[Guest post] AG Rantos: existence of IP right does not need to be proven for action to obtain information under Article 8 Enforcement Directive

The IPKat is pleased to host the following post by former GuestKat Jan Jacobi, analyzing the recently released Opinion of Advocate General (AG) Rantos in Castorama Polska, C-628/21, a referral for a preliminary ruling from Poland asking about the correct interpretation of the right to information under the Enforcement Directive 2004/48. Here’s what Jan writes:

AG Rantos: existence of IP right does not need to be proven for action to obtain information under Article 8 Enforcement Directive

by Jan Jacobi

Earlier this year, this now Katfriend reported on a new referral before the Court of Justice of the European Union (CJEU) – case C-628/21 – concerning the right to information under article 8 of the Enforcement Directive (Directive 2004/48/EC). Last week, AG Rantos provided an interesting opinion on the matter that deserves further attention.

Recap of facts

As a brief factual summary (a more detailed report can be found here), the case concerns an alleged copyright infringement of certain images. The applicant, TB, filed for an action under (the national law implementing) Article 8 of the Enforcement Directive, to get further insight on the extent of the infringement. The defendants, Castorama Polska and Knor, alleged that the images were too trivial in nature and could therefore not be subject to copyright protection.

Since TB did not sufficiently refute this, the Polish referring court faced the uncertainty that during the action for information under Article 8, the existence of copyright could not be established. It was therefore unsure whether the action could already be granted, or whether the copyrights of TB needed to be established first. The matter was thus brought before the CJEU for a preliminary ruling.

Analysis of the AG Opinion

The AG sets off by observing that the wording of Article 8 does not require the applicant to also be the ‘holder’ of an IP right. Yet, it does mandate that the request is justified, which entails that it must contain reasoning setting out sufficient facts and evidence on the IP right relied on.

In that sense, the AG states that Article 8 must be read in conjunction with Article 4 of the Enforcement Directive, which is titled ‘persons entitled to apply for the application of the measures, procedures and remedies’. Article 4 essentially lists all those that directly or indirectly hold IP rights, such as the proprietor itself, but also its licensees, collective rights management and defence bodies. From the perspective of Article 4, only the IP holder would be entitled to an action for information under Article 8, which presumes that the existence of an IP right must be established.

Placed in the context and objectives pursued by Article 8 of the Enforcement Directive, the AG sees room for a different approach. It refers to Articles 6 and 7 of the Enforcement Directive, which consists of measures to have evidence handed over or seized. These measures can be requested by a party “who has presented reasonably available evidence” to support its claim of IP infringement. The AG therefore maintains that Article 4 should not be interpreted narrowly in the sense that only IP holders can rely on the measures and remedies of the Enforcement Directive.

With respect to the objectives of Article 8 of the Enforcement Directive, the AG recalls that in previous decisions the CJEU ruled that an action for information may be initiated after infringement proceedings (New Wave/ All Toys, C-427/15) [IPKat here] and also prior to such proceedings (M.I.C.M., C-597/19) [IPKat here]. From these decisions, the AG deducts that the purpose of Article 8 must be distinguished from main infringement proceedings. Especially when the request for information is done in a separate and preliminary way, it serves to obtain full knowledge of the extent of the infringement and to enable the applicant to ‘usefully prepare’ an action to remedy the infringement.

In the stage of such a procedure, the AG continues, it cannot be asked of the applicant to prove it is the holder of the IP at issue. Instead, it is required that the applicant, by means of sufficient evidence, “must lend credence” (point 43) to the fact that it is the holder of the IP right at issue. Addressing the copyrights of the case at hand, the AG finds that it is up to the referring court to establish, on the basis of such sufficient evidence, whether TB lent credence that it is the copyright owner of the disputed images.

The AG also adds that, in order to strike a balance between the interest to obtain information versus the right to protect it, the national courts must determine if an action under Article 8 Enforcement Directive is not being abused by the applicant. In this regard, the courts should consider all the objective measures of the case, including the conduct of parties.

The AG proposes that the CJEU should answer the referred questions as follows:

Article 8(1) of [the Enforcement Directive] must be interpreted as meaning that in the context of an action relating to an infringement of an intellectual property right, the applicant must lend credence, by submitting sufficient evidence, to the fact that he or she is the holder of the intellectual property right in question, in particular where the request for information precedes the assertion of claims for compensation on account of the infringement of the intellectual property right. The national court must also assess the merits of that request and take due account of all the objective circumstances of the case, including the conduct of the parties, in order to ascertain, in particular, that the applicant has not abused that request.

Comment

The proposed answer by the AG is somewhat puzzling as, from its wording and reasoning, it appears to mostly concern the ownership of the IP right, and not so much the existence of that right. This is not merely a semantical difference since it is generally easier to demonstrate ownership (which is more of a factual matter) than the existence/validity of rights (which is more a legal matter).

Consequently, some questions remain. Firstly, what does giving ‘credence’ by means of ‘sufficient evidence’ effectively entail when the existence of the IP right is being challenged? Especially in cases of non-registered IP rights (copyrights, unregistered designs), giving credence to or proving the existence of such rights may be equally challenging.

Secondly, one can argue that the analogy with Article 6 and 7 of the Enforcement Directive to justify a lower threshold to an action for information is farfetched. Articles 6 and 7 are more suitable to be used ‘pre-infringement’, because they can provide evidence whether an IP right has actually been infringed. It allows the claimant to decide if and how it will present its infringement claim.

Article 8 is less suitable for pre-infringement application, because from its structure, it already assumes the infringement has been established. It gives an irreversible insight into trade and distribution channels to determine the extent and origin of the infringement. This can be problematic when a court in main proceedings rules that there were no valid IP rights to begin with.

This Katfriend feels that the AG did not sufficiently address this problem, other than referring to the (rather fact-specific) M.I.C.M decision by the CJEU, on the basis of which it is difficult to deduct a categoric right to pre-infringement application of Article 8.