Case C-479/12, H. Gautzsch Großhandel – canopied gazebos and unregistered Community designs [judgment 2014, ECLI:EU:C:2014:75]

For the purposes of Council Regulation (EC) No. 6/2002 on Community designs, who belongs to the circle specialised in the design of garden furniture?

Facts
The claimant, H. Gautzsch Großhandel, sells garden furniture in Germany. One of its products is a canopied garden gazebo. From the middle of 2006, the defendant sold a Chinese-made gazebo. In the eyes of the claimant, the defendant’s gazebo was an almost identical copy.

The claimant brought an action for breach of its unregistered Community design. In order to support its claim, H. Gautzsch Großhandel pointed out that its design originated from the company’s director and dated from the autumn of 2004. It was a design included in the company’s 2005 sales catalogue of April/May. Between 300-500 copies of the catalogue had been circulated not only to Germany’s largest wholesalers of garden furniture but also to other intermediaries, and traders. The defendant’s actions had occurred within the 3 year period of protection afforded to an unregistered Community design.

The defendant denied liability. Its own gazebo was the result of a creative work designed independently in China at the start of 2005 and without any knowledge of the claimant’s gazebo. In March 2005, the defendant had shown its gazebo to European suppliers at its showroom. The defendant’s gazebo had arrived at a Belgian company in the June of that year. And the claimant company had not only been aware of the defendant’s gazebo since the September 2005 Cologne trade fair but also that these gazebos had been sold since August 2006. In any event, the claimant’s claims were no longer valid under laws of prescription.

Questions Referred
According to the website of the UK Intellectual Property Office, the German Supreme Court has asked:

1. Is Article 11(2) of Regulation (EC) No 6/2002 to be interpreted as meaning that, in the normal course of business, a design could reasonably have become known to the circles specialised in the sector concerned, operating within the European Union, in the case where images of the design were distributed to traders?
2. Is the first sentence of Article 7(1) of Regulation (EC) No 6/2002 to be interpreted as meaning that a design could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union, even though it was disclosed to third parties without any explicit or implicit conditions of confidentiality, in the case where
(a) it is made available to only one undertaking in the specialised circles, or
(b) it is exhibited in a showroom of an undertaking in China which lies outside the scope of normal market analysis?
3. (a) Is Article 19(2) of Regulation (EC) No 6/2002 to be interpreted as meaning that the holder of an unregistered Community design bears the burden of proving that the contested use results from copying the protected design?
(b) If Question 3(a) is answered in the affirmative: Is the burden of proof reversed or is the burden of proof incumbent on the holder of the unregistered Community design eased if there are material similarities between the design and the contested use?
4. (a) Is the right to obtain an injunction prohibiting further infringement of an unregistered Community design, provided for in Article 19(2) and Article 89(1)(a) of Regulation (EC) No 6/2002, subject to limitation in time?
(b) If Question 4(a) is answered in the affirmative: Is the limitation in time governed by European Union law and, if so, by which provision?
5. (a) Is the right to obtain an injunction prohibiting further infringement of an unregistered Community design, provided for in Article 19(2) and Article 89(1)(a) of Regulation (EC) No 6/2002, subject to forfeiture?
(b) If Question 5(a) is answered in the affirmative: Is the forfeiture governed by European Union law and, if so, by which provision?
6. Is Article 89(1)(d) of Regulation (EC) No 6/2002 to be interpreted as meaning that claims for destruction, disclosure of information and damages by reason of infringement of an unregistered Community design which are pursued in relation to the entirety of the European Union are subject to the law of the Member States in which the acts of infringement were committed?