1. 

By its request for a preliminary ruling, the Bundesgerichtshof (Germany) seeks from the Court an interpretation of Article 7(1), Article 11(2) and Article 89(1)(a) and (d) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs ( 2 ) (‘the Regulation’).

2. 

For the first time, the Court is called upon to give its views on the meaning of the term ‘circles specialised in the sector concerned, operating within the Community’ used in Article 7(1) and Article 11(2) of the Regulation, and of the term ‘could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community’ used in Article 7(1) of the Regulation (questions 1 and 2). The Court is also asked to consider a number of procedural questions (burden of proof, loss of rights through lapse of time and the time-barring of claims) and the question of the applicable law (questions 3 to 6).

3.

Recitals 21 and 22 in the preamble to the Regulation are worded as follows:

4.

Under Articles 1(1) and (2)(a) of the Regulation, a design which complies with the conditions set out in the Regulation is protected as an ‘unregistered Community design’ if made available to the public in the manner provided for in the Regulation.

5.

Article 4 of the Regulation, entitled ‘Requirements for protection’, provides in paragraph (1) that a design is to be protected by a Community design to the extent to which it is new and has individual character.

6.

Article 5 of the Regulation, entitled ‘Novelty’, provides:

…’

7.

Article 6 of the Regulation, entitled ‘Individual character’, provides in paragraph (1)(a):

‘A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:

8.

Article 7 of the Regulation, entitled ‘Disclosure’, states in paragraph (1):

‘For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Article 5(1)(a) … except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.’

9.

Article 11 of the Regulation, entitled ‘Commencement and term of protection of the unregistered Community design’, provides in paragraphs (1) and (2):

‘1.   A design which meets the requirements under Section 1 shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the Community.

2.   For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.’

10.

Article 19 of the Regulation, entitled ‘Rights conferred by the Community design’, provides in paragraph (2):

‘An unregistered Community design shall, however, confer on its holder the right to prevent the acts referred to in paragraph 1 only if the contested use results from copying the protected design.

The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder.’

11.

Article 85(2) of the Regulation, entitled ‘Presumption of validity — Defence as to the merits’, is worded as follows:

‘In proceedings in respect of an infringement action or an action for threatened infringement of an unregistered Community design, the Community design court shall treat the Community design as valid if the right holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his Community design. However, the defendant may contest its validity by way of a plea or with a counterclaim for a declaration of invalidity.’

12.

Under Article 88 of the Regulation, entitled ‘Applicable law’:

‘1.   The Community design courts shall apply the provisions of this Regulation.

2.   On all matters not covered by this Regulation, a Community design court shall apply its national law, including its private international law.

3.   Unless otherwise provided in this Regulation, a Community design court shall apply the rules of procedure governing the same type of action relating to a national design right in the Member State where it is situated.’

13.

Article 89 of the Regulation, entitled ‘Sanctions in actions for infringement’ provides:

‘1.   Where in an action for infringement or for threatened infringement a Community design court finds that the defendant has infringed or threatened to infringe a Community design, it shall, unless there are special reasons for not doing so, order the following measures:

…

…’

14.

Münchener Boulevard Möbel Joseph Duna GmbH (‘MBM Joseph Duna’) markets in Germany a canopied gazebo, the design for which was created by the director of that company in autumn 2004. During 2006, the company H. Gautzsch Großhandel GmbH & Co. KG (‘Gautzsch Großhandel’) for its part started selling a gazebo under the name ‘Athen’, manufactured by the Chinese undertaking Zhengte.

15.

Taking the view that the ‘Athen’ gazebo was a copy of its own design and claiming for the latter the protection available for unregistered Community designs, MBM Joseph Duna commenced infringement proceedings against Gautzsch Großhandel before the Landgericht Düsseldorf, seeking the following orders: first, that Gautzsch Großhandel should cease selling the Athen gazebo, surrender the infringing products in its possession or owned so that they may be destroyed and give a report on its dealings and, second, that it be ordered to pay compensation.

16.

MBM Joseph Duna claimed in particular, in support of its action, that its design appeared in April and May 2005 in its ‘MBM Neuheitenblätter’ (new products leaflet) which had been distributed to the main dealers in the sector selling garden furniture, and to German furniture-purchasing associations.

17.

Gautzsch Großhandel stated in its defence that its Athen gazebo had been created by the Chinese manufacturer Zhengte at the beginning of 2005 independently, without any knowledge of the MBM Joseph Duna design, and presented to European customers in March 2005 at the Zhengte showrooms in China. Asserting that a model of that gazebo had been sent in June 2005 to a company whose headquarters were in Belgium and that MBM Joseph Duna had been aware of the existence of that model since September 2005 and knew that it had been marketed since August 2006, it contended that the latter’s claims were time-barred and its rights extinguished through lapse of time.

18.

The court of first instance found that there was no need to give a decision on the first and second heads of claim in view of the expiry of the three-year protection period. It ordered Gautzsch Großhandel to provide information on its dealings and held that it was under an obligation to make financial reparation.

19.

The appeal brought by Gautzsch Großhandel against that judgment was dismissed. The appeal court took the view that, under Articles 19(2) and 89(1)(a) and (d) of the Regulation and under the German Law on the legal protection of designs, the first heads of claim were well founded originally and MBM Joseph Duna was in fact entitled to receive information and also compensation.

20.

In an appeal on a point of law brought by Gautzsch Großhandel before the Bundesgerichtshof, that court observed, first, that the appeal court had taken the view that the MBM Joseph Duna model had been made available for the first time to the public at the time of distribution of 300 to 500 copies of the MBM new product leaflets which included images of the design in question, in April and May 2005, to retailers and wholesalers and to two German furniture-purchasing associations.

21.

That court raises the question whether the transmission of images of that design, on that scale, to traders is sufficient for the design, in the normal course of business, to have become known to circles specialised in the sector concerned, operating in the European Union, within the meaning of Article 11(2) of the Regulation. It wonders, in that regard, whether specialised circles might not include anyone other than the persons who, within the sector concerned, have a creative influence on the design of the product.

22.

Second, the referring court states that the appeal court accepted that the MBM Joseph Duna design was new, within the meaning of Article 5(1)(a) of the Regulation, taking the view that earlier disclosure of the Athen design did not preclude recognition of that novelty.

23.

Even if the Athen model had been exhibited in showrooms of Zhengte in China in March 2005 and presented to Kosmos in Belgium, the specialised circles in the sector concerned could not, in the appeal court’s view, have thereby acquired knowledge of that model in the normal course of business.

24.

Having regard to those considerations, the referring court asks in what circumstances a design, even though disclosed to third parties without any express or implied condition of confidentiality, cannot be known to specialised circles in the sector concerned within the European Union within the meaning of Article 7(1) of the Regulation.

25.

Third, the referring court observes that the appeal court considered that the design at issue did not constitute a work of independent creation but a copy of the MBM Joseph Duna design, acknowledging that the latter benefited from an easing of the burden of proof on that point, in view of the actual material similarities between the two designs at issue. It raises the question as to which party has the burden of proving, for the application of Article 19(2) of the Regulation, that use of the unregistered Community design derives from a copy of the protected design.

26.

Fourth, the Bundesgerichtshof observes that the appeal court considered that the right to obtain an injunction provided for in Article 19(2) and Article 89(1)(a) of the Regulation was not extinguished on the date when the action was brought. It asks, in that regard, whether the right to obtain an injunction on the ground of infringement of a design is subject to a limitation period and, if so, by what legal provisions that limitation period is governed, in so far as the Regulation contains no specific provisions on that point.

27.

Fifth, the appeal court having also rejected Gautzsch Großhandel’s plea alleging that the right to obtain an injunction was time-barred, the referring court considers that the question arises whether, and if so under what conditions, a right to obtain an injunction prohibiting further infringement of an unregistered Community design, based on Articles 19(2) and 89(1)(a) of the Regulation, may be time-barred. It is important, in its view, to determine whether the circumstances which have prompted Gautzsch Großhandel to plead that the claim is time-barred fall within the category of ‘special reasons’ within the meaning of the latter provision.

28.

Sixth, and last, the referring court asks whether the rights concerning destruction, information and compensation, which extend throughout the European Union, must conform to the national law of the Member State in whose territory those rights are invoked. It observes, in that regard, that a connection only to the law of that Member State might be justified from the standpoint, in particular, of effective application of the law, but that Article 89(1)(d) of the Regulation might militate against that approach, as might Article 8(2) of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (‘Rome II’), ( 3 ) which also militates in favour of application of the law of the Member State in which infringing acts have been committed.

29.

By decision received by the Court of Justice on 25 October 2012, the Bundesgerichtshof stayed its proceedings and referred to the Court under Article 267 TFEU the following questions:

30.

Written observations were lodged by Gautzsch Großhandel and the European Commission on 4 February and 15 February 2013 respectively. In accordance with Article 76(1) and (2) of the Rules of Procedure of the Court of Justice, since the Court took the view that it had sufficient information before it and the parties did not request otherwise, no arrangements were made for oral argument to be presented.

31.

The first two questions concern the concept of disclosure referred to in Articles 7(1) and 11(2) of the Regulation. They are concerned more specifically with interpretation of the expression ‘circles specialised in the sector concerned, operating within the Community’ used to define disclosure. The purpose of the other four questions is to determine the law applicable to a number of procedural and substantive problems.

32.

By its first question, the referring court seeks a ruling from the Court of Justice on the meaning of the term ‘specialised circles’ used in Article 11(2) of the Regulation: is the distribution of images of a design to traders sufficient for it reasonably to be considered that that design has become known in the circles specialised in the sector concerned, operating in the European Union?

33.

It is therefore a question of choosing between a restrictive interpretation — according to which the specialised circles include only persons who, within the sector concerned, are responsible for designing, developing or manufacturing products in accordance with the designs in question — and a broader interpretation — which includes traders and dealers within ‘circles specialised in the sector concerned’.

34.

The referring court seems inclined to favour the second interpretation. I share that view.

35.

From a literal point of view, the first sentence of Article 11(2) of the Regulation comprises two parts. It starts by enumerating situations in which a design can be regarded as having been made available to the public within the European Union. That is the case ‘if it has been published, exhibited, used in trade or otherwise disclosed’. The sentence then goes on to indicate the particular circumstances which will make it possible to convert such making available into ‘disclosure’ (the two parts being joined by the conjunction ‘in such a way that’). That will be the case if ‘in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community’.

36.

Within that single sentence, the use of the conjunction ‘in such a way that’ followed by the reference to ‘these events’ necessarily leads to the conclusion that all the situations and persons alluded to in the first part of the sentence, including the commercial sphere, are included in the concept of specialised circles. The expression ‘in the normal course of business’, used in the second part of the sentence, also militates in favour of inclusion of dealers and traders in the ‘circles specialised in the sector concerned’.

37.

The aim pursued and the general framework of which the Regulation forms part do not call that interpretation in question.

38.

As summarised by the High Court of Justice (England and Wales) Chancery Division (Patents Court) (United Kingdom), the question that arises is ‘who is in the circle?’ ( 4 ) Moreover, I agree with that court’s answer to that question, namely that, in principle, the concept includes all persons who are involved in trade associated with the products in the sector concerned. That consequently includes not only those who design and manufacture them, but also those who advertise, market, distribute and sell them by way of commercial activity in the European Union. ( 5 )

39.

It appears to me therefore that the answer to be given to the first question must be positive: Article 11(2) of the Regulation must be interpreted as meaning that, in the normal course of business, a design may reasonably have become known to the circles specialised in the sector concerned, operating within the European Union, where images of that design have been distributed previously to traders operating in the sector concerned.

40.

The second question relates not to Article 11(2) but to Article 7(1) of the Regulation. However, the term to be defined is still ‘specialised circles’. Whilst the first question was concerned with the issue, for the owner of the design, of whether the design for which he claims protection has been disclosed sufficiently to benefit from protection under the Regulation, the second question is, rather, the one raised by the alleged infringer of whether the owner could have been aware of the ‘third party’s’ design (in this case, that of the alleged infringer) before the disclosure of his own design, and therefore lose the right to protection that he claims.

41.

In fact, the referring court is asking whether, in the event of the design being made available to only one undertaking in the relevant sector (question 2a) or the exhibition of that design in the showrooms of an undertaking in China, that is to say outside the scope of normal market analysis (question 2b), that design can be regarded as having ‘reasonably… become known to the circles specialised in the sector concerned, operating within the European Union’.

42.

It will be remembered that Article 7(1) of the Regulation provides that a design is to be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b) of the Regulation, as the case may be.

43.

That provision envisages two exceptions. First, a design will not be deemed to have been made available to the public if it has been disclosed to a third person under explicit or implicit conditions of confidentiality (a hypothesis ruled out in the referring court’s question). Second, the general rule will likewise not apply if the events, which in principle constitute disclosure, ‘in the normal course of business, could not reasonably have become known to the circles specialised in the sector concerned, operating within the Community’.

44.

It seems to me that the answer to the first part of the second question is to be found in the actual text of Article 7(1) of the Regulation.

45.

In so far as the legislature chose, in the wording of the first exception, to use the plural (‘except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community’), ( 6 ) it cannot be inferred from that text that disclosure to only one undertaking would be sufficient to meet the requirement laid down in Article 7, even if that undertaking belonged to the ‘specialised circles’ concerned.

46.

The second part of the second question, concerning the impact of exhibiting a design in the showroom of an undertaking in China, is more problematic.

47.

As the Commission pointed out in its observations, there is an essential difference between the first sentence of Article 7(1) and Article 11(2) of the Regulation, in so far as Article 11(2) refers expressly to disclosure ‘within the Community’, whereas the first sentence of Article 7(1) makes no reference of that kind to the territory of the European Union.

48.

It therefore logically follows that, in assessing whether there has been disclosure within the meaning of Article 7(1) of the Regulation, it is necessary in principle to rely on distribution, regardless of where it took place. The national courts and academic writers also appear to endorse that reading of the text. ( 7 )

49.

However, it must be observed that Article 7(1) of the Regulation makes it clear, as does Article 11(2), that the potential entities to which the design has been disclosed are undertakings which, operating within the European Union, must be regarded as belonging to the ‘circles specialised in the sector concerned’.

50.

That clear statement is not without significance. It derives from a proposal for an amendment made by the Economic and Social Committee ( 8 ) with the specific aim of limiting the scope of the proposal of the Commission, which initially considered that novelty had to be determined worldwide, without any further indication. ( 9 ) In order to limit the impact of a practice whereby the sellers of infringing products (essentially in the textile industry) obtain certificates falsely attesting that the design at issue had already been created in the past by third parties, the Economic and Social Committee suggested that the definition of disclosure in Article 5(2) of the proposal (Article 7(1) of the Regulation) should be supplemented as follows: ‘[a] design shall be deemed to have been made available to the public if it has been published following registration or exhibited, used in trade or otherwise disclosed, unless this could not reasonably be known to specialist circles in the sector in question operating within the Community before the date of reference’. ( 10 )

51.

The reference to the knowledge of specialised circles operating within the European Union is not therefore fortuitous. On the contrary, it is the result of a particular concern being taken into account. As summarised by certain authors, there are two elements: one, which is absolute, being disclosure anywhere in the world, and the other, of a relative nature, being knowledge on the part of circles specialised in the sector concerned, within the European Union. ( 11 )

52.

The use of the terms ‘normal’ and ‘razoblamente’ in the Spanish version, ‘normal’ and ‘reasonably’ in the English version, ‘normale’ and ‘raisonnablement’ in the French version, and ‘normale’ and ‘redelijkerwijs’ in the Dutch version, also influences the examination to be undertaken by the court responsible for assessing the impact of any such alleged disclosure. The first can be defined as ‘corriente o habitual’, ‘conforming to a standard; usual, typical or expected’, ‘ce qui est dépourvu de tout caractère exceptionnel; qui est conforme au type le plus fréquent’, and ‘overeenkomstig de regel, niets bijzonders of verontrustends; als norm dienend’. The second refers to what is claimed ‘de manera razonable’ or, that is to say ‘proporcionada o equilibrada’, ‘to a moderate or acceptable degree’‘sans prétention excessive, sans trop exiger’, or ‘met billijkheid’ or ‘met verstand redenerend’. ( 12 )

53.

The persons concerned cannot therefore be asked to take special and far‑reaching measures in order to become acquainted with an earlier design. As the Commission points out in its written observations, if the probability that the events were not known is greater than the probability that they were, they cannot be regarded as having become known in the normal course of business. In other words, it is appropriate to a certain extent to refer to the quod plerumque fit. ( 13 )

54.

In order to answer the question from the national court, it is therefore necessary to put oneself in the place of professionals operating within the territory of the European Union and to ask whether they could have acquired knowledge, reasonably and in the normal course of business, of the design in the manner claimed.

55.

These various interpretative parameters lead me to the view that presentation of a design in a showroom of only one undertaking, which, moreover, is situated in China, is not sufficient to give rise, in the normal course of business, to knowledge of the design by specialised circles operating in the European Union. On the other hand, the position would be different if the design had been presented in China, for example, at a well-known international fair in which the main or most of the European protagonists in the relevant sector participated. ( 14 )

56.

By its third question, as in the case of the fourth and fifth questions, the Bundesgerichtshof asks the Court about the rules of procedure applicable to actions under Article 19(2) of the Regulation (prohibition on grounds of infringement). The third question is concerned more particularly with the burden of proving that the disputed use derives from a copy of the protected design.

57.

Title II of the Regulation is headed ‘The law relating to designs’. Article 19 of the Regulation is the first article in Section 4, which is entitled ‘Effects of the Community design’. That article itself has the heading ‘Rights conferred by the Community design’. The first paragraph of Article 19 states: ‘[a] registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it.’ The second paragraph of Article 19, for its part, provides that ‘[a]n unregistered Community design shall, however, confer on its holder the right to prevent the acts referred to in paragraph 1 only if the contested use results from copying the protected design.’

58.

According to recital 22 to the Regulation, ‘[t]he enforcement of these rights is to be left to national laws’, since the Regulation only provides for ’some basic uniform sanctions in all Member States.’

59.

Moreover, Article 88 of the Regulation expressly endorses that recital by providing, in paragraphs 2 and 3, that ‘[o]n all matters not covered by this Regulation, a Community design court shall apply its national law, including its private international law’ and that, subject to any contrary provision of the Regulation, it ’shall apply the rules of procedure governing the same type of action relating to a national design right in the Member State where it is situated’.

60.

Article 85(2) of the Regulation nevertheless provides that ‘[i]n proceedings in respect of an infringement action or an action for threatened infringement of an unregistered Community design, the Community design court shall treat the Community design as valid if the right holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his Community design.’

61.

The two last-mentioned articles form part of Title IX of the Regulation, entitled ‘Jurisdiction and procedure in legal actions relating to Community designs’.

62.

It is clear from the structure of the Regulation, as briefly described above, that no rule of procedure can be inferred from Article 19(2) of the Regulation.

63.

On the contrary, that Article is the provision which lays down the substance of the right of a holder of a Community design, regardless of any procedural consideration: the holder of an unregistered Community design is entitled to prohibit various acts, provided that the disputed use derives from a copy of the design in question.

64.

Moreover, it is apparent from recital 22 and Article 88 of the Regulation that determination of the rules of procedure — including the burden of proof — is a matter for each national legislature. ( 15 ) Moreover, I endorse the Commission’s view, in so far as it states in its written observations that Article 85(2) of the Regulation cannot be applied by analogy. I also consider that that provision refers only to the burden of proving fulfilment of the conditions laid down in Article 11 of the Regulation for the purpose of securing protection of the unregistered Community design, not that of proving use of a copy of that design.

65.

It is therefore appropriate, at this stage, to say in reply to the referring court that Article 19(2) of the Regulation cannot be interpreted as meaning that it is incumbent upon the holder of an unregistered design to prove that the disputed use derives from a copy of that design, that issue being a matter for the national legislature. In those circumstances, it would therefore be inappropriate to answer question 3(b), which asks the Court about a possible reversal of the burden of proof or possible easing of that burden.

66.

However, the general aim pursued by the Regulation and the answer given by the Court to a similar question regarding trade-marks prompt me to examine this matter further.

67.

In the Class International case, ( 16 ) the Court was asked to consider the burden of proof in proceedings relating to infringements of Community trade-marks. By way of introduction to its answer, the court observed that ‘the issue of proof is raised when a dispute arises, that is to say, when the trade-mark proprietor pleads interference with the exclusive rights conferred on it by Article 5(1) of [First Council] Directive [89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade-marks] ( 17 ) and Article 9(1) of [Council] Regulation [No 40/94 of 20 December 1993 on the Community trade-mark]’. ( 18 )

68.

That situation is very similar to the one with which we are concerned here. First, the right in question — the right to prohibit certain uses of an identical or similar trade mark — is, mutatis mutandis, identical to the right provided for by Article 19 of the Regulation regarding designs. Second, the systems for settling disputes established by the two abovementioned regulations are similar. ( 19 )

69.

In the case giving rise to the judgment in Class International, Advocate General Jacobs arrived at a solution similar to that which I have just advocated. In his view, it is apparent from the recitals to regulation on the Community trade‑mark that the burden of proof is covered by national procedural rules and that in a ‘situation where a trade-mark proprietor is seeking to prevent a trader from using his mark in the course of trade …’ there are no ‘cogent reasons [for derogating from the fact that it is the] national rules on the burden of proof [that] should apply.’ ( 20 )

70.

However, the Court did not follow the Advocate General and, on the contrary, decided that, in a situation such as the one before it (which seems to me comparable to the present case) ‘the onus of proving interference [with the exclusive right] must lie with the trade-mark proprietor who alleges it [and that,] [i]f that is proven, it is then for the trader sued to prove the existence of the consent of the proprietor to the marketing of the goods in the Community.’ ( 21 )

71.

In view of the structural and substantive closeness of Regulations Nos 40/94 and 6/2002 and of the protective mechanisms which they establish and because of the closeness of the objectives pursued by those two instruments, I am therefore inclined to take the view that the decision adopted by the Court in the case giving rise to the judgment in Class International must be transposed to the law on designs.

72.

As pointed out by Advocate General Mengozzi, at point 6 of his Opinion in the case giving rise to the judgment in FEIA, ‘[a]s is clear from the recitals in the preamble to the Regulation, the purpose of establishing a Community design subject to a uniform set of rules throughout the Community is … to prevent identical designs being protected differently and for the benefit of different owners in the various national legal systems as a result of the considerable differences still encountered between the laws of the Member States’. ( 22 )

73.

It is undoubtedly the case, as the Court held in Class International in relation to trade-marks, that ‘if [the issue of the onus of proving infringement of the right of prohibition] were a matter for the national laws of the Member States, the consequence for trade-mark proprietors could be that protection would vary according to the legal system concerned. The objective of “the same protection under the legal systems of all the Member States” set out in the ninth recital in the preamble to the directive, where it is described as fundamental, would not be attained’. ( 23 )

74.

In the present case, since recital 1 to the Regulation states that ‘uniform protection is given with uniform effect throughout the entire territory’ of the European Union, it seems to me that the same reasoning can be perfectly well transposed to the law on designs.

75.

In the light of all the foregoing considerations, I propose that the Court give the following answers to questions 3(a) and 3(b) submitted by the referring court: Article 19(2) of the Regulation contains no rule concerning the burden of proof. However, in circumstances such as those of the main proceedings, it is incumbent upon the holder of the unregistered design to prove the facts which would give grounds for exercising the right to obtain an injunction provided for in that article, by establishing that the disputed use derives from a copy of the protected design.

76.

According to recital 22 and Article 88(2) and (3) of the Regulation, the specific rules regarding the burden of proof are to be laid down by the national legislature. The national courts will ensure that the principle of effectiveness is observed. Indeed, ‘[i]t is apparent from the case-law that the Member States must ensure that evidential rules — and, in particular the rules on the allocation of the burden of proof applicable to actions relating to a breach of Community law — are, firstly, not less favourable than those that apply to similar domestic actions and, secondly, that they do not make it in practice impossible or excessively difficult for individuals to exercise rights conferred by Community law’. ( 24 )

77.

Consequently, as the Commission appropriately points out in its written observations, where the national court finds that, if the holder of a protected design is required to bear the burden of proof, that is liable to render impossible or excessively difficult the production of the necessary evidence (in particular because it concerns information which it is not possible for the owner of the right to have in his possession), it is then required to have recourse to all procedural means available to it under national law to mitigate that difficulty. It may, for example, resort to the mechanism of presumptions or various measures of investigation, such as the requirement on the part of either of the parties or a third party to produce a document or other instrument, ( 25 ) or decide that, in view of the evidence produced by the holder of the design, it is incumbent on the defendant to contest it in a substantive and detailed manner.

78.

The fourth and fifth questions submitted by the referring court concern rules on the extinction of rights over time and/or the time-barring of claims attaching to the right to obtain an injunction on grounds of infringement of an unregistered Community design, provided for in Articles 19(2) and 89(1)(a) of the Regulation. I therefore think that those questions can be dealt with together.

79.

As I have already indicated when examining the third question, the rights conferred by a Community design are set out in Article 19 of the Regulation.

80.

Article 89 of the Regulation forms part of Title IX, ‘Jurisdiction and procedure in legal actions relating to Community designs’. It is that article which specifies the penalties which may be imposed by a Community design court. They include, in particular, an injunction prohibiting the continuation of the contested infringing acts.

81.

According to the first paragraph of that article, the Community design court may impose a sanction when it finds that the defendant has infringed or threatened to infringe a Community design ‘unless there are special reasons for not doing so’.

82.

In its decision, the referring court appears to include the extinction of rights over time among those ‘special reasons’. ( 26 ) As regards the time-barring of claims, it expressly asks ‘whether the situation to be assessed, from which the defendant infers that the aforementioned right is forfeited, satisfies the criterion of “special reasons” for not ordering prohibition laid down in Article 89(1)(a)’. ( 27 )

83.

I do not think, however, that any such comparison can be properly made.

84.

If we refer to the explanations given by the Commission when putting forward its Proposal for a Regulation on Community designs, ( 28 )‘special reasons’ allowing derogation from an order imposing penalties might arise, for example, if, ‘under the given circumstances a seizure of the goods would be pointless, or unduly harsh. Similarly, in certain cases the order to provide information could be void of any meaning, if for instance the infringer is the manufacturer of the infringing goods.’

85.

What is relevant therefore is the factual situation, not procedural rules. This interpretation is confirmed by the case-law of the Court of Justice concerning the parallel provision under trade-mark law. According to the Court, ‘the term “special reasons” relates to factual circumstances specific to a given case.’ ( 29 )

86.

As I already had occasion to say when examining the third question, it is clear from recital 22 and from Article 88 of the Regulation that determination of the rules of procedure is a matter for each national legislature.

87.

Whilst it is true that Article 15(3) of the Regulation speaks of a time bar, it relates only to proceedings governed by the first two paragraphs of that article, that is to say to claims relating to entitlement. ( 30 ) I also note that the Regulation is silent — in contrast to the Community trade-mark regulation ( 31 ) — on the matter of limitation. However, it does not seem to me that the prohibition of rules of that kind can be inferred from that silence.

88.

Consequently, in the absence of European Union rules on the matter, those questions are, by virtue of the principle of procedural autonomy, a matter for the applicable national law in accordance with Article 88(2) and (3) of the Regulation.

89.

In other words, the question whether the right to obtain an injunction referred to in Article 19(2) and Article 89(1)(a) of the Regulation is extinguished through lapse of time and/or may be time-barred and, where appropriate, what the rules should be for such extinction of rights and/or such time-bar, is a matter for the applicable national law in accordance with Article 88(2) and (3) of the Regulation.

90.

The case-law of the Court concerning limitation periods and time-limits is abundant. Three rules seem to me noteworthy:

91.

It is with those three rules in mind that the national court must apply the national law determining the limitation period and/or time-limit applicable to the procedure under Articles 19(2) and Article 89(1)(c) of the Regulation.

92.

By its sixth question, the referring court asks the Court of Justice about the law applicable to the sanctions referred to in Article 89(1)(d) of the Regulation, such as those concerning, in this case, requests for destruction, information and compensation. Are those sanctions, not specified by the Regulation, governed by the law of the Member States in which the infringing acts were committed or by that of the Member State of the court seised?

93.

According to Article 89(1)(d) of the Regulation, if it finds that the defendant has infringed or threatened to infringe a Community design, the Community design court may make ‘any order imposing other sanctions [than those indicated in subparagraphs(a), (b) and (c)] appropriate under the circumstances which are provided by the law of the Member State in which the acts of infringement or threatened infringement are committed, including its private international law’.

94.

Before determining the law applicable to the ‘other sanctions’ referred to in Article 89(1)(d) of the Regulation, it is necessary to determine whether all the measures mentioned by the referring court — request for destruction, information and redress — in fact fall within that provision.

95.

According to the Commission, only the request for destruction could be construed as falling within the scope of the ‘sanctions’ referred to in Article 89 of the Regulation. Relying on recital 22 to the Regulation, it considers that only measures capable of bringing the disputed conduct to an end are covered by that article.

96.

I do not share that interpretation. On the contrary, recital 22 is drafted in such a way that the explanation regarding the purpose of the sanctions refers only to ‘basic uniform sanctions’ considered necessary by the Union legislature: ‘[i]t is necessary therefore to provide for some basic uniform sanctions in all Member States. These should make it possible, irrespective of the jurisdiction under which enforcement is sought, to stop the infringing acts’. ( 35 ) Recital 31 adds that the Regulation does not preclude the application of other relevant rules of the Member States, such as those concerning civil liability.

97.

The wording of Article 89(1) of the Regulation appears to me to reflect the various desires expressed in the abovementioned recitals. First, the Union legislature made provision for uniform basic sanctions, of such a kind as to bring infringing acts to an end. These are measures of prohibition and seizure specifically referred to in Article 89(1)(a), (b) and(c). Also, it is open to each national legislature to adopt other sanctions, such as damages. It is that possibility which is enshrined in Article 89(1)(d) of the Regulation.

98.

The corresponding provision of Regulation No 207/2009 on the Community trade-mark, Article 102, is to the same effect. ( 36 ) Although it is clearly drafted in a less detailed manner, the same structure is to be found in that article as in Article 89 of the regulation on Community designs. The first paragraph of that article relates to the prohibitory measure and measures which ‘in accordance with its national law … are aimed at ensuring that this prohibition is complied with’. The second paragraph of Article 102 provides that ‘the Community trade-mark court shall apply the law of the Member State in which the acts of infringement or threatened infringement were committed, including the private international law.’ As explained by Advocate General Cruz Villalón in DHL Express France, that paragraph entails ‘measures other than those ensuring enforcement’. ( 37 )

99.

The text of Article 89(1)(d) of the Regulation appears to be unambiguous. It authorises Community design courts to impose other sanctions ‘provided for by the law of the Member State in which the acts of infringement or threatened infringement are committed, including its private international law’. It is therefore indeed a case of imposing, for each of the infringements committed, the sanction provided for by the national law applicable in that territory.

100.

It is clear from the very wording of that provision that the Union legislature did not leave the choice of law applicable to the properly seized court. On the contrary, the law applicable is always the law (or laws) of the Member State (or Member States) in which the infringing act (or acts) was (or were) committed. It is therefore never a question of applying the law of the Member State of the court seised by reason merely of its territorial jurisdiction.

101.

It is also to that effect that the corresponding provision of the Community trade-mark regulation has been interpreted by the Court. In DHL Express France, the Court in fact followed Advocate General Cruz Villalón, according to whom ‘if the European Union legislature had intended that the law applicable to the measures ensuring compliance with a prohibition should be the same as that provided for in respect of the other measures to be adopted, Article 98(2) [now Article 102] would be redundant, since its function is precisely one of delineation, which can only be understood if the preceding provision has laid down a different rule. Article 98(2) states very clearly that the applicable law, in addition to entailing measures other than those ensuring enforcement, is “the law of the Member State [in] which the acts of infringement or threatened infringement were committed, including the private international law”. The brief reference to “national law” in Article 98(1) is in stark contrast to the reference in Article 98(2) to the lex loci delicti commissi, and it must therefore be concluded that these concern different conflict rules.’ ( 38 )

102.

I would add, finally, in conclusion, that that interpretation is not only shared by academic writers, ( 39 ) but is also the one adopted in Article 8 of Regulation No 864/2007 on the law applicable to non-contractual obligations, cited above.

103.

In the light of the foregoing considerations, I propose that the Court answer the questions referred to it by the Bundesgerichtshof as follows: