The matter at hand
Article 8(1) of the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights provides that Member States must ensure that, ‘in the context of’ infringement proceedings, the competent judicial authorities may grant an order to provide information on the origin and distribution networks of the infringing goods or services.
This provision has been implemented in Czech law in Paragraph 3(2) of Law No 221/2006, which provides that the rightholder may seek that information by making an application to the court ‘in proceedings concerning an infringement of a right’.
In a dispute between New Wave and Alltoys concerning the infringement of New Wave’s trade mark MegaBabe, New Wave made such application in new, separate proceedings, after the proceedings in which it was held that Alltoys had infringed New Wave’s trade mark rights had already been concluded.
The City Court in Prague dismissed New Wave’s application, considering that Paragraph 3(2) of Law No 221/2006 must be interpreted as meaning that such application must be made in the same proceedings in which a finding of a infringement is sought and can therefore not be made independently, in new proceedings instituted afterwards.
After this decision had been appealed successfully to the Court of Appeal in Prague, Alltoys brought the case before the Czech Supreme Court, which decided to stay the proceedings and to ask the ECJ, in essence, whether Article 8(1) of the Enforcement DirectiveDirective 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 also applying to a situation, in which, after the definitive termination of proceedings in which it was held that an intellectual property right was infringed, the applicant seeks information on the origin and distribution networks of the infringing goods or services in separate proceedings.
The judgment of the ECJ
The ECJ rules that the wording of Article 8(1) of the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, which uses the expression ‘in the context of proceedings concerning an infringement of an intellectual property right’, does not exclude that provision from also covering separate proceedings initiated after the definitive termination of proceedings in which it was held that an intellectual property right was infringed (paragraph 20). In this regard, the ECJ notes that the obligation to provide information is directed not only at the infringer of the intellectual property right in question but also at ‘any other person’ mentioned in indents (a) to (d) of Article 8(1). Considering that such other persons are not necessarily parties to the proceedings in which a finding of an infringement is sought, that confirms that the wording of Article 8(1) cannot be interpreted as being applicable only in such proceedings (paragraph 22).
With reference to its judgments in Diageo Brands (C‑681/13) and Coty (C-580/13), the ECJ continues that this interpretation is consistent with the objective of the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, i.e. “to ensure a high, equivalent and homogeneous level of protection in the internal market” (paragraph 23) and with the fact that the right of information “is a specific expression of the fundamental right to an effective remedy guaranteed in Article 47 of the CharterCharter of Fundamental Rights of the European Union [2000/C 364/01] of Fundamental Rights of the European Union” (paragraph 25).
According to the ECJ, such high level of protection and effective remedy “might not be ensured if it were not possible also to exercise that right of information in the context of separate proceedings brought after the final termination of an action in which a finding was made of a breach of an intellectual property right” (paragraph 24). In this respect, the ECJ notes that “it is not always possible to request all the relevant information in the context of proceedings at the end of which an intellectual property right is found to have been infringed. In particular, it is not inconceivable that the holder of an intellectual property right may become aware of the extent of the infringement of that right only after the final termination of those proceedings” (paragraph 26).
In the light of those considerations, the ECJ concludes that Article 8(1) of the Enforcement DirectiveDirective 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.” (paragraph 28).