The proximity and efficiency of the courts must be given priority over the objective of specialisation, the ECJ ruled, rejecting the national provision that the courts have jurisdiction over EU designs. This means that temporary injunctions against community designs must also be applied for before the Community Design Courts.
The question referred by the Netherlands asked for an interpretation of Article 90(1) CDR (see Regulation No 6/2002), in particular with regard to Article 81, which provides for the exclusive application of specialised courts for protected community designs. It is possible that the exclusivity provided for in Article 81 will be abolished in Article 90, which allows the Member States to involve other national courts in addition to the specialised court (these courts are designated under Article 80(1)). Yesterday the ECJ ruled on this issue.
The question of the referring Dutch court referred specifically to the first part of Article 90(1) of Regulation No 6/2002, i.e. the determination of the competent courts for EU designs in an EU Member State and with regard to the ordering of interim measures and protective measures – including temporary injunctions – in respect of a Community design.
The background to this is Dutch legislation. By adopting Article 3 of the Law of November 2004, the Netherlands legislature sought to make use of the specific intellectual-property expertise of the rechtbank Den Haag (District Court, The Hague) and of the Gerechtshof Den Haag (Court of Appeal, The Hague, Netherlands). However, the question whether the courts designated in Article 80(1) of Regulation No 6/2002 have exclusive jurisdiction over interim measures, including protective measures, has been answered differently in case-law and doctrine, including in Member States other than the Kingdom of the Netherlands, the referring Dutch court described.
According to the Netherlands Government, Article 90 must be regarded as the general rule for protective and provisional measures, which must be supplemented as follows, depending on the nature of the proceedings:
- in actions “relating to the infringement and validity of Community designs (Article 81), only the specialised courts should be able to take the appropriate protective and provisional measures, since they have exclusive jurisdiction in such proceedings;
- for acts other than those referred to in Article 81, Article 90(1) should apply, which allows any court of a Member State to take interim or protective measures, including specialised courts.
Advocate General saw no jurisdiction for national courts
The Advocate General did not share that view in his Opinion. The system of specialised Community design courts contributes to the uniformity of case-law and to the uniform application of the substantive rules on actions for infringement and invalidity, the Advocate General stated in his Opinion of September 2019, which is also in line with the objectives of Regulation No 6/2002.
In yesterday’s judgment, the European Court of Justice (ECJ) confirmed the Advocate General’s reasoning. In principle, the interpretation of a provision of Union law must take into account not only its wording, but also its context and the objectives of this provision, the ECJ stressed. In recital 29 of Regulation No 6/2002, the Union legislator had pointed out that the rights conferred by a Community design must be enforceable throughout the Union, the Court explained. Consequently, the principle of proximity and efficiency of the courts should prevail over the objective of specialisation.
Concept of “may” in Article 90 CDR
The Dutch Government argued that this provision did not apply to the domestic jurisdiction of the courts of a Member State, but laid down the rules of international jurisdiction for provisional and protective measures. The ECJ contradicted this. In particular, the first part of the Regulation negotiated here applies to the domestic jurisdiction of the courts.
In this context, the use of the word “may” in Article 90(1) of Regulation No 6/2002 was discussed. The use of this word could not be understood as granting the Member States a discretion with regard to the allocation of jurisdiction for Community designs, the ECJ made clear. “May” does not refer to the EU Member States. The word “may” refers only to persons who wish to apply to a court for judicial protection or defence of their design in connection with one of the acts listed in Article 81 of Regulation No 6/2002. The expression “may” in Article 90 is therefore not an enabling provision.
In addition, the effect of such provisional measures, including protective measures, is inherently limited in time, the Court stated. Their granting by the court having jurisdiction over the case does not prejudge the decision on the action for infringement or for annulment.
No nationally determined jurisdiction of the courts for EU designs
The ECJ therefore rejected the national determination of the jurisdiction of the courts for EU designs. Thus, injunctions against EU designs must also be applied for before the Community Design Courts. The Court ruled that Article 90(1) of Regulation (EC) No 6/2002 on Community Designs should be interpreted as meaning that the courts and tribunals of the Member States with jurisdiction to order provisional measures, including protective measures, in respect of a national design also have jurisdiction to order such measures in respect of a Community design.
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