Article 8.1 of Directive 2004/48. Judgement of the Court of Justice (Ninth Chamber), 18 January 2017, in Case C-427/15 NEW WAVE CZ, a.s. & ALLTOYS, spol. s.r.o.

Reference for a preliminary ruling from the Supreme Court of the Czech Republic submitted in proceedings between NEW WAVE CZ, a.s. & ALLTOYS, spol. S.r.o.

NEW WAVE filed a first claim against ALLTOYS for having used the mark MegaBabe without their consent when offering their goods.

In this first proceeding, the Czech Court declared by final judgement that ALLTOYS had infringed the rights that NEW WAVE hold over the MegaBabe mark, and ordered that they refrain from continuing with the infringing conduct in the future and withdrew the goods in question that were already on the market.  The Court did not however authorise NEW WAVE to modify their claim in order to also request that ALLTOYS provide them with all the information regarding the goods in question.

Following final closure of proceedings, NEW WAVE filed a new claim before the City Court of Prague, with the objective that ALLTOYS be ordered to provide all the information regarding the origin and distribution network of the MegaBabe marked  goods which the latter had stored, marketed or imported, in the past or present, specifically the name and surname, business name or designation, as well as the address or business address of the supplier, manufacturer, wholesaler, distributor, and any other previous holder of the merchandise, and data relating to amounts delivered, stored, received, ordered or sold, plus exact sales prices of the different articles and prices paid by ALLTOYS to the supplier for the goods delivered.

By Judgement of 26 April 2011, the City Court of Prague rejected the claim made by NEW WAVE.   This Court considered that it was not possible to invoke a right of information by means of a claim made independently, since Article 3 of the National Law Nº 221/2006 establishes that such a right may only be invoked via request to the court hearing a claim relating to the infringement of a right.  Consequently, according to this Court, in the main proceedings relating to the infringement of that right, this had concluded by means of final judgement delivered in the first proceeding.

NEW WAVE lodged an appeal with the Supreme Court of Prague, who, by judgement of 27 February 2012, reversed the decision of first instance and granted an order to ALLTOYS to communicate the requested information to NEW WAVE.  It was considered that a proceeding concerning information being made available, that has not been voluntarily provided, is also a proceeding concerning the infringement of a right.

ALLTOYS lodged an appeal in cassation against the judgement of the mentioned Court of Appeal before the Supreme Court.

This Court states that, although the National Law Nº 221/2006 has transposed the Directive 2004/48 of the Czech legal system, there is however a difference between the text of this Law and that of the Directive.  In effect, whilst Article 3 of the National Law Nº 221/2006 establishes the possibility to obtain information by filing a claim within the context of proceedings concerning infringement of a right, Article 8(1) of Directive 2004/48, in the Czech version, establishes an obligation for Member States to guarantee the possibility to obtain information in relation to a proceeding regarding the infringement of an intellectual property right.  According to the referring court, this national provision has to be interpreted in conformity with Directive 2004/48.  However, it does indicate that the interpretation of this expression, figuring in Article 8(1) of this Directive, is not univocal.

Under these circumstances, the Supreme Court decided to suspend the proceeding and refer the following question to the Court of Justice for a preliminary ruling:

Should Article 8(1) of Directive 2004/48/EC be interpreted in the sense that it fits into the context  of proceedings concerning an infringement of an intellectual property right and also the situation where, after the final conclusion of a proceeding where it was stated that an intellectual property right was infringed, the plaintiff requests, in a different proceeding, the data regarding the origin and the distribution networks of the merchandise and services that infringe this intellectual property right (e.g., in order to exactly quantify damages and, thereafter, claim compensation for this)?

The Court concludes that the answer to the question referred must therefore be that Article 8(1) of the Directive 2004/48 should be interpreted as meaning that it is applicable to a situation such as that which is the subject-matter of the dispute in the main proceedings, wherein after the definitive conclusion of a proceeding that declared the existence of infringement of an intellectual property right, a plaintiff requests, via an independent proceeding, information regarding the origin and the distribution networks of the merchandise or the services that infringe this right.