H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH.

• Jurisdiction: European Union
• Court: Court of Justice (European Union)
• Writing for the Court: Jarašiūnas
• ECLI: ECLI:EU:C:2014:75
• Date: 13 February 2014
• Docket Number: C‑479/12
• Procedure Type: Reference for a preliminary ruling

JUDGMENT OF THE COURT (Third Chamber)

13 February 2014 ( *1 )

‛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’

In Case C‑479/12,

REQUEST for a preliminary ruling under Article 267 TFEU from the Bundesgerichtshof (Germany), made by decision of 16 August 2012, received at the Court on 25 October 2012, in the proceedings

H. Gautzsch Großhandel GmbH & Co. KG

v

Münchener Boulevard Möbel Joseph Duna GmbH,

THE COURT (Third Chamber),

composed of M. Ilešič, President of the Chamber, C.G. Fernlund, A. Ó Caoimh, C. Toader 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:

— Münchener Boulevard Möbel Joseph Duna GmbH, by A. Rinkler, Rechtsanwalt,

— the European Commission, by G. Braun and F. Bulst, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 5 September 2013,

gives the following

Judgment

1 This request for a preliminary ruling concerns the interpretation of Articles 7(1), 11(2), 19(2) and 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).

2 The request has been made in proceedings between H. Gautzsch Großhandel GmbH & Co. KG (‘Gautzsch Großhandel’) and Münchener Boulevard Möbel Joseph Duna GmbH (‘MBM Joseph Duna’) concerning an action for infringement of an unregistered Community design, brought by MBM Joseph Duna against Gautzsch Großhandel.

Legal context

3 Recital 1 in the preamble to Regulation No 6/2002 states: ‘A unified system for obtaining a Community design to which uniform protection is given with uniform effect throughout the entire territory of the Community would further the objectives of the Community as laid down in the Treaty.’

4 Recitals 21 and 22 of that regulation state: ‘(21) The exclusive nature of the right conferred by the registered Community design is consistent with its greater legal certainty. It is appropriate that the unregistered Community design should, however, constitute a right only to prevent copying. Protection could not therefore extend to design products which are the result of a design arrived at independently by a second designer. This right should also extend to trade in products embodying infringing designs. (22) The enforcement of these rights is to be left to national laws. It is necessary therefore to provide for some basic uniform sanctions in all Member States. These should make it possible, irrespective of the jurisdiction under which enforcement is sought, to stop the infringing acts.’

5 Recital 31 of that regulation is worded as follows: ‘This Regulation does not preclude the application to designs protected by Community designs of the industrial property laws or other relevant laws of the Member States, such as those relating to design protection acquired by registration or those relating to unregistered designs, trade marks, patents and utility models, unfair competition or civil liability.’

6 Pursuant to Article 1(1) and (2)(a) of Regulation No 6/2002, a design which complies with the conditions contained in that regulation is to be protected by an ‘unregistered Community design’, if made available to the public in the manner provided for in that regulation.

7 Paragraph 1 of Article 4 of Regulation No 6/2002, entitled ‘Requirements for protection’, provides that a design is to be protected by a Community design to the extent that it is new and has individual character.

8 Paragraph 1 of Article 5 of that regulation, entitled ‘Novelty’, states: ‘A design shall be considered to be new if no identical design has been made available to the public: (a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public; …’

9 Paragraph 1 of Article 6 of Regulation No 6/2002, entitled ‘Individual character’, provides: ‘A design shall 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: (a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public; …’

10 Paragraph 1 of Article 7 of that regulation, entitled ‘Disclosure’, provides: ‘For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b), as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.’

11 Article 11 of Regulation No 6/2002, entitled ‘Commencement and term of protection of the unregistered Community design’, provides: ‘1. A design which meets the requirements under Section 1 shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the Community. 2. For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.’

12 Paragraphs 1 and 2 of Article 19 of Regulation No 6/2002, entitled ‘Rights conferred by the Community design’, state: ‘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 Article 88 of that regulation, entitled ‘Applicable law’, provides: ‘1. The Community design courts shall apply the provisions of this Regulation. 2. On all matters not covered by this Regulation, a Community design court shall apply its national law, including its private international law. 3. Unless otherwise provided in this Regulation, a Community design court shall apply the rules of procedure governing the same type of action relating to a national design right in the Member State where it is situated.’

14 Paragraph 1 of Article 89 of Regulation No 6/2002, entitled ‘Sanctions in actions for infringement’, provides: ‘Where in an action for infringement or for threatened infringement a Community design court finds that the defendant has infringed or threatened to infringe a Community design, it shall, unless there are special reasons for not doing so, order the following measures: (a) an order prohibiting the defendant from proceeding with the acts which have infringed or would infringe the Community design; (b) an order to seize the infringing products; (c) an order to seize materials and implements predominantly used in order to manufacture the infringing goods, if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circumstances; (d) any order imposing other sanctions appropriate under the circumstances which are provided by the law of the Member State in which the acts of infringement or threatened infringement are committed, including its private international law.’

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

15 It can be seen from the order for reference that 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...