Burberry, Lacoste, Tommy Hilfiger, Urban Trends, Rado Uhren and Facton sued Delta Center, which owns several market halls in Prague, in order to prohibit Delta Center from renting sales spaces to traders who sell counterfeit products. The plaintiffs requested that the City Court in Prague order Delta Center to:

“refrain from entering into a contract for the rental of sales areas with anyone whose conduct was found by the court to constitute an infringement risk; and refrain from entering into any contract where the terms do not include:  the obligation on market traders to refrain from infringing the applicants’ intellectual property rights; or a clause terminating the contract in the event of the infringement or likelihood of infringement of the applicants’ rights.”  

Both the City Court and the High Court in Prague rejected plaintiffs’ requests. The case was brought to the Supreme Court of the Czech Republic. In order to decide the case, the Supreme Court asked the Court of Justice of European Union (CJUE) to interpret the third sentence of Article 11 of the Intellectual Property Rights Enforcement Directive or the Enforcement Directive 2004/84/EC. The CJUE clarified that:

  1.      The third sentence of Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights 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 products, 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.

2.      The third sentence of Article 11 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).

The Supreme Court of the Czech Republic must resolve the case in accordance with the CJEU’s decision.

Court Case: https://thestyleofthecase.files.wordpress.com/2016/07/tommy-hilfiger-licensing-llc-and-others-v-delta-center-a-s.pdf