Bird & Bird Designs Briefing June 2012

 

An update on Registered and Unregistered Community Design cases and National Design cases

 
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Introduction

 

Until now, users of the European Community Design system have had only national or OHIM analysis to guide their understanding of the legal boundaries for the new system. But at last, just 10 years after the Community Designs Regulation (6/2002) was introduced, the first cases are starting to reach the highest level of the Court of Justice. These should provide some general guidance as to how the new principles are to be interpreted and applied in all courts of the European Union. We are therefore taking the opportunity in this Update to take a look at how various countries' courts have treated design disputes over the last few years, and compare that with the reasoning the Court of Justice (CJ) has given in its two recent decisions.

We also report an interesting – and rare – decision from the Singapore High Court, concerning the ever-problematic overlap between design and copyright protection.

 

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In this Issue

Introduction

 

1 Decisions of the Court of Justice
2 General Court

 

3. National Decisions in the EU:

a) Finland

b) France

c) Spain

d) Sweden

e) United Kingdom

 

4. National Decisions outside         the EU:

f) Singapore

 

Contact the Editor

European Union

1. Decisions of the Court of Justice

 

PepsiCo, Inc v Grupo Promer Mon Graphic SA (CJ (Fourth Chamber) Case C 281/10; 20.10.11)

 

This is the first substantive decision by Court of Justice of the European Union ("CJ") on Registered Community Designs ("RCDs"). The CJ gave some guidance as to who is the 'informed user' and his level of attention. The court also clarified that in suitable cases the informed user's imperfect recollection may be taken into account when assessing infringement, as well as a comparison of the actual products rather than merely the designs themselves.  Click here to read more.

Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento SL (CJ (First Chamber); Case C-488/10; 16.02.12)

 

The issue in this case was whether or not ownership of a RCD acts as a defence to an allegation of infringement of another RCD, where the alleged infringer's registration had been applied for after the registration of the design said to be infringed. The CJ held that the exclusive right conferred by a RCD under Article 19(1) of the Community Designs Regulation to prevent use by third parties of a design that does not produce a different overall impression on the informed user, included the right to prevent use by holders of later RCDs.  Click here to read more.

Flos SpA v Semeraro Casa e Famiglia SpA; Assoluce–Associazione nazionale delle Imprese degli Apparecchi di Illuminazione (CJ (Second Chamber); C-168/09; 27.01.11)

 

The facts underlying this case, under the Designs Directive (Directive 98/71/EC)rather than the Community Designs Regulation, are somewhat more complex than a straightforward design infringement or validity dispute. The Italian court asked a series of questions concerning whether or not a national law which excluded copyright protection for designs which were in the public domain before the national legislation implementing the Designs Directive entered into force in Italy was precluded by Article 17.  Click here to read more.

 

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2. General Court

The General Court is now facing a continuous stream of appeals from the Invalidity Division of OHIM, not all of which will be appealed further to the CJ. They are therefore slightly less authoritative than decisions of the CJ itself, but do throw some light on the issues of registrability and validity of RCDs.

Decisions on registrability

 

Kwang Yang Motor Co v OHIM; Honda Giken Kogyo Kabushiki Kaisha (GC; T-10/08 T-11/08)

 

In this case the General Court considered designs for component parts of complex products, and held that the parts of the engine designs which would be visible during normal use primarily determined the overall impression produced on the informed user.  Click here to read more.

 

Shenzhen Taiden Industrial Co. Ltd v OHIM; Bosch Security Systems BV (GC (Second Chamber); T-153/08; 22.06.10)

 

Here, the General Court considered the informed user and the degree of attention which he would show to a product, as well as the degree of freedom a designer may have in designing a product some features of which are essential.  Click here to read more.

 

Relationship between Registered Community Designs and trade marks

 

José Manuel Baena Grupo SA v OHIM; Herbert Neuman & Anr (GC; T-513/09; 16.12.10)

 

In this case, a RCD was found valid despite the existence of an earlier, very similar Community Trade Mark. The decision reinforced the principle that an 'overall impression' really is just that. Where a design incorporates a human face, even in cartoon form, that is what users will focus most closely upon.  Click here to read more.

 

Beifa Group Co. Ltd v OHIM; Schwan-Stabilo Schwanhaüßer GmbH & Co. KG (GC (Fifth Chamber); T-148/08; 12.05.09)

 

In this decision, the GC clarified how to go about comparing a design in dispute with an earlier trade mark asserted against it. Under Article 25(1)(e), a RCD may be declared invalid if a distinctive sign is used in that design and the owner of the distinctive sign has the right under Community or national law to prohibit such use.  Click here to read more.

Decisions on procedural issues

Sphere Time v OHIM; Punch SAS (GC; T-68/10; 14.06.11)

 

Sphere Time attempted to invoke the 12 month grace period in Article 7(2)(b) in order to establish a priority date of 14 April 2004, rather than the filing date of 14 April 2005. But as Sphere Time had not claimed to be the creator of the SYMBICORT Design or its successor in title, this Article was not applicable to the present case.  Click here to read more.

 

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National Decisions in the EU

 

a) Finland

 

Devisys Oy v Nahkakunta (Finnish Supreme Court, 31 December 2007, KKO 2007:103)

 

The Finnish Supreme Court has given a decision – its first on design law in more than 15 years, and the first since implementation of the Designs Directive - regarding the basis to be used when assessing whether the overall impressions produced by the product and the registered design on the informed user are different. The decision broadens the scope of the protection of the registered designs in Finland.  Click here to read more.

b) France

 

Frendo v. Etablissements Tarrerias Bonjean (Cour de Cassation, 26 March 2008, n° 06-22013)

 

The Cour de Cassation rejected argument that a design must produce confusion in the mind of an informed user to infringe, agreeing with that the correct test is that the designs in issue do not produce a different overall visual impression on the informed user.  Click here to read more.

 

c) Spain

Silverlit Toys Manufactory LTD against Ditro OCIO 2000 and others (20 November 2007)

 

This was a preliminary injunction action regarding the alleged infringement of a RCD of a toy helicopter rotor. The Defendant counterclaimed for cancellation of the registered design on the basis that the RCD lacked novelty because an application for a CE marketing certificate had been filed before the application to register. The court considered whether this amounted to disclosure in the normal course of business to the circles specialised in the sector concerned.  Click here to read more.

 

Carolina Herrera Limited ("CH") vs. Geo Mat Trading ("Geo")

 

In this decision, the Court of Appeal dismissed the possibility of raising the ownership of a registered design as a defence against an allegation of infringement of an earlier registered right.  Click here to read more.

 

d) Sweden

 

Case T4649-09

 

In March 2011, the Jönköping District Court delivered a judgment (T 4649-09) revoking a Swedish design registration of a chimney cap because the design was substantially limited by its technical function and also lacked novelty and individual character. The applicable provisions in the Swedish Design Act implement Art. 7 and 5 of the Design Directive. Click here to read more.

e) United Kingdom

 

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 729

 

This case forms part of the wide-ranging disputes currently being fought across Europe between Samsung and Apple over the designs for Samsung's GALAXY, which Apple alleges infringe its RCD for the iPad. It concerns the circumstances in which infringement proceedings must be stayed under Article 91 of the Community Designs Regulation.  Click here to read more.

 

Dyson Ltd v Vax Ltd (Court of Appeal; [2011] EWCA Civ 1206; 27.10.11)

 

The Court of Appeal considered the correct approach to assessing the informed user's overall impression, and the designer's degree of freedom.  Click here to read more.

 

Green Lane Products Ltd v PMS International Group plc & Ots ([2008] EWCA Civ 358; 23.04.08)

 

This case concerned the correct approach to identifying prior art in relation to a RCD when the alleged infringer operates in a different market sector from the design owner.  Click here to read more.

 

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National Decisions outside the EU

 

f) Singapore

 

Vicplas Holdings Pte Ltd v Allfit International Market Pte Ltd and others ([2011] 2 SLR 739)

 

The Singapore High Court has given the first decision in which the exception to copyright protection which applies under Section 74 of the Copyright Act in respect of industrial designs has successfully been invoked.  Click here to read more.

 

Contact the Editor

 

Any particular area or law you'd like us to report on?  Let us know by contacting the Editor:

 

Lorna Brazell

 lorna.brazell@twobirds.com


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