Court cancels protecion for controversial umbrella design

After years of uncertainty surrounding an industrial design registration for terrace umbrellas, an appeal court has cancelled the registration. 

A Romanian company, a local state-owned enterprise, carried out commercial activities with third parties from abroad, consisting mainly of the production of garden umbrellas on an industrial scale. These were manufactured according to sketches from a Swiss company, which were protected under Swiss legislation.

Industrial designs were not formally protected in Romania before the early 1990s. The Law on Industrial Designs was issued in 1992 and came into effect the following year. At the time, Romania was a signatory to the Paris Convention for the Protection of Industrial Property 1993 and the World Intellectual Property Organisation Treaty 1967. It implemented the Hague Agreement concerning the International Deposit of Industrial Designs 1925 into the national legislation later in 1992.

Protection for industrial designs comes in various different forms due to their mixed nature, lying on the borderline of copyright and design rights. This has resulted in a heterogeneous system of protection around the world. Romania adopted the cumulative protection of designs, including topical protection offered by the Law on Industrial Designs and protection for the designed creations granted by the Copyright Law.

Against this background and following its privatisation in the early 1990s, the Romanian company filed a claim for protection of the umbrella industrial design, based on the sketches placed at its disposal by the Swiss company. The Romanian company did not claim to have invented the umbrella, since it did not ask for patent protection, but merely to have designed a certain type of terrace umbrella. The claimed novel design depicted a classic umbrella with a textile cover and a central thick rod to which radial supporting rods with sliding spokes had been attached.

In 1993 the State Office for Inventions and Trademarks (SOIT) performed a superficial check against its recently created database and granted the protection. Since then protection has been renewed twice, for consecutive periods of five years. However, the consequences of this protection within Romania were grim: within years, major beverage companies and fast-food chains that had been used to displaying their trademarks on terrace umbrellas, received notification to cease this alleged infringement of the Romanian company rights.

In response, beverage companies and fast-food chains filed cancellation claims for the umbrella design with the SOIT. Several separate claims resulted, mainly based on the idea that the protection certificate had been issued for an industrial design that was not new.

In one such case, which was heard by the Bucharest Tribunal, fifth civil section, the court stated that any new aspect of a product with a practical function may be registered as an industrial design. An industrial design is considered 'new' only if a similar/identical design to the one for which protection is being sought has not been made public before the date when the protection claim was filed (in this case, another industrial design depicting a garden umbrella had already been made public at the date when the Romanian company filed its protection claim in Romania).

On these grounds, the court cancelled the certificates and withdrew the Romanian company's protection. The judgment remained final after the dismissal of the appeal by the Bucharest Court of Appeal, ninth civil and IP section – the two degrees of jurisdiction exhausted all debates on the merits. A second appeal is pending before the High Court of Annulment and Justice, civil section, in which it will not be possible for the parties to make further arguments on the merits. Instead the appeal will examine the two judgments on formal, procedural grounds.