In the dispute raised with the Czech courts by Tommy Hilfiger Licensing LLC, Urban Trends Trading BV, Rado Uhren AG, Facton Kft., Lacoste SA and Burberry Ltd. vs Delta Center a.s. referred the following for a preliminary ruling:
Delta Center is the tenant of the Prague market halls. Third parties sell counterfeits of the applicant’s goods in this market, for which reason they applied to the Czech courts to order Delta Center to refrain from any conclusion or extension of contracts with the infringers. The Czech court referred the following questions for a preliminary ruling:
- Is a person with a lease of premises in a market, who provides stalls and pitches on which stalls may be placed to individual market-traders for their use, an intermediary whose services are used by a third party to infringe an intellectual property right within the meaning of Article 11 of Directive 2004/48?
- Is it possible to impose on a person with a lease of premises in a market, who provides stalls and pitches on which stalls may be placed to individual market-traders for their use, measures, as provided for in Article 11 of Directive 2004/48 under the same conditions as those formulated by the Court of Justice [in the judgment of 12 July 2011 in L’Oréal and Others, C‑324/09, EU:C:2011:474] with regard to the imposition of measures on the operators of an online marketplace?’
The Court of Justice resolved the preliminary questions under the following lines:
- the third sentence of Article 11 of Directive 2004/48 must be interpreted as meaning that the tenant of market halls who sublets the various sales points situated in those halls to market-traders, some of whom use their pitches in order to sell counterfeit branded goods, falls within the concept of ‘an intermediary whose services are being used by a third party to infringe an intellectual property right’ within the meaning of that provision.
- While in the case which gave rise to the judgement of 12 July 2011 in L’Oréal and Others (C‑324/09, EU:C:2011:474), the Court had to interpret the third sentence of Article 11 of Directive 2004/48 in the context of injunctions which may be addressed to an intermediary in an online marketplace, it interpreted that article in the light of the general provisions formulated in Article 3 of that directive, without specific considerations relating to the nature of the marketplace at issue. Nor is it apparent from Article 3 of the directive that its scope is limited to situations which occur in online marketplaces. Moreover, it follows from the wording of Article 3 of the directive that it applies to any measure referred to by that directive, including those provided for in the third sentence of Article 11 of the directive. Therefore, the third sentence of Directive 2004/48 must be interpreted as meaning that the conditions for an injunction within the meaning of that provision against an intermediary who provides a service relating to the letting of sales points in market halls are identical to those for injunctions which may be addressed to intermediaries in an online marketplace, set out by the Court in the judgment of 12 July 2011 in L’Oréal and Others (C‑324/09, EU:C:2011:474).
