Opinion of Advocate General Wathelet delivered on 5 September 2013

Disclosure to only one undertaking

It seems to me that the answer to the first part of the second question is to be found in the actual text of Article 7(1) of the Regulation.

In so far as the legislature chose, in the wording of the first exception, to use the plural (‘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’),^(*) it cannot be inferred from that text that disclosure to only one undertaking would be sufficient to meet the requirement laid down in Article 7, even if that undertaking belonged to the ‘specialised circles’ concerned.

Disclosure and territoriality

The second part of the second question, concerning the impact of exhibiting a design in the showroom of an undertaking in China, is more problematic.

As the Commission pointed out in its observations, there is an essential difference between the first sentence of Article 7(1) and Article 11(2) of the Regulation, in so far as Article 11(2) refers expressly to disclosure ‘within the Community’, whereas the first sentence of Article 7(1) makes no reference of that kind to the territory of the European Union.

It therefore logically follows that, in assessing whether there has been disclosure within the meaning of Article 7(1) of the Regulation, it is necessary in principle to rely on distribution, regardless of where it took place. The national courts and academic writers also appear to endorse that reading of the text.^(*)

However, it must be observed that Article 7(1) of the Regulation makes it clear, as does Article 11(2), that the potential entities to which the design has been disclosed are undertakings which, operating within the European Union, must be regarded as belonging to the ‘circles specialised in the sector concerned’.

That clear statement is not without significance. It derives from a proposal for an amendment made by the Economic and Social Committee^(*) with the specific aim of limiting the scope of the proposal of the Commission, which initially considered that novelty had to be determined worldwide, without any further indication.^(*) In order to limit the impact of a practice whereby the sellers of infringing products (essentially in the textile industry) obtain certificates falsely attesting that the design at issue had already been created in the past by third parties, the Economic and Social Committee suggested that the definition of disclosure in Article 5(2) of the proposal (Article 7(1) of the Regulation) should be supplemented as follows: ‘[a] design shall be deemed to have been made available to the public if it has been published following registration or exhibited, used in trade or otherwise disclosed, unless this could not reasonably be known to specialist circles in the sector in question operating within the Community before the date of reference’.^(*)

The reference to the knowledge of specialised circles operating within the European Union is not therefore fortuitous. On the contrary, it is the result of a particular concern being taken into account. As summarised by certain authors, there are two elements: one, which is absolute, being disclosure anywhere in the world, and the other, of a relative nature, being knowledge on the part of circles specialised in the sector concerned, within the European Union.^(*)

The use of the terms ‘normal’ and ‘razoblamente’ in the Spanish version, ‘normal’ and ‘reasonably’ in the English version, ‘normale’ and ‘raisonnablement’ in the French version, and ‘normale’ and ‘redelijkerwijs’ in the Dutch version, also influences the examination to be undertaken by the court responsible for assessing the impact of any such alleged disclosure. The first can be defined as ‘corriente o habitual’, ‘conforming to a standard; usual, typical or expected’, ‘ce qui est dépourvu de tout caractère exceptionnel; qui est conforme au type le plus fréquent’, and ‘overeenkomstig de regel, niets bijzonders of verontrustends; als norm dienend’. The second refers to what is claimed ‘de manera razonable’ or, that is to say ‘proporcionada o equilibrada’, ‘to a moderate or acceptable degree’‘sans prétention excessive, sans trop exiger’, or ‘met billijkheid’ or ‘met verstand redenerend’.^(*)

The persons concerned cannot therefore be asked to take special and far‑reaching measures in order to become acquainted with an earlier design. As the Commission points out in its written observations, if the probability that the events were not known is greater than the probability that they were, they cannot be regarded as having become known in the normal course of business. In other words, it is appropriate to a certain extent to refer to the quod plerumque fit.^(*)

In order to answer the question from the national court, it is therefore necessary to put oneself in the place of professionals operating within the territory of the European Union and to ask whether they could have acquired knowledge, reasonably and in the normal course of business, of the design in the manner claimed.

These various interpretative parameters lead me to the view that presentation of a design in a showroom of only one undertaking, which, moreover, is situated in China, is not sufficient to give rise, in the normal course of business, to knowledge of the design by specialised circles operating in the European Union. On the other hand, the position would be different if the design had been presented in China, for example, at a well-known international fair in which the main or most of the European protagonists in the relevant sector participated.^(*)

General background

Title II of the Regulation is headed ‘The law relating to designs’. Article 19 of the Regulation is the first article in Section 4, which is entitled ‘Effects of the Community design’. That article itself has the heading ‘Rights conferred by the Community design’. The first paragraph of Article 19 states: ‘[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 second paragraph of Article 19, for its part, provides that ‘[a]n 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.’

According to recital 22 to the Regulation, ‘[t]he enforcement of these rights is to be left to national laws’, since the Regulation only provides for ’some basic uniform sanctions in all Member States.’

Moreover, Article 88 of the Regulation expressly endorses that recital by providing, in paragraphs 2 and 3, that ‘[o]n all matters not covered by this Regulation, a Community design court shall apply its national law, including its private international law’ and that, subject to any contrary provision of the Regulation, it ’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’.

Article 85(2) of the Regulation nevertheless provides that ‘[i]n proceedings in respect of an infringement action or an action for threatened infringement of an unregistered Community design, the Community design court shall treat the Community design as valid if the right holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his Community design.’

The two last-mentioned articles form part of Title IX of the Regulation, entitled ‘Jurisdiction and procedure in legal actions relating to Community designs’.

Analysis of the relevant articles of the Regulation

It is clear from the structure of the Regulation, as briefly described above, that no rule of procedure can be inferred from Article 19(2) of the Regulation.

On the contrary, that Article is the provision which lays down the substance of the right of a holder of a Community design, regardless of any procedural consideration: the holder of an unregistered Community design is entitled to prohibit various acts, provided that the disputed use derives from a copy of the design in question.

Moreover, it is apparent from recital 22 and Article 88 of the Regulation that determination of the rules of procedure — including the burden of proof — is a matter for each national legislature.^(*) Moreover, I endorse the Commission’s view, in so far as it states in its written observations that Article 85(2) of the Regulation cannot be applied by analogy. I also consider that that provision refers only to the burden of proving fulfilment of the conditions laid down in Article 11 of the Regulation for the purpose of securing protection of the unregistered Community design, not that of proving use of a copy of that design.

It is therefore appropriate, at this stage, to say in reply to the referring court that Article 19(2) of the Regulation cannot be interpreted as meaning that it is incumbent upon the holder of an unregistered design to prove that the disputed use derives from a copy of that design, that issue being a matter for the national legislature. In those circumstances, it would therefore be inappropriate to answer question 3(b), which asks the Court about a possible reversal of the burden of proof or possible easing of that burden.

However, the general aim pursued by the Regulation and the answer given by the Court to a similar question regarding trade-marks prompt me to examine this matter further.

Considerations based on trade-mark law

In the Class International case,^(*) the Court was asked to consider the burden of proof in proceedings relating to infringements of Community trade-marks. By way of introduction to its answer, the court observed that ‘the issue of proof is raised when a dispute arises, that is to say, when the trade-mark proprietor pleads interference with the exclusive rights conferred on it by Article 5(1) of [First Council] Directive [89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade-marks]^(*) and Article 9(1) of [Council] Regulation [No 40/94 of 20 December 1993 on the Community trade-mark]’.^(*)

That situation is very similar to the one with which we are concerned here. First, the right in question — the right to prohibit certain uses of an identical or similar trade mark — is, mutatis mutandis, identical to the right provided for by Article 19 of the Regulation regarding designs. Second, the systems for settling disputes established by the two abovementioned regulations are similar.^(*)

In the case giving rise to the judgment in Class International, Advocate General Jacobs arrived at a solution similar to that which I have just advocated. In his view, it is apparent from the recitals to regulation on the Community trade‑mark that the burden of proof is covered by national procedural rules and that in a ‘situation where a trade-mark proprietor is seeking to prevent a trader from using his mark in the course of trade …’ there are no ‘cogent reasons [for derogating from the fact that it is the] national rules on the burden of proof [that] should apply.’^(*)

However, the Court did not follow the Advocate General and, on the contrary, decided that, in a situation such as the one before it (which seems to me comparable to the present case) ‘the onus of proving interference [with the exclusive right] must lie with the trade-mark proprietor who alleges it [and that,] [i]f that is proven, it is then for the trader sued to prove the existence of the consent of the proprietor to the marketing of the goods in the Community.’^(*)

In view of the structural and substantive closeness of Regulations Nos 40/94 and 6/2002 and of the protective mechanisms which they establish and because of the closeness of the objectives pursued by those two instruments, I am therefore inclined to take the view that the decision adopted by the Court in the case giving rise to the judgment in Class International must be transposed to the law on designs.

As pointed out by Advocate General Mengozzi, at point 6 of his Opinion in the case giving rise to the judgment in FEIA, ‘[a]s is clear from the recitals in the preamble to the Regulation, the purpose of establishing a Community design subject to a uniform set of rules throughout the Community is … to prevent identical designs being protected differently and for the benefit of different owners in the various national legal systems as a result of the considerable differences still encountered between the laws of the Member States’.^(*)

It is undoubtedly the case, as the Court held in Class International in relation to trade-marks, that ‘if [the issue of the onus of proving infringement of the right of prohibition] were a matter for the national laws of the Member States, the consequence for trade-mark proprietors could be that protection would vary according to the legal system concerned. The objective of “the same protection under the legal systems of all the Member States” set out in the ninth recital in the preamble to the directive, where it is described as fundamental, would not be attained’.^(*)

In the present case, since recital 1 to the Regulation states that ‘uniform protection is given with uniform effect throughout the entire territory’ of the European Union, it seems to me that the same reasoning can be perfectly well transposed to the law on designs.

Conclusion concerning the third question

In the light of all the foregoing considerations, I propose that the Court give the following answers to questions 3(a) and 3(b) submitted by the referring court: Article 19(2) of the Regulation contains no rule concerning the burden of proof. However, in circumstances such as those of the main proceedings, it is incumbent upon the holder of the unregistered design to prove the facts which would give grounds for exercising the right to obtain an injunction provided for in that article, by establishing that the disputed use derives from a copy of the protected design.

According to recital 22 and Article 88(2) and (3) of the Regulation, the specific rules regarding the burden of proof are to be laid down by the national legislature. The national courts will ensure that the principle of effectiveness is observed. Indeed, ‘[i]t is apparent from the case-law that the Member States must ensure that evidential rules — and, in particular the rules on the allocation of the burden of proof applicable to actions relating to a breach of Community law — are, firstly, not less favourable than those that apply to similar domestic actions and, secondly, that they do not make it in practice impossible or excessively difficult for individuals to exercise rights conferred by Community law’.^(*)

Consequently, as the Commission appropriately points out in its written observations, where the national court finds that, if the holder of a protected design is required to bear the burden of proof, that is liable to render impossible or excessively difficult the production of the necessary evidence (in particular because it concerns information which it is not possible for the owner of the right to have in his possession), it is then required to have recourse to all procedural means available to it under national law to mitigate that difficulty. It may, for example, resort to the mechanism of presumptions or various measures of investigation, such as the requirement on the part of either of the parties or a third party to produce a document or other instrument,^(*) or decide that, in view of the evidence produced by the holder of the design, it is incumbent on the defendant to contest it in a substantive and detailed manner.

The ‘special reasons’ in Article 89(1) of the Regulation

As I have already indicated when examining the third question, the rights conferred by a Community design are set out in Article 19 of the Regulation.

Article 89 of the Regulation forms part of Title IX, ‘Jurisdiction and procedure in legal actions relating to Community designs’. It is that article which specifies the penalties which may be imposed by a Community design court. They include, in particular, an injunction prohibiting the continuation of the contested infringing acts.

According to the first paragraph of that article, the Community design court may impose a sanction when it finds that the defendant has infringed or threatened to infringe a Community design ‘unless there are special reasons for not doing so’.

In its decision, the referring court appears to include the extinction of rights over time among those ‘special reasons’.^(*) As regards the time-barring of claims, it expressly asks ‘whether the situation to be assessed, from which the defendant infers that the aforementioned right is forfeited, satisfies the criterion of “special reasons” for not ordering prohibition laid down in Article 89(1)(a)’.^(*)

I do not think, however, that any such comparison can be properly made.

If we refer to the explanations given by the Commission when putting forward its Proposal for a Regulation on Community designs,^(*)‘special reasons’ allowing derogation from an order imposing penalties might arise, for example, if, ‘under the given circumstances a seizure of the goods would be pointless, or unduly harsh. Similarly, in certain cases the order to provide information could be void of any meaning, if for instance the infringer is the manufacturer of the infringing goods.’

What is relevant therefore is the factual situation, not procedural rules. This interpretation is confirmed by the case-law of the Court of Justice concerning the parallel provision under trade-mark law. According to the Court, ‘the term “special reasons” relates to factual circumstances specific to a given case.’^(*)

Determination of whether rights are extinguished through lapse of time and the claim time-barred: procedural autonomy

As I already had occasion to say when examining the third question, it is clear from recital 22 and from Article 88 of the Regulation that determination of the rules of procedure is a matter for each national legislature.

Whilst it is true that Article 15(3) of the Regulation speaks of a time bar, it relates only to proceedings governed by the first two paragraphs of that article, that is to say to claims relating to entitlement.^(*) I also note that the Regulation is silent — in contrast to the Community trade-mark regulation^(*) — on the matter of limitation. However, it does not seem to me that the prohibition of rules of that kind can be inferred from that silence.

Consequently, in the absence of European Union rules on the matter, those questions are, by virtue of the principle of procedural autonomy, a matter for the applicable national law in accordance with Article 88(2) and (3) of the Regulation.

In other words, the question whether the right to obtain an injunction referred to in Article 19(2) and Article 89(1)(a) of the Regulation is extinguished through lapse of time and/or may be time-barred and, where appropriate, what the rules should be for such extinction of rights and/or such time-bar, is a matter for the applicable national law in accordance with Article 88(2) and (3) of the Regulation.

Observations concerning the principles of equivalence and effectiveness

The case-law of the Court concerning limitation periods and time-limits is abundant. Three rules seem to me noteworthy:

• In the first place, whilst the principle of equivalence cannot be interpreted as requiring a Member State to extend its most favourable domestic rules to all actions brought in a particular area of the law, it is incumbent on the referring court ‘to determine whether the procedural rules intended to ensure that the rights derived by individuals from EU law are safeguarded under domestic law comply with that principle [of equivalence] and to consider both the purpose and the essential characteristics of allegedly similar domestic actions. For that purpose, the national court must consider whether the actions concerned are similar as regards their purpose, cause of action and essential characteristics’.^(*) Article 88(3) of the Regulation itself expressly states that ‘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.’

• Next, the principle of effectiveness requires that a limitation period laid down by national law should not start to run until the date on which the holder of the right has or should have had knowledge of the infringement alleged.^(*)

• Finally, as regards a procedure designed to prohibit continuing or repeated infringements, the national limitation period or time-limit rule cannot be drafted in such a way that a limitation period expires even before the infringement has been brought to an end.^(*)

It is with those three rules in mind that the national court must apply the national law determining the limitation period and/or time-limit applicable to the procedure under Articles 19(2) and Article 89(1)(c) of the Regulation.

Scope of Article 89(1)(d) of the Regulation

Before determining the law applicable to the ‘other sanctions’ referred to in Article 89(1)(d) of the Regulation, it is necessary to determine whether all the measures mentioned by the referring court — request for destruction, information and redress — in fact fall within that provision.

According to the Commission, only the request for destruction could be construed as falling within the scope of the ‘sanctions’ referred to in Article 89 of the Regulation. Relying on recital 22 to the Regulation, it considers that only measures capable of bringing the disputed conduct to an end are covered by that article.

I do not share that interpretation. On the contrary, recital 22 is drafted in such a way that the explanation regarding the purpose of the sanctions refers only to ‘basic uniform sanctions’ considered necessary by the Union legislature: ‘[i]t 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’.^(*) Recital 31 adds that the Regulation does not preclude the application of other relevant rules of the Member States, such as those concerning civil liability.

The wording of Article 89(1) of the Regulation appears to me to reflect the various desires expressed in the abovementioned recitals. First, the Union legislature made provision for uniform basic sanctions, of such a kind as to bring infringing acts to an end. These are measures of prohibition and seizure specifically referred to in Article 89(1)(a), (b) and(c). Also, it is open to each national legislature to adopt other sanctions, such as damages. It is that possibility which is enshrined in Article 89(1)(d) of the Regulation.

The corresponding provision of Regulation No 207/2009 on the Community trade-mark, Article 102, is to the same effect.^(*) Although it is clearly drafted in a less detailed manner, the same structure is to be found in that article as in Article 89 of the regulation on Community designs. The first paragraph of that article relates to the prohibitory measure and measures which ‘in accordance with its national law … are aimed at ensuring that this prohibition is complied with’. The second paragraph of Article 102 provides that ‘the Community trade-mark court shall apply the law of the Member State in which the acts of infringement or threatened infringement were committed, including the private international law.’ As explained by Advocate General Cruz Villalón in DHL Express France, that paragraph entails ‘measures other than those ensuring enforcement’.^(*)

Determination of the law applicable to the ‘other sanctions’

The text of Article 89(1)(d) of the Regulation appears to be unambiguous. It authorises Community design courts to impose other sanctions ‘provided for by the law of the Member State in which the acts of infringement or threatened infringement are committed, including its private international law’. It is therefore indeed a case of imposing, for each of the infringements committed, the sanction provided for by the national law applicable in that territory.

It is clear from the very wording of that provision that the Union legislature did not leave the choice of law applicable to the properly seized court. On the contrary, the law applicable is always the law (or laws) of the Member State (or Member States) in which the infringing act (or acts) was (or were) committed. It is therefore never a question of applying the law of the Member State of the court seised by reason merely of its territorial jurisdiction.

It is also to that effect that the corresponding provision of the Community trade-mark regulation has been interpreted by the Court. In DHL Express France, the Court in fact followed Advocate General Cruz Villalón, according to whom ‘if the European Union legislature had intended that the law applicable to the measures ensuring compliance with a prohibition should be the same as that provided for in respect of the other measures to be adopted, Article 98(2) [now Article 102] would be redundant, since its function is precisely one of delineation, which can only be understood if the preceding provision has laid down a different rule. Article 98(2) states very clearly that the applicable law, in addition to entailing measures other than those ensuring enforcement, is “the law of the Member State [in] which the acts of infringement or threatened infringement were committed, including the private international law”. The brief reference to “national law” in Article 98(1) is in stark contrast to the reference in Article 98(2) to the lex loci delicti commissi, and it must therefore be concluded that these concern different conflict rules.’^(*)

I would add, finally, in conclusion, that that interpretation is not only shared by academic writers,^(*) but is also the one adopted in Article 8 of Regulation No 864/2007 on the law applicable to non-contractual obligations, cited above.