ECJ gives preliminary ruling on interpretation of Community Designs Regulation

In H Gautzsch Großhandel GmbH & Co KG v Münchener Boulevard Möbel Joseph Duna GmbH (Case C-479/12, February 13 2014), the Court of Justice of the European Union (ECJ) has made a preliminary ruling concerning the interpretation of the Council Regulation on Community Designs (6/2002).

The request for a preliminary ruling was made in proceedings between H Gautzsch Großhandel GmbH & Co KG and Münchener Boulevard Möbel Joseph Duna GmbH (MBM) concerning an action for infringement of an unregistered Community design.

The Regulation on Community Designs provides for the protection of unregistered Community designs, if the design satisfies the requirements of novelty and individual character. An unregistered Community design is protected from the date on which it has first been made available to the public in the manner provided for in the regulation. Such protection covers use resulting from copying the design during a period of three years from the publication of the design.

The main issues in this case centred around the interpretation of the conditions for disclosure of the designs at issue under Articles 7 and 11 of the regulation or, in other words, whether the relevant designs had 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 parties traded in garden furniture. MBM’s product range includes a canopied gazebo, marketed in Germany and created in the autumn of 2004. H Gautzsch began marketing a gazebo called ‘Athen’ in 2006.

MBM brought an action for infringement against H Gautzsch before the Regional Court in Düsseldorf, claiming that the Athen gazebo was a copy of MBM's unregistered Community design. In April and May 2005 MBM’s design had appeared in product leaflets distributed to the sector’s largest furniture and garden furniture retailers and to German furniture purchasing associations.

H Gautzsch opposed the action, contending that the Athen gazebo had been independently created at the beginning of 2005. It stated that the Athen gazebo had been presented to European customers in March 2005 in showrooms in China and that, in June 2005, a model had been sent to a company in Belgium.

The Regional Court found in favour of MBM. In the appeal proceedings before the German Federal Court of Justice, the Federal Court decided to refer questions to the ECJ for a preliminary ruling. Some of the questions referred to the ECJ concerned the interpretation of the scope of the concept of disclosure and the term of protection under Articles 7(1) and 11(2) of the Community Design Regulation. The referring court also sought clarification on the burden of proving that the contested design was a result of copying the protected design.

The ECJ first considered the term of protection under Article 11(2). Based on information that around 300 to 500 newsletters showing MBM’s gazebo had been distributed in April and May 2005, the ECJ noted that use in trade is one means of making unregistered designs available to the public, and that "the normal course of business" should be taken into account when assessing whether events constituting disclosure could reasonably have become known to the specialised circles.

The ECJ found that 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. The assessment is for the Community design court to make.

With regard to disclosure under Article 7(1), the ECJ pointed out that it is not absolutely necessary that disclosure has taken place within the European Union in order for a design to have been made available to the public.

Against this backdrop, the ECJ found that 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, 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. Again, the assessment is up to the Community design court.

With regard to the burden of proof under Article 19(2), the German Federal Court asked whether the holder of an unregistered Community design bears the burden of proving that the contested use results from copying the design, and whether the burden of proof is reversed or lightened if there are material similarities between the designs at issue.

The ECJ replied that the burden of proving that the contested use results from copying the design rests with the holder of the protected design. However, if a Community design court finds that it will be impossible or excessively difficult for the holder to produce the necessary evidence, rules of national law which provide for the burden of proof to be adjusted or lightened may be applied.

The ECJ’s decision provides arguments that can be used by rights holders in cases where evidence is less clear. The holders will not necessarily be required to provide full proof of copying, which may in many cases be difficult or impossible to achieve. The reference to national law highlights the fact that there may be different legal positions among the member states. 

Lisbet Andersen, Bech-Bruun, Copenhagen