THE INJUNCTION TO A MARKETPLACE TENANT TO CEASE THE INFRINGEMENT TO TRADEMARK’S RIGHTS
Judgement of the Court of Justice of the European Union, July 7th, 2016, case C-494/15
The company Delta Center is the tenant of a marketplace in Praha of which it subleases places to storekeepers. Some counterfeit goods have been detected on this marketplace.
The holders of the counterfeit trademarks asked the Czech National Court to compel the company Delta Center not to renew and not to conclude tenancy agreements for those marketplaces to storekeepers who committed these acts of infringement.
The action of the holders of IP rights was particularly directed against the company Delta Center as an intermediary, namely a ‘person whose means or services are used by third parties to infringe an intellectual property right’ under Article 11 of the 2004 /48 / EC Directive (the Directive) on the respect of intellectual property rights.
The Superior Court of Prague believes that this article shall not be interpreted too broadly so as not to lead to abstruse situations, such as to consider that the granting of a commercial license to a storekeeper is a means likely to prejudice IP rights.
The case is pending by the Supreme Court. It is true that Article 11 of the Directive has already been interpreted by the CJUE in the Judgment ‘L'Oréal’ of July 12th, 2011 (case C-324 /09), but this interpretation involved infringements of IP rights on an online marketplace.
Therefore, the Czech Supreme Court decided to stay the proceedings and asked the CJUE if:
The tenant of a marketplace who subleases sales locations should be considered as an intermediary in accordance with Article 11 aforementioned;
The said tenant could have opposed to him the provisions of Article 11, namely an injunction to forbid pursuing the infringement of IP rights, under the same conditions as those provided for owners of online marketplaces.
The CJUE considers that:
- The market halls tenant who subleases the various points of sale located in these halls to storekeepers, some of which use their places to sell counterfeit goods, must be regarded as an intermediary in accordance to Article 11 of the Directive.
- The conditions governing the injunction against an intermediary are identical to those relating to online market places, as stated by the Court in the Judgment ‘L'Oreal’ of July 12th, 2011 (case C-324 /09).
In this respect, the tenant of physical market halls may be subject to an injunction forcing him to put an end to infringement of IP rights by storekeepers to whom he rents the places, and to take necessary measures to prevent any further infringement.