Should Article 8(1) read in conjunction with Article 4(1) of Directive [2004/48] be understood to refer to a measure to protect intellectual property rights only when the rightholder’s intellectual property right has been confirmed in these or other proceedings?

No, the applicant does not need to prove that the intellectual property right has been confirmed in other proceedings.

Should Article 8(1) ..., read in conjunction with Article 4(1) of Directive [2004/48] be interpreted as meaning that it is sufficient to lend credence to the fact that that measure refers to an existing intellectual property right, and not to prove that circumstance, especially in a case where a request for information about the origin and distribution networks of goods or services precedes the assertion of claims for compensation on account of an infringement of intellectual property rights?

Yes, it is sufficient to provide reasonably available evidence to lend credence to the fact that the applicant is the rightholder, without needing to fully prove it.

Applicant must provide evidence to satisfy court of rightholder status for information requests.

European Court of Justice (Fifth Chamber) · 27 april 2023 · Judgment · Preliminary ruling

(Reference for a preliminary ruling – Intellectual property – Directive 2004/48/EC – Measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights – Right of information –Locus standi– Need to establish the existence of an intellectual property right in advance)

Rechtsvraag

Whether, in proceedings concerning an infringement of an intellectual property right under Article 8(1) of Directive 2004/48/EC, the applicant must prove that they are the holder of the intellectual property right concerned or if it is sufficient to provide evidence lending credence to the claim.

Regel

Article 8(1), Directive 2004/48/EC (Right of information: Member States must ensure that, in the context of proceedings concerning an infringement of an intellectual property right, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be provided by the infringer and/or any other person who was found in possession of the infringing goods on a commercial scale.)
Article 4, Directive 2004/48/EC (Persons entitled to apply: Member States shall recognize as persons entitled to seek application of the measures, procedures and remedies referred to in Chapter II of this directive the holders of intellectual property rights, persons authorized to use those rights, intellectual property collective rights-management bodies, and professional defense bodies.)
Article 6, Directive 2004/48/EC (Evidence: Member States shall ensure that, on application by a party which has presented reasonably available evidence sufficient to support its claims, the competent judicial authorities may order that such evidence be presented by the opposing party.)
Article 7, Directive 2004/48/EC (Measures for preserving evidence: Member States shall ensure that, even before the commencement of proceedings on the merits of the case, the competent judicial authorities may order prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement.)
Article 9, Directive 2004/48/EC (Provisional and precautionary measures: Member States shall ensure that the judicial authorities may, at the request of the applicant, issue interlocutory injunctions, order the seizure or delivery up of goods suspected of infringing an intellectual property right, and order the precautionary seizure of the movable and immovable property of the alleged infringer.)

Conclusie

The court concluded that Article 8(1) of Directive 2004/48/EC must be interpreted as meaning that, in proceedings concerning an infringement of an intellectual property right, the applicant must provide any reasonably available evidence enabling the court to satisfy itself with a sufficient degree of certainty that the applicant is the right holder, by submitting evidence appropriate to the nature of that right and any special applicable formalities.

Tijdlijn

13-10-2020 TB gave notice to Castorama Polska to cease and desist its infringements of the economic and moral copyright in respect of the 'works' created by her.
15-12-2020 TB brought an action before the Regional Court, Warsaw, seeking an order requiring Castorama Polska and Knor to provide information about the reproductions at issue, including distribution networks and quantities.
21-07-2021 The Regional Court, Warsaw, decided to refer questions to the Court of Justice of the European Union for a preliminary ruling concerning the interpretation of Article 8(1) of Directive 2004/48/EC.
11-10-2021 The request for a preliminary ruling was received at the Court of Justice of the European Union.
17-11-2022 The Advocate General delivered his opinion at the sitting.
27-04-2023 Judgment delivered by the Fifth Chamber of the Court of Justice of the European Union, interpreting Article 8(1) of Directive 2004/48/EC regarding the evidence required to request information in intellectual property rights infringement proceedings.