An EU court decision – when you can seek information for IP infringement

26345e83a6f2d0764cbfa2c896f2d943The European court ruled in Case C‑427/15 NEW WAVE CZ, a.s. v ALLTOYS, spol. s r. o.. This case concern the following:

NEW WAVE brought a first action against ALLTOYS for using, by offering its goods, the MegaBabe mark without NEW WAVE’s consent.

In that first action, the national court held in a final judgment that ALLTOYS had infringed NEW WAVE’s rights in the MegaBabe mark, and ordered it to refrain from wrongful conduct in future and withdraw the products concerned that had already been placed on the market. The court did not, however, allow NEW WAVE to amend its application for the purpose of also requiring ALLTOYS to provide it with all information relating to the goods concerned.

After those proceedings were definitively concluded, NEW WAVE brought a new action before the Městský soud v Praze (City Court, Prague, Czech Republic) seeking for ALLTOYS to be ordered to communicate to it all information on the origin and distribution networks of the goods bearing the MegaBabe mark stocked, marketed or imported by ALLTOYS at any time in the past or present, specifically the first name and surname or commercial or trading name and permanent residence or seat of the supplier, manufacturer, stockist, distributor and other previous holder of those goods, as well as information on the quantity supplied, stocked, received or ordered and the quantity sold, and precise data on the selling price of the various articles and the price paid by ALLTOYS to the supplier for goods supplied.

By judgment of 26 April 2011, the Městský soud v Praze (City Court, Prague) dismissed NEW WAVE’s application. The court considered that a claim to a right of information could not be brought by an application submitted independently, since Paragraph 3 of Law No 221/2006 provides that such a right may only be asserted by an application to the court in proceedings concerning infringement of a right. However, according to that court, in the dispute in the main proceedings, the action concerning infringement of a right had already been terminated by the final judgment given in the first action.

NEW WAVE appealed to the Vrchní soud v Praze (Court of Appeal, Prague, Czech Republic), which by judgment of 27 February 2012 altered the judgment at first instance by ordering ALLTOYS to provide NEW WAVE with the information requested. The appellate court considered that Article 8(1) of Directive 2004/48 should be taken into account in interpreting Paragraph 3 of Law No 221/2006. In that context, it found that proceedings concerning the provision of information which had not been communicated voluntarily were also proceedings concerning infringement of a right.

ALLTOYS appealed on a point of law against the appellate court’s judgment to the Nejvyšší soud (Supreme Court, Czech Republic).

The Nejvyšší soud (Supreme Court) observes that, although Law No 221/2006 transposed Directive 2004/48 in the Czech legal system, there is a difference between the wording of that law and the wording of the directive. While Paragraph 3 of Law No 221/2006 provides that information may be obtained by making an application ‘in proceedings for infringement of a right’ (‘v řízení o porušení práva’), Article 8(1) of Directive 2004/48, in its Czech language version, provides that the Member States must ensure the possibility of obtaining information ‘in connection with proceedings for infringement of an intellectual property right’ (‘v souvislosti s řízením o porušením práva duševního vlastnictví’). According to that court, that national provision must be interpreted consistently with Directive 2004/48. It notes, however, that the interpretation of that expression in Article 8(1) of the directive is not certain.

The Nejvyšší soud (Supreme Court) further observes that there are differences between the various language versions of Directive 2004/48. Thus the Czech, English and French versions of the directive use respectively the words ‘in connection with proceedings’ (‘v souvislosti s řízením’), ‘in the context of proceedings’, and ‘within the framework of proceedings’ (‘dans le cadre d’une action’). In that court’s view, unlike the Czech and English versions of Directive 2004/48, the French version corresponds more to the wording of Law No 221/2006, since it introduces a closer connection between the proceedings and the application for information.

In those circumstances, the Nejvyšší soud (Supreme Court) decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

‘Must Article 8(1) of Directive 2004/48 … be interpreted as meaning that it is in the context of proceedings concerning an infringement of an intellectual property right if, after the definitive termination of proceedings in which it was held that an intellectual property right was infringed, the applicant in separate proceedings seeks information on the origin and distribution networks of the goods or services by which that intellectual property right is infringed (for example, for the purpose of being able to quantify the damage precisely and subsequently seek compensation for it)?’

The Court’s decision:

Article 8(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as applying to a situation, such as that at issue in the main proceedings, in which, after the definitive termination of proceedings in which it was held that an intellectual property right was infringed, the applicant in separate proceedings seeks information on the origin and distribution networks of the goods or services by which that intellectual property right is infringed.

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