Guidance on IPRED: ensuring the single market dimension for IPR enforcement

While the Directive does not provide a list of the specific rights which are considered intellectual property rights for its purposes, Recital 13 explains that its scope should be defined as widely as possible to encompass all the IPR covered by provisions of EU law in this field and/or by the national laws of the Member States.

The measures, procedures and remedies provided for in IPRED cannot be invoked in proceedings for the invalidation of IPR, nor in proceedings entailing an action to pay fair compensation to copyright holders brought against the body responsible for collecting and distributing such remuneration.

Article 4(b) of the Directive indicates that persons that are authorised to use IPR, in particular licensees, in so far as permitted by and in accordance with the provisions of the applicable law, are entitled to seek application of the measures, procedures and remedies set out in the Directive. However, it has been questioned whether a licensee is also entitled to seek application of these measures if despite obtaining a licence from a rightholder, the licensee did not, where relevant, register such licence in an appropriate register.

Whereas in case law relating to the EU’s Regulations on designs and trade marks, the CJEU has held that licensees have legal standing to apply for injunctions even without prior registration. For other IPR, in accordance with Article 4(b) of IPRED, these matters depend on national law.

Article 4(c) and (d) provides that IP collective rights management bodies and professional defence bodies, respectively, regularly recognised as having a right to represent rightholders, are entitled to seek the application of the civil enforcement means provided for by the Directive ‘in so far as permitted by and in accordance with the provisions of the applicable law’. In this context, the implementation of the ability of collective bodies to bring proceedings varies considerably across Member States.

Article 5 of the Directive sets out a rebuttable presumption of authorship or ownership in favour of the person (the author or the holder of rights related to copyright) whose name appears on the work or protected subject matter in the usual manner. This provision is aimed at facilitating the enforcement possibilities of these persons, considering that proof of authorship or ownership may be difficult to provide, especially when several works are involved.

Article 7(1) allows the competent judicial authorities to order, upon substantiated application, prompt and effective provisional measures to preserve relevant evidence of the alleged infringement. The right to preserve evidence is expressly applicable before the proceedings on the merits begin, subject to the protection of confidential information and on condition that the optional safeguards and guarantees (as referred to in Article 7(2)) to avoid potential abuses are provided for in the national law. That means, in particular, that the applicant may also lodge an appropriate request by means of preliminary proceedings, including in certain cases ex-parte proceedings.

Article 8(1) indicates that a right of information order can be issued ‘in the context of proceedings concerning an infringement of an intellectual property right’. The CJEU clarified that the formulation used in Article 8(1) does not imply that the right to information must be necessarily exercised in the same legal proceedings as the proceedings concerning an IPR infringement. In particular, it found that the right of information may be invoked where after the definitive termination of proceedings in which it was held that an IPR was infringed, the applicant in separate, subsequent proceedings seeks the provision of information on the origin and distribution networks of the goods or services by which that IPR is infringed with a view to bringing an action for damages.

IPRED does not aim to establish harmonised rules for judicial cooperation, jurisdiction, or the recognition and enforcement of decisions in civil and commercial matters, nor does it aim to deal with applicable law. There are (de) other EU legal instruments which govern such matters in general terms and which are, in principle, equally applicable to intellectual property and IPR-related litigation.