Federal Supreme Court asks ECJ for clarification on unregistered Community design rights

The German Federal Supreme Court has referred six questions, including a number of sub-questions, to the Court of Justice of the European Union (ECJ) for a preliminary ruling concerning the establishment, validity and enforcement of unregistered Community design rights (Gartenpavillon/Garden Pavilion, Case I ZR 74/10). Some of the questions are applicable to all design rights, including registered Community designs.

The questions and sub-questions are as follows:

1. Is Article 11(2) of the Community Designs Regulation (6/2002) to be interpreted as meaning that, in the normal course of business, a design could reasonably have become known to the circles specialised in the sector concerned, operating within the European Union, in the case where images of the design were distributed to traders?

2. Is the first sentence of Article 7(1) of the regulation to be interpreted as meaning that a design could 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, in the case where:

(a) it is made available to only one undertaking in the specialised circles; or

(b) it is exhibited in the showroom of an undertaking in China which lies outside the scope of normal market analysis?

3. a) Is Article 19(2) of the regulation to be interpreted as meaning that the holder of an unregistered Community design bears the burden of proving that the contested use results from copying the protected design?

b) If Question 3 (a) is answered in the affirmative: is the burden of proof reversed or is the burden of proof incumbent on the holder of the unregistered Community design eased if there are material similarities between the design and the contested use?

4. a) Is the right to obtain an injunction prohibiting further infringement of an unregistered Community design, provided for in Article 19(2) and Article 89(1)(a) of the regulation, subject to a limitation in time?

b) If Question 4(a) is answered in the affirmative: is the limitation in time governed by European Union law and, if so, by which provision?

5. a) Is the right to obtain an injunction prohibiting further infringement of an unregistered Community design, provided for in Article 19(2) and Article 89(1)(a) of the regulation, subject to forfeiture?

b) If Question 5(a) is answered in the affirmative: is the forfeiture governed by European Union law and, if so, by which provision?

6. Is Article 89(1)(d) of the regulation to be interpreted as meaning that claims for destruction, disclosure of information and damages by reason of infringement of an unregistered Community design which are pursued in relation to the entirety of the European Union are subject to the law of the member states in which the acts of infringement were committed?

This reference for a preliminary ruling includes questions and sub-questions concerning three different areas - namely, questions concerning the establishment (question 1), validity (question 2) and enforcement of unregistered Community design rights (questions 3 to 6). More precisely, questions 3 to 6 relate to the issue of how to demonstrate infringement of an unregistered Community design right (question 3), possible defences against infringement (questions 4 and 5) and the scope of accessory claims for destruction, information and damages asserted EU-wide due to an infringement of an unregistered Community design (question 6).

The answers to question 2 and 4 to 6 will have an impact on the law governing registered Community designs (in addition, the answer to question 2 will influence national design law schemes in Europe), while responses to questions 4 to 6 will also have an impact on the law governing Community trademarks, because the applicable provisions in the Community Designs Regulation and the Community Trademark Regulation (207/2009) are more or less the same. It will be interesting to see whether and how the ECJ finds a way to provide more clarity, which is clearly needed.

Henning Hartwig, Bardehle Pagenberg, Munich