Posted by Laura Ercoli on Wednesday July 6th, 2016

Community design licensees have standing to sue for damages as well as for infringement


The Court of Justice of the European Union has made it clear that Community design law is intended to offer design licensees the means to defend their intellectual property rights and to claim damages.

The Court of Justice of the European Union (CJEU) has ruled that the exclusive licensee of a registered Community design has standing to sue on its own for infringement of the design even though the license is not entered in the Register of Community designs, and may claim damages for its own loss.

Facts of the case
Gruner Welle Vertriebs GmbH (GWV) is the exclusive licensee in Germany for a Community design concerning laundry balls. Finding that a similar ball was being sold in shops owned by Thomas Philipps GmbH (Philipps), GWV brought proceedings for damages.

The German lower court held Philipps liable, and Philipps appealed to the Higher Regional Court of Dusseldorf claiming that GWV was not entitled to bring claims arising from the Community design.

The Regional Court requested the Court of Justice of the European Union to interpret EU Regulation No. 6/2002 on Community Designs (the Regulation) in order to answer the following questions:

a)    May a licensee whose license has not been entered in the register of Community designs bring claims for the infringement of a registered Community design?

b)    May the exclusive licensee of a Community design, with the consent of the right holder, bring an action on its own claiming damages for its own loss?

The CJEU’s ruling
The decision in case C-419/15 was issued on 22 June 2016, and answered both questions in the affirmative.

Regarding the first question, the CJEU held that the Regulation must be interpreted as meaning that a Community design licensee may bring infringement proceedings regardless of whether the license is entered in the Community design register.

As for the second question, the CJEU pointed out that the Regulation allows a non-exclusive licensee to bring infringement proceedings on its own with the consent of the design’s owner, and allows an exclusive licensee to bring proceedings on its own even without the owner’s consent, providing that the owner is informed and does not take action.

Although the Regulation does not expressly state whether the licensee can claim damages if it brings the infringement action on its own, the CJEU found that the Regulation’s provisions must be read together, also taking into account the objective, set out in the Regulation’s recital 29, of ensuring that the licensee has the procedural means to bring infringement proceedings and defend its rights.

Consequently, in answer to the second question the CJEU held that a Community design licensee may claim damages for its own loss in infringement proceedings.

6 July 2016

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