Pursuing claims for acts of unfair competition is often difficult due to the lack of access of the aggrieved party to data held by the infringer or other persons. Only obtaining the relevant information enables the correct formulation of claims, in particular claims for damages and for the release of unjustly obtained benefits.
Art. 479113 of the Code of Civil Proceedings gives the entrepreneur the opportunity to apply to the court in all matters classified as intellectual property cases ,and thus also in cases in the field of unfair competition, to call an opponent or another entity to provide specific information. It can take place both before the initiation of the proceedings or during the proceedings – until the case is closed in the first instance. The information may relate to the origin and distribution network of goods or services and must be necessary to pursue a claim.
The condition for the court to consider the application for a request for information is that the applicant credibly demonstrates circumstances indicating an infringement.
The interpretation of the above in the light of the Directive 2004/48/WE of the European Parliament and Council of 29 April 2004 on the enforcement of intellectual property rights was dealt with by the Court of Justice of the EU in the judgment of 27 April 2023 in case C-628/21.
The Court held that the party applying with a request for information should provide all reasonably available evidence to enable the court hearing the request to be satisfied with reasonable certainty that the applicant is entitled to the specific right concerning the infringement by submitting relevant evidence in the light of the nature of the right in question and any applicable formalities.
The subject of the domestic proceedings, under which a question for a preliminary ruling was submitted to the CJEU, concerned infringement of copyrights by selling reproductions of graphics as decorative elements in the building supplies store without the consent of the author of the original paintings. It was therefore necessary to consider whether, in the application for information, the applicant had demonstrated that he actually owned the copyright.
A general conclusion can be drawn from the judgment of the CJEU that the scope of the information requested should be assessed individually in each case and the procedure for requesting information should be clearly separated from the procedure for determining the infringement of intellectual property rights which also applies to the proceedings of submitting evidence.
The applicant has to meet the condition of demonstration the circumstances indicating an infringement which in relation to various cases covered by the common category of “intellectual property” may require a different degree of formalism and different types of evidence. According to the CJEU ruling, it is up to the national court to assess whether the request for information is justified and proportionate and whether it does not constitute an abuse of law. It should therefore be emphasised that it is not possible to establish predetermined criteria for assessing requests for information. In cases where the infringement consists in committing an act of unfair competition, the premises of the specific, alleged act of unfair competition and the type of claims raised should be assessed. These are the elements that affect the scope of information necessary to pursue the claim, and thus the legitimacy of the application submitted pursuant to Art. 479113 of the Code of Civil Proceedings.
- the judgment of the CJEU of 27 April 2023 in case C-628/21