Applications for information on infringers can be made outside of IP infringement proceedings

A MegaBabe in 1992 (Honey, I Blew up the Kid
- the largely forgotten sequel to Honey, I Shrunk the Kids)

Do you need to start IP infringement proceedings in order to get information about an infringer under Article 8(1) IP Enforcement Directive?

As the title to this post suggests, the answer is no.

The CJEU has recently explained why following a referral from the Czech Supreme Court in New Wave CZ v Alltoys (Case C-427/15).

The dispute concerns the mark MegaBabe.

New Wave initially sued Alltoys for using the MegaBabe mark without its consent.  It won that first action and obtained an injunction against further infringement but the court did not allow New Wave to change its application to also request information from Alltoys relating to the goods in question.

Therefore New Wave brought a new action requesting an order that Alltoys communicate all information on the origin and distribution networks for the MegaBabe branded goods. Whether it was open to New Wave to make this request outside the context of IP infringement proceedings was sufficiently unclear that the Supreme Court referred it to the CJEU for consideration.

What was the question referred?

‘Must Article 8(1) of [the Enforcement] 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)?’

What did the CJEU say?

The judgment noted that for the purpose of interpreting a provision of EU law, it is necessary to consider not only its wording but also the context in which it occurs and the objectives pursued by the rules of which it is part (Liffers C-99/15, para 14).

The court went on to note that "in the context of proceedings concerning an infringement of an intellectual property right" can include separate proceedings initiated after the main proceedings concerning infringement of an IP right have concluded.

The European Commission had submitted observations to the court that it does not follow from any of the different language versions of Article 8(1) that the right to request information must be exercised in the same set of proceedings.

An important point was that the right to information did not just come from the infringer but from third parties who are not necessarily parties to the proceedings.  Limiting the right to information to the context of IP infringement proceedings would be too restrictive an interpretation. 

So there you have it - the right to information survives an earlier IP infringement case.