unregistered Community design shall, however, confer on its holder the right to prevent the acts referred to in paragraph 1 only if the contested use results from copying the protected design. The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder. …’

13 Section 5 of Title II of the Regulation, entitled ‘Invalidity’, comprises Articles 24 to 26.

14 Article 24(1) of the Regulation provides as follows: ‘A registered Community design shall be declared invalid on application to the Office [for Harmonisation in the Internal Market (trade marks and designs) (OHIM)] in accordance with the procedure in Titles VI and VII or by a Community design court on the basis of a counterclaim in infringement proceedings.’

15 Article 25 of the Regulation, entitled ‘Grounds for invalidity’, provides in paragraph 1(d) thereof that a Community design may be declared invalid only if, inter alia, ‘the Community design is in conflict with a prior design’.

16 Title V of the Regulation, entitled ‘Registration procedure’, comprises Articles 45 to 50.

17 Article 45 of the Regulation, entitled ‘Examination as to formal requirements for filing’, provides in paragraph 2 thereof as follows: ‘[OHIM] shall examine whether: (a) the application complies with the other requirements laid down in Article 36(2), (3), (4) and (5) and, in the case of a multiple application, Article 37(1) and (2); (b) the application meets the formal requirements laid down in the implementing regulation for the implementation of Articles 36 and 37; (c) the requirements of Article 77(2) are satisfied; (d) the requirements concerning the claim to priority are satisfied, if a priority is claimed.’

18 Article 47 of the Regulation, entitled ‘Grounds for non-registrability’, provides in paragraph 1 thereof as follows: ‘If [OHIM], in carrying out the examination pursuant to Article 45, notices that the design for which protection is sought: (a) does not correspond to the definition under Article 3(a); or (b) is contrary to public policy or to accepted principles of morality, it shall refuse the application.’

19 Article 48 of the Regulation provides that ‘[i]f the requirements that an application for a registered Community design must satisfy have been fulfilled and to the extent that the application has not been refused by virtue of Article 47, [OHIM] shall register the application in the Community design Register as a registered Community design’.

20 Title VI of the Regulation, entitled ‘Surrender and invalidity of the registered Community design’, comprises Articles 51 to 54.

21 Article 52 of the Regulation, entitled ‘Application for a declaration of invalidity’, states in paragraph 1 thereof that ‘any natural or legal person, as well as a public authority empowered to do so, may submit to [OHIM] an application for a declaration of invalidity of a registered Community design’.

22 Title IX of the Regulation, entitled ‘Jurisdiction and procedure in legal actions relating to Community designs’, contains inter alia Section 2, entitled ‘Disputes concerning the infringement and validity of Community designs’, which comprises Articles 80 to 92 of the Regulation.

23 Article 81 of the Regulation is worded as follows: ‘The Community design courts shall have exclusive jurisdiction: (a) for infringement actions and — if they are permitted under national law — actions in respect of threatened...