Examining the scope of the Community design right over a registered design

The 5th April 2012 decision of the Alicante Community Design and Trademark Court No 1 is one of the most important recent decisions on Community designs, not only due to the considerations of the decision, but also because of the decision issued by the European Court of Justice (ECJ) on the interpretation of certain provisions of the EU Community Design Regulation (6/2002) in response to a reference to a preliminary ruling from the Alicante court. The ECJ's interpretation of Article 19.1 of the regulation is likely to influence Spanish case law on the scope of the registration holder's right (not just in relation to Community designs) when the defendant holds an identical non-priority registration.

The case was initiated by the owner of a Community design registration for a bollard. The claim was filed against a third-party company which marketed its own bollard, which was protected by a non-priority Community design registration. In fact, the defendant applied for and obtained its own Community design registration after the claimant asked it to cease marketing its bollard.

The claimant brought infringement actions against the defendant requesting, among other things, the cessation of marketing of the bollard and compensation for damages. However, the claimant did not ask the Office for Harmonisation in the Internal Market (OHIM) to declare the defendant's Community design registration invalid. The defendant's opposition brief alleged that:

  • The claimant could not bring infringement actions without previously or simultaneously asking for the invalidity of the defendant's Community design registration.
  • The characteristic elements of the claimant's Community design were dictated by its technical function.
  • The defendant’s bollard caused the informed user to have a different overall impression.

With regard to the second point, the defendant counterclaimed for the invalidity of the claimant's Community design registration in case the court considered that the assessment of whether the claimant's Community design registration included technically necessary forms could be made only in the context of the invalidity of such registration.

Freedom to act
In cases where the defendant's trademark or design is protected by a trademark or design registration, Spanish authors have traditionally discussed whether a third party that initiates infringement actions on the basis of a priority registration must request that such registration to be declared invalid.

On the basis of a Supreme Court decision of 23rd May 1994, those in favour of such theory maintain that the defendant is empowered by the exclusive right arising from its registration, and unless such registration is considered null and void, the use of the trademark or design cannot be considered infringing behaviour under the general legal principle of freedom to act.

Traditionally, the Alicante Community Design and Trademark Court No 1 did not agree with this theory. It granted relief to trademark and design holders against acts of infringement even in cases where the defendant was "covered" by its own registration and the courts had not declared such registration invalid. However, the Alicante Provincial Court has reversed several of these decisions precisely on the basis of the freedom to act doctrine contained in the Supreme Court decision.

In this context, and before issuing a decision on the merits of the case, the Alicante court referred the case to the ECJ for a preliminary ruling on the interpretation of several provisions of the Community Design Regulation. In particular, the Alicante court sought the ECJ’s interpretation of whether the right to prevent the use of a Community design foreseen in Article 19.1 was extendable to a third party using a different design which does not cause the informed user to have a different overall impression, or whether such right does not extend to a third party using its own subsequent registration if the later registration has not been declared invalid. In addition, the Alicante court also asked whether the answer given to the previous question could be influenced by the fact that the defendant had applied for its registration after the claimant had asked it to cease use of its design.

In its decision of 16th February 2012, the ECJ considered first that, under the scope of the Community Design Regulation, the right granted by a Community design registration extends to any third party, including a third party that owns a non-priority registration. In this regard, the ECJ:

  • Invoked the priority right to reinforce the position of the owner of the first design.
  • Highlighted the nature and characteristics of the Community design granting process, and considered that in light of the formality of such proceedings (where no further analysis of the design is made and no opposition proceeding is foreseen in favour of the owner of a priority design), the third party must be considered to be affected by the priority right even though it has successfully obtained a registration.
  • Considered that this solution did not interfere with OHIM's jurisdiction to assess the validity of a Community design.

Without considering whether the ECJ's reply to the first question is accurate, the reference to the Community design granting procedure is somehow insufficient because its starting premise is that the third-party registration is also a Community design. What if the third party owns a national registration (and not necessarily a design) whose granting procedure is far from that foreseen by the regulation?

Clearly, the ECJ's decision may influence future case law on the scope of IP rights protection, and not only in relation to Community designs. It is likely that for other IP rights, the courts would start to question whether the negative aspect of the priority registration is, by itself, sufficient to prevent the potential infringer from alleging the positive aspect of its non-priority registration.

In relation to the second question (ie, whether the answer to the first question could be influenced by the fact that the defendant had applied for its registration after the claimant asked it to cease using the design), the ECJ stated that the scope of the rights arising from the Community Design Regulation must be assessed objectively, such that the behaviour of the potential defendant is irrelevant. Furthermore, the ECJ also observed that the regulation makes no reference to the defendant's good faith in this case, unlike in other situations. This is the position of Article 19.2 when referring to an author who was unaware of a unregistered design previously disclosed by its owner.

Naturally, the 5th April decision of the Alicante court takes account of the considerations made by the ECJ in its decision.

Features of appearance dictated by technical function
The second important issue arising from the Alicante court's decision relates to the way of dealing with a Community design that includes, but does not consist of, features of appearance which are dictated by their technical function. Where a design includes such a feature, it is unclear from the regulation whether:

  • The defendant may invoke and the court may consider, as a mere defence allegation, that some features of appearance of the design are dictated by their technical function and cannot be invoked to a third party.
  • Such assessment must be made in the context of a declaration of the Community design's invalidity.

The decision of the Alicante court states that in cases where some but not all features of appearance are dictated by their technical function, it is impossible to declare the nullity of the Community design. However, no exclusive right can be invoked for those features of appearance which are dictated by their technical function. According to this interpretation of Article 8.1 of the Community Design Regulation, the defendant may invoke the non-exclusivity of features of appearance which are dictated by their technical function as a mere defence allegation.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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