The matter at hand
Delta Center is the tenant of a marketplace named “Pražská tržnice” (Prague Market Halls), which sublets the various sales areas situated in that marketplace to market-traders. Having established that counterfeit goods were sold in those market halls, various trade mark owners (including Tommy Hilfiger) jointly took action against Delta Center before the Czech courts, asking an order against Delta Center to take measures preventing the sale of such counterfeit goods, by refraining from subletting sales areas to market-traders who have previously been convicted for IP-infringement.
In these circumstances, the question arose whether Article 11 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 should be interpreted as meaning that it is possible to order a tenant of a physical marketplace – just like an operator of an online marketplace (see the L’Oréal-judgment of 12 July 2011, C‑324/09) – to take measures preventing the sale of counterfeit goods.
In those circumstances, the Czech Supreme Court decided to stay the proceedings and to refer the following questions to the ECJ:
Is a tenant of a physical marketplace an intermediary whose services are used by a third party to infringe an intellectual property right within the meaning of Article 11 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?
Is it possible to impose on a tenant of a physical marketplace, measures, as provided for in Article 11 Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, under the same conditions as those formulated by the ECJ in the L’Oréal-judgment of 12 July 2011, C‑324/09?
The judgment of the ECJ
Regarding the first question, the ECJ establishes that the scope 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 is not limited to electronic commerce (paragraph 29). Article 11 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 is therefore not limited to online intermediaries, but also applies to “an operator which provides to third parties a service relating to the letting or subletting of pitches in a marketplace, thanks to which they have access to that marketplace and offer for sale in that marketplace counterfeit branded products” (paragraph 28).
Likewise, as to the second question, there is no reason to treat physical market places differently than online market places. Therefore, “the conditions for an injunction (…) against an intermediary who provides a service relating to the letting of sales points in market halls are identical to those for injunctions which may be addressed to intermediaries in an online marketplace, set out by the Court in the judgment of 12 July 2011 in L’Oréal and Others (C‑324/09).”
With reference to its aforementioned judgment in L’Oréal, the ECJ repeats that such injunctions must be effective and dissuasive (paragraph 33), equitable and proportionate (paragraph 34) and must ensure a fair balance between the protection of intellectual property and the absence of obstacles to legitimate trade (paragraph 35).
The ECJ furthermore confirms that the intermediary cannot be required to exercise general and permanent oversight over its customers. “By contrast the intermediary may be forced to take measures which contribute to avoiding new infringements of the same nature by the same market-trader” (paragraph 34).