Who is part of the circles specialised and what do they know about what happens where? That depends, says the CJEU in Gautzsch Großhandel

Designs (registered and unregistered) are only offered protection in Europe if they are new and have individual character compared with all the designs which have gone before.

Those prior designs have to have been “made available to the public”. Article 7(1) of the Community Design Regulation (the Regulation) deems a design to have been made available to the public if it has previously:

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“been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed… 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”.

Likewise in Article 11 of the Regulation the date on which a Community unregistered design’s three year protection starts is from the date it is made available to the public, applying the same test.

What do the words I have underlined mean? The Court of Justice of the European Union (CJEU) has today given judgment in Case C-479/12, H. Gautzsch Großhandel v Münchener Boulevard Mobel Joseph Duna, to address this question. It does so in its usual style, with a decision which in essence says “it all depends, go and ask the national court – we’re not ruling anything out.”

It addressed three questions on disclosure:

1.    Are traders, as opposed to designers and manufacturers, part of the “specialised circles”?

2.    Do the specialised circles know about events taking place outside of the EU (eg, in China)?

3.    Do the specialised circles know about disclosure to a single undertaking in the sector concerned in the EU?

The gist of the answers was: it can’t be ruled out; they might; and it is quite possible in the right circumstances. But it all depends on the facts – and those are for the national court.

A little more in the way of detail, plus the CJEU’s views on some less exciting questions including where the burden of proof lies in unregistered Community design infringement proceedings, is below.

Background

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Münchener Boulevard Mobel Joseph Duna (Duna) produced and sold a gazebo (which is not, despite how it may sound, an animal). Gautzsch Großhandel (GG) started to sell its own “Athen” gazebo, imported from China. The former sued the latter claiming the Athen infringed its unregistered Community design rights in its gazebo.

In the battle to establish who had the prior right, Duna relied upon 300 to 500 “new products” leaflets sent to the sector’s largest furniture retailers and to two German furniture-purchasing associations in April and May 2005.

GG claimed that the Athen design had been independently created in China at the beginning of 2005. It was then presented to European customers in March 2005 at the Chinese manufacturer’s showrooms in China. Further, a model had been sent to a Belgian company in June 2005.

The case made its way up to the German Supreme Court, the Bundesgeritchshof (BGH). It turned to the CJEU for help in determining whether the designs would, in these circumstances, in the normal course of business become known to the circles specialised in the sector concerned, operating within the Community.

The CJEU’s judgment on disclosure

Q1 – disclosure to traders

Who is part of the specialised circles? The BGH was concerned that “specialised circles” included only persons involved in creating designs and developing or manufacturing products based on those designs within the sector concerned. This would exclude traders, as they do not have a creative influence on the design of the product they are marketing.

Incorrect says the CJEU. That would give the concept of “specialised circles” too restrictive a meaning. The CJEU doesn’t say it expressly, but it seems like it favours a broad interpretation of specialised circles.

As noted above, while it would not exclude disclosure to traders as sufficient, the CJEU concluded that whether or not it is enough in a given case is a question of fact for the national court.

Q2 – disclosure in China or to one EU undertaking

The BGH put its question on the Chinese exhibition as relating to a disclosure “in a showroom of an undertaking in China which lies outside the scope of normal market analysis”.

The CJEU noted that it was not “absolutely necessary” for the events constituting disclosure to have taken place within the European Union in order for a design to be deemed to have been made available to the public.

But again, the conclusion was a familiar one “The question whether events taking place outside the European Union could reasonably have become known to persons forming part of those circles is a question of fact” and so for the national court.

The same was true of disclosure to a single undertaking in the sector concerned in the EU – although the court did opine that “it is quite possible that, in certain circumstances, a disclosure of that kind may indeed be sufficient”.

Comment on disclosure

Yes, no, maybe - can you repeat the question?

Although there is a lot of “it depends” in this judgment, you can draw out some principles. Specialised circles are not just populated with creative types, but (in the right circumstances) traders as well – although no doubt successful traders have a keen eye for creative design, so that they can pick out products that will sell.

The CJEU has declined to confine the knowledge of those circles, leaving the possibility open that events abroad or disclosure to a single business might be enough, again given the right circumstances.

It looks like the CJEU is keen to keep a fairly broad and flexible test, one that – as noted above – doesn’t rule anything out.

And those other questions…

Q3 – who bears the burden of proof in demonstrating copying in unregistered Community design infringement proceedings?

The person seeking to assert his or her right of course. Rules of evidence are another question for the national court, but the CJEU stressed as follows. If it is likely to be “impossible or excessively difficult” for the rightholder to come up with evidence of copying (as is often the case where the only person who knows if the defendant copied is the defendant himself), the national court must use all procedures available to it to counter that difficulty, including any rules which provide for the burden of proof to be “adjusted or lightened”. This points towards the need for a rightholder to establish facts from which copying might be reasonably inferred, before the burden shifts to the defendant to rebut those facts (or to prove independent creation as per Regulation 19(2) paragraph 2).

Q4 and 5 – is the rightholder’s right to an injunction against an infringer extinguished over time?

This one’s a question of national law.

Q6 – which Member State’s laws govern particular remedies for infringement?

The CJEU held that claims for destruction of infringing products are governed by the law of the Member State in which the acts of infringement or threatened infringement have been committed. On the other hand, claims for compensation for damage resulting from infringement are governed by the national law of the Community design court hearing the proceedings.