OPINION OF ADVOCATE GENERAL
SAUGMANDSGAARD ØE
delivered on 4 February 2016 (1)
Case C‑481/14
Jørn Hansson
v
Jungpflanzen Grünewald GmbH
(Request for a preliminary ruling from the
Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany))
(Reference for a preliminary ruling — Intellectual and industrial property — Community plant variety rights — Infringement — Regulation (EC) No 2100/94 — Article 94 — Reasonable compensation — Compensation for damage suffered by the rightholder — Advantage acquired by the infringer — Article 97 — Supplementary application of national law — Directive 2004/48/EC — Article 2(1) — Scope — Article 13 — Damages — Flat-rate sum — Notional fee — Profits made by the infringer — Article 14 — Reimbursement of legal costs and other expenses)
I – Introduction
1. This request for a preliminary ruling concerns the interpretation of Article 94 of Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights, (2) and of Article 13(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights. (3)
2. The request has been made in proceedings between Mr Hansson, the holder of a plant variety right relating to a particular variety of marguerite, and the company Jungpflanzen Grünewald GmbH (‘Jungpflanzen Grünewald’) concerning compensation for the damage Mr Hansson claims to have suffered as a result of the unauthorised distribution of that variety.
3. The Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) asks the Court about the extent of the damage for which a holder harmed by an infringement of his plant variety right may seek compensation and about the methods to be used for assessing such damage and compensating him accordingly.
II – Legal framework
A – Regulation No 2100/94
4. Regulation No 2100/94 specifies, in Article 13(2), the acts which cannot be effected without the authorisation of the holder of the Community plant variety right, which include, inter alia, the production, reproduction and marketing of the protected variety.
5. The unauthorised effecting of one of those acts constitutes an infringement within the meaning of Article 94 of that regulation, which provides:
‘1. Whosoever:
(a) effects one of the acts set out in Article 13(2) without being entitled to do so, in respect of a variety for which a Community plant variety right has been granted;
or
(b) omits the correct usage of a variety denomination as referred to in Article 17(1) or omits the relevant information as referred to in Article 17(2);
or
(c) contrary to Article 18(3) uses the variety denomination of a variety for which a Community plant variety right has been granted or a designation that may be confused with it;
may be sued by the holder to enjoin such infringement or to pay reasonable compensation or both.
2. Whosoever acts intentionally or negligently shall moreover be liable to compensate the holder for any further damage resulting from the act in question. In cases of slight negligence, such claims may be reduced according to the degree of such slight negligence, but not however to the extent that they are less than the advantage derived therefrom by the person who committed the infringement.’
6. Article 97 of that regulation, entitled ‘Supplementary application of national law regarding infringement’, is worded as follows:
‘1. Where the party liable pursuant to Article 94 has, by virtue of the infringement, made any gain at the expense of the holder or of a person entitled to exploitation rights, the courts competent pursuant to Articles 101 or 102 shall apply their national law, including their private international law, as regards restitution.
2. Paragraph 1 shall also apply as regards other claims that may arise in respect of the performance or omission of acts pursuant to Article 95 in the time between publication of the application for grant of a Community plant variety right and the disposal of the request.
3. In all other respects the effects of Community plant variety rights shall be determined solely in accordance with this Regulation.’
7. As regards the rules of procedure, Article 103 of that regulation provides for the application of the provisions of the Member State of the court with jurisdiction which govern the same type of action relating to corresponding national property rights.
8. Under Article 107 of Regulation No 2100/94, ‘Member States shall take all appropriate measures to ensure that the same provisions are made applicable to penalise infringements of Community plant variety rights as apply in the matter of infringements of corresponding national rights’.
B – Directive 2004/48
9. The aim of Directive 2004/48, according to recital 10 thereof, is ‘to approximate [the] legislative systems [of the Member States] so as to ensure a high, equivalent and homogeneous level of protection in the internal market’.
10. Recital 26 of that directive states:
‘With a view to compensating for the prejudice suffered as a result of an infringement committed by an infringer who engaged in an activity in the knowledge, or with reasonable grounds for knowing, that it would give rise to such an infringement, the amount of damages awarded to the rightholder should take account of all appropriate aspects, such as loss of earnings incurred by the rightholder, or unfair profits made by the infringer and, where appropriate, any moral prejudice caused to the rightholder. As an alternative, for example where it would be difficult to determine the amount of the actual prejudice suffered, the amount of the damages might be derived from elements such as the royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question. The aim is not to introduce an obligation to provide for punitive damages but to allow for compensation based on an objective criterion while taking account of the expenses incurred by the rightholder, such as the costs of identification and research.’
11. Article 2(1) of that directive, entitled ‘Scope’, provides:
‘Without prejudice to the means which are or may be provided for in Community or national legislation, in so far as those means may be more favourable for right holders, the measures, procedures and remedies provided for by this Directive shall apply, in accordance with Article 3, to any infringement of intellectual property rights as provided for by Community law and/or by the national law of the Member State concerned.’
12. According to Article 3(2) of the directive, the measures, procedures and remedies provided for by the Member States must be ‘effective, proportionate and dissuasive’.
13. Article 13 of Directive 2004/48 provides:
‘1. Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement.
When the judicial authorities set the damages:
(a) they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement;
or
(b) as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question.
2. Where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity, Member States may lay down that the judicial authorities may order the recovery of profits or the payment of damages, which may be pre-established.’
14. Under Article 14 of that directive, ‘Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this’.
III – The dispute in the main proceedings, the questions referred for a preliminary ruling and the procedure before the Court
15. Mr Hansson is the holder of the Community plant variety right relating to variety EU 4282, with the denomination ‘Lemon Symphony’, which belongs to the species Cape marguerite. During the years 2002 to 2009, Jungpflanzen Grünewald marketed, without Mr Hansson’s authorisation, flowers of that species with the denomination ‘Summerdaisy’s Alexander’.
16. Claiming that there was an infringement of the protected variety, Mr Hansson made an application for interim measures to the Landgericht Düsseldorf (Regional Court, Düsseldorf) seeking an injunction to prevent that activity. Both that court and the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf), ruling on appeal, dismissed that application, on the ground that Mr Hansson had failed to provide sufficient evidence of an infringement. He was ordered to pay the costs involved in both sets of proceedings.
17. Subsequently, in the main action, the Bundesgerichtshof (Federal Court of Justice, Germany) gave a final judgment declaring that there was an infringement.
18. Mr Hansson then turned again to the Landgericht Düsseldorf (Regional Court, Düsseldorf) to seek compensation for the damage he claims to have sustained as a result of that infringement. In that respect, he claimed payment of:
– the sum of EUR 66 231.74, corresponding to the licence fees provided for in licensing agreements relating to the protected variety multiplied by the number of specimens of that variety marketed by the defendant in the main proceedings during the years 2002 to 2009;
– the sum of EUR 33 115.89, equal to half of the first sum, by way of an ‘infringer supplement’ to take into account the circumstances of the case and to prevent the infringer being placed in a more favourable position than a licensee;
– the sum of EUR 6 067.35, as compensation for travel costs to attend meetings with his legal representative and for the time devoted to that travel and to the handling of the case, and
– default interest on those three amounts.
19. The Landgericht Düsseldorf (Regional Court, Düsseldorf) ordered the defendant in the main proceedings to pay the first of those amounts plus default interest. That court, on the other hand, refused to add an ‘infringer supplement’, considering that such a supplement represented a punitive measure which was not recognised either by Regulation No 2100/94 or Directive 2004/48 or by national law. It also rejected the claim as regards compensation for other costs and for the time invested by Mr Hansson. In that regard, the court pointed out, in particular, that duties undertaken personally by the litigant in handling a case do not as a rule give rise to reimbursement, either in connection with the procedure for taxing costs or under Article 94(2) of Regulation No 2100/94.
20. Both parties have appealed against that judgment before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf). They contest, in essence, the assessment made at first instance of the amount of the payment to which Mr Hansson is entitled under Article 94(1) and (2) of that regulation.
21. Mr Hansson maintains, in particular, that the Landgericht Düsseldorf (Regional Court, Düsseldorf) was wrong to calculate the reasonable compensation provided for under Article 94(1) only on the basis of the normal fee agreed in licensing agreements relating to the protected variety, although there were many facts justifying the addition of a supplement to that fee. In the alternative, Mr Hansson maintains that he is entitled, under Article 94(2), not only to payment of reasonable compensation fixed on the basis of that fee, but also to restitution of the advantage acquired by the infringer, which amounts to EUR 66 703.14.
22. Jungpflanzen Grünewald disputes, for its part, that the fee rates on which the court of first instance calculated reasonable compensation within the meaning of Article 94(1) of Regulation No 2100/94 were normal. Furthermore, it maintains, in response to the arguments raised by the claimant in the main proceedings in support of his appeal, that the referring court cannot, for the purposes of calculating that reasonable compensation, add a flat-rate supplement to the normal fee for licensed production. It also disputes a number of the points raised by Mr Hansson in support of his claim for an increase in that fee.
23. The defendant in the main proceedings also maintains that it pursued the infringing activities without showing lack of good faith or that, at the very most, it was slightly negligent. However, the referring court considers that the defendant acted in bad faith.
24. In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:
‘1. In the determination of the “reasonable compensation” which an infringer must pay to the holder of a Community plant variety right pursuant to Article 94(1)(a) of [Regulation No 2100/94] because he has effected the acts set out in Article 13(2) of that regulation without being entitled to do so, must, in addition to the normal market fee charged in the same sector for a licence to effect the acts specified in Article 13(2) of that regulation, a specific “infringer supplement” also be applied on a flat-rate basis in every case? Does this follow from the second sentence of Article 13(1) of [Directive 2004/48]?
2. In the determination of the “reasonable compensation” which an infringer must pay to the holder of a Community plant variety right pursuant to Article 94(1)(a) of Regulation [No 2100/94] because he has effected the acts set out in Article 13(2) of that regulation without being entitled to do so, must, in addition to the normal market fee charged in the same sector for a licence to effect the acts specified in Article 13(2) of [Regulation No 2100/94], account also be taken in an individual case of the following considerations or circumstances as factors that increase the compensation payable:
(a) in the determination of the market licence fee by reference to licence agreements concluded and accounts settled for the variety in relation to which rights were infringed, the fact that, in the relevant period, as a result of special characteristics, the variety in question had a unique market position?
If consideration may be given to this factor in an individual case:
may the compensation be increased only if the characteristics giving rise to the variety’s unique position are included the description of the variety for the purposes of the plant variety right?
(b) in the determination of the market licence fee by reference to licence agreements concluded and accounts settled for the variety in relation to which rights were infringed, the fact that, at the time when the infringing variety was introduced, the variety in relation to which rights were infringed had been very successfully marketed and, as a result, the infringer saved on the costs of introducing itself the infringing variety on to the market?
(c) the fact that, in terms of time and having regard to the number of plants sold, the magnitude of the rights infringement in relation to the applicant’s variety was greater than average?
(d) the consideration that the infringer, unlike a licensee, does not face the risk of having to pay a licence fee (that cannot be returned) in relation to the variety in question although the plant variety right for such variety is subject to legal challenge and may subsequently be declared null and void?
(e) the fact that the infringer, unlike the usual situation in the case of licensees, was not required to account for sales on a quarterly basis?
(f) the consideration that the holder of the plant variety right bears the risk in relation to inflation, which is of significance because of the significant period involved in pursuing legal action?
(g) the consideration that, as a result of having to pursue legal action, the holder of the plant variety right, unlike the situation in which he obtains income through the granting of licences in relation to the variety in question, cannot plan the income to be obtained through this variety?
(h) the consideration that, where rights relating to the variety in issue are infringed, the holder of those rights bears both the general risks associated with litigation and, ultimately, the risk that judgment may not be enforceable against the infringer?
(i) the consideration that, in the case of an infringement of plant variety rights resulting from the unauthorised actions of the infringer, the holder of those rights is deprived of the freedom to determine whether the infringer may be allowed to use the variety in respect of which the holder holds the rights?
3. In the determination of the “reasonable compensation” which an infringer must pay to the holder of a Community plant variety right pursuant to Article 94(1)(a) of Regulation [No 2100/94] because he has effected the acts set out in Article 13(2) of that regulation without being entitled to do so, must account also be taken of interest payable at a usual rate of default interest on the annual compensation amount if it is to be presumed that contracting parties acting reasonably would have provided for the payment of interest of that kind?
4. In the calculation of “further damage resulting from the act in question” for which an infringer must compensate the holder of a Community plant variety right pursuant to the first sentence of Article 94(2) of Regulation [No 2100/94] because he has effected the acts set out in Article 13(2) of that regulation without being entitled to do so, must the market licence fee normally charged in the same sector for the acts specified in Article 13(2) of that regulation be taken as the basis for that calculation?
5. If Question 4 is answered in the affirmative:
(a) In the calculation of the “further damage” pursuant to the first sentence of Article 94(2) of Regulation [No 2100/94] on the basis of a market licence, must account be taken in an individual case of the considerations and circumstances set out in Question 2(a) to (i) and/or of the fact that, by reason of having to pursue legal action, the holder of the plant variety right is required personally to spend a commensurate amount of time in identifying the infringement and dealing with the matter and to carry out investigations regarding the infringement of the plant variety right to the extent to which this is usual in infringement cases of this kind such as to justify a premium over and above the market licence fee?
(b) In the calculation of “further damage” pursuant to the first sentence of Article 94(2) of Regulation [No 2100/94] on the basis of a market licence, must a specific “infringer supplement” be applied on a flat-rate basis in every case? Does this follow from the second sentence of Article 13(1) of Directive 2004/48?
(c) In the calculation of “further damage” pursuant to the first sentence of Article 94(2) of Regulation [No 2100/94] on the basis of a market licence, must account be taken of interest payable at a usual rate of default interest on the annual compensation amount if it is to be presumed that contracting parties acting reasonably would have provided for the payment of interest of that kind?
6. Must the first sentence of Article 94(2) of Regulation [No 2100/94] be interpreted to mean that the infringer’s profit constitutes “further damage” within the meaning of that provision which can be claimed in addition to reasonable compensation pursuant to Article 94(1) of [Regulation No 2100/94] or, in the event that the wrongdoing was intentional or negligent, can the infringer’s profit be claimed under the first sentence of Article 94(2) only as an alternative to reasonable compensation pursuant to Article 94(1)?
7. Is the right to compensation for damage specified in Article 94(2) of Regulation [No 2100/94] precluded by national legislation according to which the holder of the plant variety right ordered by decision having the force of law to pay the costs of interlocutory proceedings in which a temporary injunction was sought on the basis of an infringement of plant variety rights cannot claim reimbursement of those costs on the basis of arguments of substantive law even if, in the main proceedings relating to the same plant variety right infringement, his action is successful?
8. Is the right to compensation for damage specified in Article 94(2) of Regulation [No 2100/94] precluded by national legislation according to which an injured party, outside of the strict framework of an action for costs, cannot claim for his own time spent in the extra-judicial and judicial pursuit of a compensation claim if the time spent does not exceed what is normal in the circumstances?’
25. M. Hansson, Jungpflanzen Grünewald and the European Commission lodged written observations and attended the hearing held on 12 November 2015.
IV – Assessment
A – Preliminary considerations
26. The present case invites the Court to clarify the relationship between paragraphs 1 and 2 of Article 94 of Regulation No 2100/94, which adjusts the extent of the right to compensation of the holder of a Community plant variety right harmed by an infringement depending on whether or not the infringement was intentional (or negligent). It also offers the opportunity to make a number of points concerning the methods to be followed for the purpose of calculating the amount of that compensation.
27. By way of introduction, I shall set out, first of all, the general objective of Article 94 of that regulation and the specific objectives of paragraphs 1 and 2 of that provision. Then, in order to define more closely the scope of the referring court’s questions, I shall distinguish between the matter of determining the elements of damage for which compensation is available and the matter of the methods for assessing the damage and accordingly fixing the amount of compensation.
1. The objectives of Article 94 of Regulation No 2100/94
28. Article 94(1) of Regulation No 2100/94, which is the subject matter of the first three questions referred for a preliminary ruling, requires the infringer, irrespective of any subjective element, to pay ‘reasonable compensation’ to the rightholder who was the victim of the infringement. Under Article 94(2), for which the referring court requests an interpretation in Questions 4 to 8, the infringer is also required, if he has acted intentionally or negligently, to compensate for the ‘damage’ suffered by the rightholder as a result of the infringement.
29. As regards the objectives of Article 94 and the relationship between its two paragraphs, the wording of paragraph 2 of that provision, particularly in the Danish, English and Portuguese versions thereof, (4) seems to me to be informative in three respects.
30. First, the use of the words ‘eventuel yderligere opstået skade’, ‘any further damage’ and ‘quaisquer danos suplementares’ means, in my view, that its aim is to ensure full compensation for the damage suffered by the rightholder as a result of the infringement or, to put it another way, to return the rightholder to the position in which he would have been if the infringement had not taken place. (5)
31. That wording indicates, secondly, that that objective of compensation is pursued not only under paragraph 2 but also under paragraph 1 of Article 94 of Regulation No 2100/94. The expressions ‘eventuel yderligere opstået skade’, ‘any further damage’ and ‘quaisquer danos suplementares’ presuppose, in fact, that payment of reasonable compensation within the meaning of paragraph 1 is already designed to compensate for part of the damage suffered by the rightholder. (6) Moreover, the Court held, in the judgment in Geistbeck, that Article 94, taken as a whole, ‘is intended to make good the loss suffered by the holder …’. (7)
32. Thirdly, that wording demonstrates the residual nature of the compensation under paragraph 2, in the sense that it covers any damage not already compensated for under paragraph 1 of Article 94 of Regulation No 2100/94. Therefore, that provision precludes different heads of damage being taken into account twice. They are therefore divided into those for which reparation must be made by any infringer under paragraph 1 and those which must be compensated, under Article 94(2), only by an infringer who has acted intentionally or negligently.
33. I also infer, both from the letter of that provision and from the scheme of Regulation No 2100/94 that it pursues no objective other than to ensure full compensation for the damage suffered by the rightholder.
34. The use of the words ‘to compensate ….for any further damage’ seems to me to preclude any interpretation according to which that provision pursues a ‘punitive’ aim, consisting of granting the holder compensation in excess of the amount needed to make reparation for the damage he has suffered.
35. Other provisions in Regulation No 2100/94 do, on the other hand, permit the imposition on the infringer of obligations which overlap with compensation for that harm. The objective of punishment may therefore be attained by means of criminal penalties which, under Article 107 of that regulation, (8) fall within the scope of the national law of the Member States in the absence of harmonisation at EU level. (9) Under Article 97(1) of the regulation, Member States may also go beyond a purely compensatory objective by providing, in their national legislation, for restitution of profits made by the infringer to the detriment of the rightholder or a licensee which exceed the amount of the damage suffered by the rightholder — I shall return to this when I consider the sixth question.
2. The distinction between determination of the heads of damage for which compensation is available and the methods of compensating for the damage
36. I think it is also useful to point out, as a background to my analysis, the distinction between, on the one hand, determination of the elements of damage for which compensation is available and, on the other, quantification of that damage and the fixing of the amount of damages.
37. Determination of the heads of damage for which compensation is available entails clarifying the extent of the substantive right to reparation which Article 94 of Regulation No 2100/94 confers on the rightholder who has suffered damage or, in other words, in identifying the various items of damage for which he may claim compensation under, respectively, paragraphs 1 and 2 of that provision. That operation concerns, therefore, the result sought by the provision.
38. That is the context of Questions 2 and 3, relating to the identification of the factors to be taken into account when calculating reasonable compensation within the meaning of Article 94(1). The same applies to Question 5(a) and (c), and to Questions 7 and 8, which concern determination of the damage for which Article 94(2) provides compensation.
39. Quantification of the damage and fixing the amount of damages entails the national courts selecting, in a specific case, a method for calculating the damage for which compensation is available and for determining accordingly the amount of compensation to be paid by the infringer. That may, in practice, prove to be a delicate task owing inter alia to the difficulty of producing evidence of the different heads of damage.
40. I shall examine from this perspective Questions 1 and 4 and Question 5(b), by which the referring court asks whether the compensation to which the rightholder is entitled under Article 94(1) and/or (2) of Regulation No 2100/94 is to be calculated on the basis of the fee agreed in existing licensing agreements relating to the protected variety on the market concerned, plus, if appropriate, a flat-rate supplement. Question 6, which relates to the restitution of profits made by the infringer, also concerns, in essence, the method for calculating the compensation under that provision.
41. However, Article 94 does not deal in depth with the methods for assessing the damage and fixing damages. That is explained, in my view, by the fact that the principal aim of Regulation No 2100/94 is not to harmonise the civil law remedies penalising the infringement. That objective is, on the other hand, sought by Directive 2004/48, which may therefore offer some additional information with regard to those methods. From that point of view, I think it is necessary to examine, first of all, whether that directive applies to infringements of Community plant variety rights and, if so, to clarify the relationship between the directive and that regulation.
B – The applicability of Directive 2004/48 to Community plant variety rights and its relationship with Regulation No 2100/94
1. The inclusion of Community plant variety rights in the scope of Directive 2004/48
42. Directive 2004/48, as is apparent from Article 2(1) thereof, applies, transversely, to infringements of any intellectual property rights provided for in EU Law and/or the legislation of the Member States. I consider, as do Mr Hansson and the Commission, (10) that those rights include Community plant variety rights.
43. The arguments put forward by the defendant in the main proceedings relating to Article 97(3) of Regulation No 2100/94 do not affect that finding.
44. In essence, the defendant claims, first, that the provisions of Directive 2004/48 do not apply to Community plant variety rights since Article 97(3) of Regulation No 2100/94 provides that, apart from the limits laid down by paragraphs 1 and 2 of that provision, ‘the effects of [those] rights shall be determined solely in accordance with this Regulation’.
45. In that regard, it seems to me to follow, in particular, from the title of Article 97 of that regulation (‘Supplementary application of national law …’) that paragraph 3 of that provision precludes only the application of national law and not the application of other instruments of EU law, such as Directive 2004/48, which, moreover, did not exist at the date of adoption of that regulation. (11)
46. Jungpflanzen Grünewald claims, secondly, that Article 97(3) of that regulation also precludes the application, in relation to Community plant variety rights, of the national provisions transposing Directive 2004/48.
47. That approach is, in my view, not justified in the light of the objective of that provision, as described in recital 23 of Regulation No 2100/94, which is to clarify the role of that regulation in relation to the ‘non-harmonised legal provisions of the Member States’. From that point of view, ‘national law’ within the meaning of Article 97 of that regulation does not include the national law transposing Directive 2004/48.
2. The relationship between Directive 2004/48 and Regulation No 2100/94
48. Directive 2004/48, according to Article 2(1) thereof, carries out only a minimum harmonisation of intellectual property rights, without prejudice to provisions more favourable to the rightholder under the national legislation or EU law. (12)
49. In the present case, Regulation No 2100/94 confers a more extensive protection than Directive 2004/48 in that Article 94(1) of the regulation requires payment of reasonable compensation by the infringer even if he has not acted intentionally or negligently. On the other hand, Article 13(2) of the directive leaves it to the discretion of the Member States whether or not to authorise the courts with jurisdiction to order compensation for the rightholder where the person who has committed the infringement has not acted knowingly or with reasonable grounds to know. (13)
50. However, no provision in that regulation specifies, in the manner of Article 13(1) of Directive 2004/48, the method for fixing damages intended to make reparation for the consequences of the infringement. Nor does Regulation No 2100/94 deal with the reimbursement of legal costs which are, on the contrary, the subject matter of Article 14 of that directive.
51. In those circumstances, I am not convinced that Article 94 et seq. of that regulation constitute, as the Commission has stated, a ‘lex specialis’ in relation to that directive, and in particular in relation to Articles 13 and 14 thereof. In my view, those provisions are complementary. Therefore, they should be applied in parallel in the event of infringement of a plant variety right. In that regard, I shall show that there is no conflict between the provisions of the two instruments at issue in this case which might prevent them from coexisting harmoniously.
52. Directive 2004/48 may also, depending on the circumstances, be a relevant aspect to take into account for the purposes of interpreting Regulation No 2100/94. (14) It is important, however, to avoid creating, under the guise of a common textual interpretation of that regulation, directly applicable rights which are not enshrined by that regulation by importing them from that directive.
3. The applicability of Directive 2004/48 in the main proceedings
53. Jungpflanzen Grünewald contests, however, the applicability of Directive 2004/48 in the main proceedings on the ground that it has not been properly transposed into German law. It maintains that the legislation transposing that directive applies only to national rights, and not to Community plant variety rights. Accordingly, in the light of the Court’s settled case-law concerning the lack of ‘horizontal’ direct effect of directives, (15) the provisions of the directive cannot apply directly in relationships between individuals.
54. The Court is not empowered to give a ruling in the present case as to the appropriateness and adequacy of the transposition of Directive 2004/48 into German law.
55. Nevertheless, it is, in any event, for the referring court to interpret its national law in accordance with that directive, (16) in so far as the wording of the relevant national provisions do not preclude it. (17) In the present case, the referring court has not drawn attention to any provision of national law which appears to be irreconcilable with Articles 13 and 14 of that directive, as I shall interpret them in this Opinion.
C – Questions 1 and 3, concerning determination of ‘reasonable compensation’ within the meaning of Article 94(1) of Regulation No 2100/94
56. By its first three questions, the referring court wishes, in essence, to know whether the amount of reasonable compensation within the meaning of Article 94(1) of Regulation No 2100/94 is limited to the amount of the fee agreed in existing licensing agreements concerning the protected variety on the market concerned (the ‘normal fee’) or whether it corresponds to that fee: (i) adjusted to reflect other circumstances which differentiate the infringer’s situation from that of a licensee (Question 2); (ii) plus default interest (Question 3), and/or (iii) plus a flat-rate supplement (Question 1).
57. In the light of the objectives of the aforementioned Article 94(1), I shall first take the approach that reasonable compensation within the meaning of that provision is equal to the fee which the infringer would have had to pay the right holder if he had asked him for authorisation to exploit the protected variety, in the light of all the circumstances of the case which reasonable contracting parties would normally have taken into account (the ‘notional fee ‘), which does not always correspond to the normal fee. Secondly, I shall explain the reasons why, although the determination of reasonable compensation thus defined does not necessarily mean adding a flat-rate supplement to the normal fee, that practice should be authorised in so far as that increase seeks only to reflect the particular circumstances of the infringer in relation to those of the relevant licensees.
1. Comparison of reasonable compensation and the ‘notional fee’
58. The Court has already explained, in the judgment in Geistbeck, that Article 94(1) of Regulation No 2100/94 seeks to offset the benefit which has been gained by the person who committed the infringement owing to the fact that he has not paid the fee for licensed production of the variety concerned. (18) Taken from the rightholder’s point of view, that provision therefore seeks to compensate him for the fact that he has been unable to collect such a fee in respect of the infringer’s activities, ‘but does not provide for compensation for damage other than that connected to the failure to pay [the reasonable] compensation’. (19)
59. In my view it is apparent from the same judgment that the damage which Article 94(1) seeks to offset corresponds to the failure to pay, not the normal fee as such, but the notional fee which the infringer should have paid, having regard to the specific context of the case, if he had sought authorisation to exploit the protected variety. (20)
60. Indeed, the Court has stated that the amount of the normal fee for licensed production constitutes a ‘basis for [the] calculation’ of the reasonable compensation. (21) Therefore, in my view, that amount is only a starting point to be adjusted according to the circumstances of the case. (22)
61. The Court has also emphasised the need to prevent the fixing of the amount of reasonable compensation having the effect of favouring the infringer in relation to the licensee who has fulfilled all his obligations. (23) That situation would arise if both were required to pay an identical fee even though certain circumstances specific to the infringer’s situation would have justified fixing a higher fee if he had negotiated a licensing agreement with the rightholder.
62. I therefore consider that the amount of reasonable compensation must reflect the circumstances which distinguish the infringer’s situation from that of the licensees when they concluded the reference agreements, in so far as the court having jurisdiction considers that reasonable contracting parties would have taken those circumstances into account. However, the circumstances already reflected in the amount of the normal fee agreed in such agreements cannot be taken into account a second time by increasing the amount when the reasonable compensation is calculated.
63. Since they are best placed to evaluate all the relevant circumstances in the light of the facts of the case, the national courts must have a broad discretion for the purpose of identifying those circumstances and accordingly fixing the amount of the reasonable compensation. The referring court, in the present case, has already expressed its point of view as regards taking into account factors pinpointed in Question 2. I shall be careful not to substitute my own assessment and shall merely make a few general points:
– That court considers that the amount of the normal fee already reflects the benefit which the infringer has gained from the exclusivity of the protected variety, its commercial success and the consequent saving of launch costs. If that is so, I endorse the court’s conclusion that those factors do not justify any adjustment of that amount.
– If the infringement, owing to its temporal or quantitative scope, has generated, as well as the damage linked to non-payment of reasonable compensation, certain specific disadvantages, these should be compensated for not under paragraph 1, but under paragraph 2, of Article 94 of Regulation No 2100/94, provided that the subjective element laid down therein is established. (24) Such disadvantages may stem inter alia from possible distortions of competition on the market and from the resulting lowering of prices, prompting licensees to claim a reduction in the fees agreed, to which Mr Hansson refers in his written observations.
– The fact that the infringer does not face the risk of paying remuneration without being able to recover it if the variety in question is subsequently cancelled may, in my view, distinguish the infringer’s situation in relation to that of the licensee if the relevant licensing agreements do not provide for reimbursement of fees in such a case.
– The fact that the infringer is not bound by the same contractual obligations as a licensee, particularly with regard to producing accounts, seems to me to justify that the former be required to pay a consideration different from that which the latter has to pay.
– The same applies to disadvantages suffered by the rightholder owing to the fact that the infringer generally pays the reasonable compensation much later than the licensee. Those disadvantages include possible cash flow problems and the possible risk of inflation affecting the rightholder, and also the fact that he cannot plan in advance the revenue deriving from exploitation by the infringer of the protected variety. The national courts may, in my view, take those circumstances into account by adding to the amount of reasonable compensation an amount corresponding to the default interest which reasonable contracting parties would have provided for (even if the reference licensing agreements do not contain a clause to that effect). They may also, in the exercise of their discretion, further increase the amount of reasonable compensation if they consider that that interest is not adequate compensation.
– On the other hand, the risk linked to legal proceedings and to non-enforcement of a decision against the infringer also exists, in my view, in a contractual relationship between the rightholder and his licensee. Furthermore, the Commission has observed that that risk is usually reflected in the amount of the normal fee for licensed production.
– The consideration that, when the notional fee is determined, the rightholder is, so to speak, compelled to contract ‘fictitiously’ with the infringer does not, to my mind, pertain to damage for which compensation is available under Article 94(1). The contracting party’s freedom of choice does not seem to me likely, in itself, to influence the amount of the market fee agreed in a licensing agreement.
– The potential distortions of the rightholder’s licensing policy resulting from the entry on to the market of infringing copies are not, in my view, directly linked to non-payment of reasonable compensation. They may, however, depending on the circumstances, give rise to compensation under Article 94(2) of Regulation No 2100/94.
2. The possibility of increasing the normal fee by adding a flat-rate payment
64. The foregoing explanations have therefore defined the scope of the damage for which compensation is available under Article 94(1) of Regulation No 2100/94. I shall now address a question relating to the method to be used for fixing the amount of reasonable compensation in order to offset that damage: should (or may) that amount be calculated by adding a flat-rate supplement to the normal fee for licensed production?
65. Although the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) does not define the concept of ‘flat-rate supplement’ in its first question, it refers elsewhere in the order for reference to a theoretical amount determined on the basis of circumstantial factors. Therefore, that court intends, in my view, to designate an amount to be added to that of the normal fee and granted on the basis of considerations of equity in the absence of evidence of each element of the damage actually suffered by the rightholder as a result of non-payment of reasonable compensation.
66. First of all, I cannot accept that there is an obligation to require the infringer to pay such a supplement under Article 94(1). Reasonable compensation is, in my view, the notional fee which reasonable contracting parties would have fixed in the light of all the relevant circumstances. However these do not necessarily justify, or not always to the same extent, an increase in the amount of the normal fee taken as a basis for the calculation.
67. Point (b) of the second subparagraph of Article 13(1) of Directive 2004/48 — which provides that the national courts may assess the damage suffered by the rightholder as a lump sum on the basis ‘at least’ of the amount of the notional fee — likewise does not impose such an obligation. Apart from the fact that the provision refers only to the situation in which the infringer has acted ‘knowingly or with reasonable grounds to know’, it merely requires the Member States to ensure that the courts have recourse to that method, as an alternative to the method of fixing damages on the basis of ‘all appropriate aspects’ described in point (a) of the second subparagraph of Article 13(1) of the directive. The choice of method in each specific case is, however, a matter for those courts.
68. Although the wording of Question 1 refers only to whether or not there is an obligation to add a flat-rate supplement to the normal fee, I think it is appropriate also to consider whether those courts have at least a power to do so.
69. In this regard, Mr Hansson referred to the difficulty of assessing the importance of each of the circumstances which reasonable contracting parties would normally take into account when fixing the fee for licensed production. The referring court also observed that the amount of a notional fee cannot, by definition, be either proved or calculated accurately. Those considerations justify, to my mind, authorising the national courts to set that amount on equitable principles by applying, as appropriate, a flat-rate supplement to the amount of the normal fee.
70. That being so, I consider that reasonable compensation can be calculated on the basis of a flat-rate amount exceeding the amount of the normal fee only in so far as that flat-rate amount is intended exclusively to offset the damage linked to non-payment of such compensation. In other words, the aim of a flat-rate increase can only be to reflect the circumstances which reasonable contracting parties would normally have taken into account, such as those referred to in point 63 of this Opinion. In the main proceedings, it is therefore for the referring court to assess, on the basis of considerations of equity and circumstantial factors which it considers relevant, whether the supplement claimed by Mr Hansson is sufficient for attaining that objective or, depending on the circumstances, to establish the appropriate level of a supplement.
71. Such an increase cannot, however, include other elements of damage suffered by the rightholder, compensation for which falls within the scope not of paragraph 1, but of paragraph 2, of Article 94 of Regulation No 2100/94. In particular, it cannot pursue a punitive objective. (25) Paragraph 1 of that provision also applies to an infringer who has not acted wrongfully, so that the notions of deterrence and a fortiori of punishment are irrelevant in that context. (26)
D – Questions 4, 5 and 6, relating to compensation for damage under Article 94(2) of Regulation No 2100/94
72. I shall now examine the other questions from the point of view of the distinction between, on the one hand, the determination of the elements of damage for which compensation is available and, on the other, the method to be used for assessing the damage and accordingly fixing the amount of compensation.
1. Determination of the heads of damage for which compensation is available under Article 94(2) of Regulation No 2100/94
73. Question 5(a) and (c), and also Questions 7 and 8 (which I shall consider separately in points 105 to 123 of this Opinion) seek, in essence, certain clarifications as regards the heads of damage for which the rightholder may be compensated, if the infringer has acted intentionally or negligently, under Article 94(2) of Regulation No 2100/94. Do these include the circumstances pinpointed in Question 2 (in so far as they are not already taken into account under paragraph 1 of that provision), the time spent unearthing the infringement and preparing a legal action as well as certain other costs relating to the legal protection of the holder’s rights? (27)
74. As I have noted in point 32 of this Opinion, compensation under Article 94(2) is residual in nature in that it covers all the elements of the damage suffered by the rightholder not yet taken into account in connection with paragraph 1 of that provision.
75. Consequently, inasmuch as the national court considers that some of the circumstances listed in Question 2 do not constitute damage linked to non-payment of reasonable compensation within the meaning of paragraph 1, those circumstances will, depending on the circumstances, call for compensation under Article 94(2) of Regulation No 2100/94.
76. Those circumstances may include, in particular, the restriction imposed, owing to the fact that the holder can claim compensation only a posteriori in the event of infringement, on his freedom to choose his co-contractors and the resulting distortions of his licensing policy. They also include, in my view, potential distortions of competition on the market stemming from a particularly large-scale infringement in terms of time or quantity.
77. I think, on the other hand, that Article 94(2) of that regulation does not provide for compensation for the time and effort devoted to investigation and to preparation of legal proceedings, or for legal costs and other expenses relating to the defence of the holder’s rights. I shall explain why in my analysis of Questions 7 and 8 (points 105 to 123 of this Opinion).
2. The method for fixing damages under Article 94(2) of Regulation No 2100/94
78. By Question 4 and Question 5(b), the referring court wishes to know whether compensation under Article 94(2) of Regulation No 2100/94 must (or may) be calculated on the basis of the normal fee for licensed production (even though this is already the basis for calculating reasonable compensation within the meaning of paragraph 1 of that provision), plus a flat-rate supplement if appropriate.
a) Preliminary observations
79. Article 94(2) does not specify the method applicable for estimating the damage suffered by the holder who has been the victim of an infringement. I shall therefore turn my attention to Article 13(1) of Directive 2004/48, which introduces a minimum level of protection applicable. inter alia, to Community plant variety rights.
80. The first subparagraph of that provision, which governs the scope of the holder’s entitlement to compensation, requires Member States to provide that an infringer who has acted with full knowledge of the facts be ordered to pay the damages appropriate to the actual prejudice suffered by that holder. The second subparagraph of Article 13(1) instructs the Member States to ensure that the courts with jurisdiction have two alternative methods for achieving the result required by the first subparagraph. (28)
81. Under point (a) of the second subparagraph of Article 13(1), the first of those methods is based on consideration of all appropriate aspects, such as the negative economic consequences — which include loss of earnings incurred by the rightholder and any unfair profits made by the infringer — and certain elements other than economic factors, such as the moral prejudice suffered by the rightholder.
82. The second method consists, under point (b) of that provision, in ‘[setting] the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question’. In the context of Community plant variety rights, that minimal amount thus corresponds to the amount of the notional fee calculated in accordance with Article 94(1) of Regulation No 2100/94. As stated in recital 26 of that directive, that method is appropriate particularly where the damage actually suffered by the rightholder is difficult to determine.
83. In that respect, German legal commentators in particular have repeatedly emphasised the practical difficulties associated with the methods for fixing damages which are based on the profits made by the infringer or on the losses suffered by the rightholder, principally as regards the burden of proof and the lack of available means of gathering the necessary evidence. In the circumstances, the method based on the notional fee is presented as the most effective in practice. (29) According to some commentators, the courts do indeed frequently take that route. (30) The same conclusions are reached in the study on damages in intellectual property rights carried out by the European Observatory on Infringements of Intellectual Property Rights. (31)
84. From this point of view, both the notional fee and reference to the profits made by the infringer are, in my view, substitutes serving to evaluate the damage actually suffered by the rightholder in the absence of sufficient evidence of all the elements of that damage. (32) Consequently, the different methods provided for in Article 13(1), second subparagraph, of Directive 2004/48, each seek the same result, namely the assessment and appropriate compensation of that damage. That provision also recognises the discretion of the national courts to select the method they consider appropriate in the light of the circumstances of the case and, especially, of the available evidence.
b) The possibility of calculating damages on the basis of the normal fee plus, if appropriate, a flat-rate supplement
85. According to their wording, Question 4 and Question 5(b) concern only the existence of an obligation to calculate compensation under Article 94(2) of Regulation No 2100/94 on the basis of the amount of the normal fee, as increased by a flat-rate supplement. I think that such an obligation is irreconcilable with the discretion which Article 13(1), second subparagraph, of Directive 2004/48 confers on the national courts with regard to the choice of method of fixing damages. In my view, they may assess the damage linked to non-payment of reasonable compensation on a flat rate basis on the basis of the notional fee calculated from the normal fee (according to the method described in point (b) of that provision), and the residual damage suffered by the rightholder on the basis of other relevant factors (in accordance with the method set out in point (a) of that provision).
86. The questions of the referring court seem to me, however, also to concern the existence of a power to fix damages under Article 94(2) by adding a flat-rate payment to the amount of the normal fee.
87. In that regard, the defendant in the main proceedings and the Commission consider that, since that fee already serves as a basis for calculating reasonable compensation within the meaning of paragraph 1, it cannot be taken as a reference in connection with paragraph 2 of Article 94.
88. I, for my part, consider that the national courts are not required, where the infringement has been carried out intentionally or negligently by its perpetrator, to order him to pay two separate amounts, under paragraphs 1 and 2 of Article 94 respectively. On the contrary, since that provision seeks, as a whole, to make good the harm suffered by the rightholder, there is in practice nothing preventing those courts from ordering him to be compensated in the form of an overall amount intended to offset both the damage linked to non-payment of reasonable compensation and the other elements of damage.
89. I would point out, in that regard, that, under point (b) of the second subparagraph of Article 13(1) of Directive 2004/48, Member States must authorise the competent courts to set the damages as a lump sum on the basis at least of the notional fee, which is as a rule calculated on the basis of the amount of the normal fee. As is apparent from its wording, that provision applies where the infringer has acted ‘knowingly or with reasonable grounds to know’ — a situation which accords with that to which Article 94(2) of Regulation No 2100/94 applies. Therefore, in the context of Community plant variety rights, that power to set flat-rate compensation extends, in my view, to the whole of the damage suffered by the rightholder, without being restricted solely to the damage linked to non-payment of the reasonable compensation for which Article 94(1) provides reparation.
90. Nevertheless, where the national courts fix an overall compensation under Article 94(1) and (2) on the basis of the amount of the normal fee, the objective of compensating in full for the harm suffered by the rightholder requires, in my view, that they adjust that amount to reflect that harm as accurately as possible. That interpretation also ensures the effectiveness of paragraph 2 of Article 94. Paragraph 1 of that provision, as I have interpreted it in points 58 to 71 of this Opinion, already provides for payment to the rightholder of the amount of a notional fee corresponding to the normal fee as adjusted, where appropriate, to reflect the circumstances which distinguish the infringer’s situation from that of the relevant licensees.
91. That approach is also in accordance with Article 13(1), first subparagraph, of Directive 2004/48, under which the damages must be appropriate to the damage actually suffered by the rightholder. However, as Advocate General Wathelet observed in Liffers, the amount of the notional fee does not always reflect the full extent of that damage. (33)
92. The question then arises as to whether that adjustment of the amount of the normal fee may take the form of a flat-rate supplement.
93. The Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) refers, in that regard, to the punitive nature of the imposition of such a supplement. In so far as it designates, by that adjective, an increase designed to grant the rightholder damages pursuing objectives other than that of compensating for the damage which he has actually suffered, such an increase appears to be unconnected with the compensatory objective of Article 94(2) of Regulation No 2100/94. I therefore consider that that provision does not allow the national court to grant the rightholder that kind of supplement.
94. The word ‘punitive’ gives rise to confusion, however, in so far as that court also intends to designate damages which, while exceeding (even considerably) the amount of the normal fee, are actually intended to compensate for the damage actually suffered as a result of the infringement.
95. In my view, no provision of Regulation No 2100/94 or of Directive 2004/48 prohibits the latter type of compensation. The regulation prescribes a result — compensation in full for the damage suffered by the rightholder — but does not lay down specific methodology for that purpose. As for the directive, it provides, under Article 2(1), only a minimum framework for protecting the holder’s rights, without prejudice to the application of national provisions or provisions of EU law which are more favourable to him. Therefore, although that directive does not require the Member States to impose damages on the basis of a flat-rate payment exceeding the amount of the notional fee (itself calculated on the basis of the normal fee), it also does not prohibit it. (34) On the contrary, that power derives expressly from point (b) of the second subparagraph of Article 13(1) of that directive, which refers to a lump sum corresponding ‘at least’ to that of the notional fee. (35) That approach is also confirmed by recital 26 of that directive, which states that that provision, although it does not introduce an obligation to provide for ‘punitive’ damages, ‘[allows] for compensation based on an objective criterion …’.
96. In the light of the foregoing, I consider that the national court may, for the purposes of fixing damages designed to compensate for all the damage suffered by the rightholder under Article 94(1) and (2) of Regulation No 2100/94, take the amount of the normal fee for licensed production as a basis of calculation and add a flat-rate amount to reflect all the elements of that damage, on the basis of considerations of equity and of all the factors it considers appropriate. (36)
c) Restitution of the profits made by the infringer
97. By Question 6, the national court asks whether the profit made by the infringer constitutes damage for which the rightholder may claim compensation under Article 94(2) of Regulation No 2100/94 in addition to payment of the reasonable compensation fixed pursuant to paragraph 1 of that provision, or whether that profit is payable only as an alternative to that compensation.
98. I would point out first of all that, having regard to the exclusively compensatory objective of Article 94 of Regulation No 2100/94, the rightholder can claim compensation only for damage which he has actually suffered as a result of the infringement.
99. The profit made by the infringer is not as such a component of that damage. As mentioned in point 84 of this Opinion, the advantage acquired or the profit made by the infringer, under both Article 94(2) and point (a) of the second subparagraph of Article 13(1) of Directive 2004/48 are — like the notional fee — only substitutes for assessing the damage actually suffered by the rightholder, in the absence of evidence of all the elements thereof. (37) In other words, the reference to the notional fee or to the infringer’s profit constitutes a tool enabling the national court to assess that damage and, accordingly, to fix the amount of compensation.
100. In those circumstances, I consider that those courts may not, under Article 94 of Regulation No 2100/94, grant a rightholder both payment of reasonable compensation of an amount corresponding to that of the notional fee and payment of an amount reflecting the infringer’s profit, if they are not to go beyond the compensatory objective of that provision.
101. Nevertheless, the amount of that profit may, in practice, exceed that of the notional fee which the rightholder is entitled to be paid, under Article 94(1) of that regulation, by way of reparation for the damage linked to non-payment of reasonable compensation. In such a situation, the residual damage for which the rightholder may obtain reparation under paragraph 2 of that provision may be estimated by reference to the balance of that profit exceeding the amount of that fee. (38) However, that is only a power which the national courts may exercise in so far as they consider appropriate for the purpose of assessing the damage actually suffered by the rightholder.
102. In that regard, I think it is useful to point out that, in the light of the compensatory objective of Article 94 of that regulation, the second sentence of paragraph 2 of that provision does not mean, contrary to the Commission’s contention, that the advantage obtained by the infringer constitutes a minimum to which the national courts must have recourse even if it exceeds the amount of the damage suffered by the rightholder. (39) In my view, that sentence merely gives those courts a discretion to reduce the amount of compensation below that of the damage actually suffered, on the basis of considerations of equity, where the infringer has only been slightly negligent. From that point of view, reference to the advantage obtained by the infringer only means that, in the application of such a measure of equity, those courts may not limit the amount of compensation in such a way that it not only fails to compensate for all of the damage suffered by the rightholder but also does not even cover the profit made by the infringer. On the other hand, if the amount of those profits exceeds that of the damage, those same courts must limit the amount of compensation to that of the damage. (40)
103. Point (a) of the second subparagraph of Article 13(1) of Directive 2004/48, in providing that national courts ‘shall take into account’ all appropriate aspects, such as any unfair profits made by the infringer, likewise does not make those profits a minimum threshold or a mandatory criterion for the assessment of damage. In my view, that provision merely establishes the discretion of the national court to assess the damage by reference to the criteria that it considers appropriate, which include those profits. (41)
104. Although Article 94(2) of Regulation No 2100/94 and Article 13(1) of Directive 2004/48 therefore do not confer on the holder the right to restitution of the balance of the profits made by the infringer which exceeds the amount of the damage which he has suffered, that right may, on the other hand, be conferred on him under the national law of the Member States, in accordance with Article 97(1) of that regulation. That provision authorises, in parallel with the application of the regulation, the application of national rules providing for the restitution of the advantage obtained by the infringer to the detriment of the holder or of the licensee — irrespective of any subjective element. In that context, as the Commission has pointed out, the infringer’s profits constitute not a measure enabling quantification of the damage suffered by the rightholder but actually the subject matter of an action for restitution based on national law. That said, Article 97(1) raises specific problems of interpretation which lie outside the framework of the present case. (42)
E – Questions 7 and 8, concerning compensation for legal costs and other expenses relating to the protection of the holder’s rights
105. In its last two questions, the referring court asks, in essence, whether Article 94(2) of Regulation No 2100/94 precludes national provisions which do not allow a rightholder harmed by an infringement to obtain reimbursement of the costs of the interlocutory proceedings if he has been unsuccessful in those proceedings but has then been successful in the main proceedings (Question 7), or payment in respect of the time spent preparing the action in so far as it does not exceed what is normal in the circumstances (Question 8). (43)
106. The reply to be given to these questions entails, first, determining whether the damage for which compensation is available under Article 94(2) includes legal costs and other expenses relating to the preparation of a legal action.
107. Mr Hansson and the Commission argue for an affirmative response to this question in the light of the wording of that provision and that of Article 13 of Directive 2004/48, which provide for reparation for the damage suffered by the rightholder without placing any restriction thereon. At the hearing, the Commission also maintained that the specific nature of Community plant variety rights, regarding in particular the difficulties of collecting evidence of the infringement, require Article 94(2) of Regulation No 2100/94 to be interpreted as meaning that the damage to be compensated for in that respect includes legal costs and the costs of unearthing and investigating the infringement.
108. However, the more general context of those provisions argues in favour of the opposite solution.
109. In that regard, although Regulation No 2100/94 does not address the question of compensation for legal costs and other expenses relating to the action, other instruments of EU law relating to intellectual property rights have specific provisions for these, provisions which are different from those concerning compensation for the damage suffered by the holder as a result of an infringement. Accordingly, under Directive 2004/48, reimbursement of legal costs and ‘other expenses’ incurred by the successful party is the subject matter of a provision, namely Article 14, which is separate from Article 13, which relates to damages. The preparatory documents relating to that directive suggested that those ‘other expenses’ cover, in particular, the costs of research and lawyers’ fees connected with establishing the infringement. (44) Moreover, Article 14 provides for the reimbursement of those legal costs and ‘other expenses’ by the unsuccessful party only in so far as they are reasonable and proportionate, (45) and subject to considerations of equity. The Agreement on a Unified Patent Court contains a similar provision. (46)
110. Moreover, as is apparent from the study on damages in intellectual property rights carried out by the European Observatory on Infringements of Intellectual Property Rights, the national laws of the Member States do not contain common principles enshrining a more extensive right to reimbursement of legal costs and other expenses relating to the action or, a fortiori, to compensation for all of them in the same way as any other element of the damage suffered by the rightholder. According to that study, most Member States reserve for those costs and expenses specific rules relating to taxation of costs, which are different from the general provisions relating to civil liability. (47) I note, without prejudging the decision as to their conformity with Article 14 of Directive 2004/48, (48) that those rules limit in general the recoverability of those costs and expenses by excluding reimbursement of certain categories thereof, by providing scales or maximum tariffs, by preserving the discretion of the national courts in relation to considerations of equity, or combining several of those methods. (49)
111. In the light of the foregoing, I see no reason, in the absence of any indication to that effect in the text of Regulation No 2100/94, to grant the holder of a Community plant variety right the benefit of a scheme for reimbursement of the legal costs and other expenses relating to preparation of the action which is more favourable than that generally enjoyed by the holders of other intellectual property rights. Moreover, it is conceivable that the gathering of evidence of the infringement and preparation of the legal action are equally arduous and costly so far as concerns the protection of those other rights, or at least some of them.
112. I therefore consider that Article 94(2) of that regulation, read in the light of its context, does not confer on the holder the right to compensation for legal costs and other expenses relating to the defence of its rights by legal action. Therefore, compensation for those costs and expenses lies, in my view, with the national law of the Member States, including, as the case may be, the provisions transposing Directive 2004/48.
113. In that regard, I note that, as the Commission has pointed out, under Article 14 of that directive, the successful party may obtain from the unsuccessful party reimbursement of reasonable and proportionate legal costs and other expenses, even if the latter is not at fault.
114. In the circumstances, I think it is expedient, in order to provide useful answers to the referring court, to consider Questions 7 and 8 also from the perspective of that provision, even though that court has not referred to it in its request for a preliminary ruling. (50)
115. As regards Question 7, I consider that Article 14 of Directive 2004/48 applies separately to interlocutory proceedings, on the one hand, and the main proceedings, on the other, since they concern different applications with different purposes. The aim of interlocutory proceedings is to grant a temporary measure, whereas the main proceedings concern the establishment of the infringement itself. In the present case, as the referring court has pointed out, the interlocutory proceedings sought to obtain a temporary prohibition against the disputed activities of Jungpflanzen Grünewald. The success of that application depended on it being established, in accordance with specific standards of evidence, not only that the holder had a prima facie case but also that the situation was urgent.
116. It is apparent from the order for reference that Mr Hansson was unsuccessful in the interlocutory proceedings both at first instance and on appeal. Under Article 14, an applicant in that situation therefore in principle bears the costs of the interlocutory proceedings even if he is subsequently successful in the main proceedings.
117. I conclude that that provision does not preclude a national rule according to which an applicant who is successful at the end of the main proceedings after having been unsuccessful in the interlocutory proceedings cannot recover the costs of those proceedings.
118. In order to reply to Question 8, it is necessary to determine whether the concept of ‘other expenses’ within the meaning of Article 14 of Directive 2004/48 covers the time spent on preparation of the case, inter alia in connection with meetings with lawyers and related journeys.
119. As I have observed in point 109 of this Opinion, the preparatory documents relating to that directive indicate that the Commission envisaged, by the concept of ‘other expenses’, in particular costs of research and legal advice, (51) specific to intellectual property litigation.
120. Moreover, the Court has stated that Article 14, by laying down conditions for the reimbursement of legal costs which are particularly favourable to holders of intellectual property rights, seeks to avoid them being deterred from asserting their rights in legal proceedings. (52)
121. I consider, in that regard, that, as Advocate General Mengozzi maintained in Realchemie Nederland, the risk of deterrence which that provision seeks to guard against stems from the specific nature of the proceedings and evidence in the field of intellectual property, since the investigation costs and costs of expert opinions may prove to be very high in that context. (53)
122. The time invested by the rightholder in meetings with his lawyers and journeys made for that purpose do not seem to me, on the other hand, especially linked to intellectual property proceedings or likely to deter him from bringing a legal action.
123. I therefore take the view that Article 14 of Directive 2004/48 likewise does not preclude national provisions limiting the possibility of obtaining payment for the time spent on preparation of a legal case.
V – Conclusion
124. In the light of the foregoing considerations, I propose that the Court answer the questions referred for a preliminary ruling by the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) as follows:
(1) Article 94(1) of Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights is to be interpreted as meaning that the amount of reasonable compensation corresponds to the amount of the fee which the infringer would have had to pay the holder of the Community plant variety right if he had asked him for authorisation to exploit the protected variety, in the light of all the circumstances of the case which reasonable contracting parties would normally have taken into account. It is for the national court to identify those circumstances and to fix accordingly the amount of reasonable compensation. In the exercise of that discretion, that court may, inter alia, take into account the time which has elapsed since the infringing activities were carried out by adding default interest to the amount of reasonable compensation.
(2) Neither Article 94(1) of Regulation No 2100/94 nor Article 13(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, requires the national court to fix the amount of reasonable compensation by adding a flat-rate supplement to the amount of the fee agreed in existing licensing agreements relating to the protected variety on the market concerned. However, those provisions do not prevent that court from doing so in so far as it considers it expedient for the purpose of assessing the amount of the fee which the infringer should have paid if he had asked the rightholder for authorisation to exploit the protected variety, in the light of all the circumstances of the case which reasonable contracting parties would normally have taken into account. Such a flat-rate supplement cannot, on the other hand, be added for other purposes under Article 94(1) of Regulation No 2100/94.
(3) Neither Article 94(2) of Regulation No 2100/94 nor Article 13(1) of Directive 2004/48 requires the national court to fix the amount of damages intended to compensate in full for the damage suffered by the rightholder on the basis of the fee agreed in existing licensing agreements relating to the protected variety on the market concerned. However, those provisions do not prevent that court from taking that fee as a starting point for calculating such damages and from adjusting it, if appropriate, in so far as it considers it expedient for the purpose of compensating for the damage actually suffered by the rightholder as a result of the infringement.
(4) Neither Article 94(2) of Regulation No 2100/94 nor Article 13(1) of Directive 2004/48 requires the national court, if it decides to fix the amount of damages intended to compensate in full for the damage suffered by the rightholder on the basis of the amount of the fee agreed in existing licensing agreements relating to the protected variety on the market concerned, to add a flat-rate supplement. However, those provisions do not prevent that court from so doing in so far as it considers it expedient for the purpose of compensating for the damage actually suffered by the rightholder as a result of the infringement. Such a flat-rate supplement cannot, however, be added for other purposes.
(5) Article 94(2) of Regulation No 2100/94 is to be interpreted as meaning that the profits made by the infringer do not constitute damage suffered by the rightholder for which he may claim compensation under that provision, in addition to payment of reasonable compensation under Article 94(1) of that regulation. The national court may, however, take into account the amount of those profits for the purpose of assessing the damage suffered by the rightholder and fixing accordingly the amount of compensation.
(6) Neither Article 94(2) of Regulation No 2100/94 nor Article 14 of Directive 2004/48 precludes national provisions which do not allow the rightholder to obtain reimbursement of the costs of interlocutory proceedings for infringement even if he is subsequently successful in the main proceedings.
(7) Neither Article 94(2) of Regulation No 2100/94 nor Article 14 of Directive 2004/48 precludes national provisions which do not allow the rightholder to obtain payment for the time spent on preparation of a legal action for damages for infringement.