Design Law

Protection of fashion by unregistered Community Design rights

/in /by

On 2 July 2015, the District Court Düsseldorf confirmed a preliminary injunction prohibiting the further distribution of a blouse on the basis of an earlier unregistered Community Design (Case ref. no. 14c O 55/15).

 

The applicant had distributed a summer blouse depicting abstract drawings of flamingos in Germany since 2013. In 2015, it became aware of the offering of a similar blouse with drawings of flamingos by the defendant.

 

An employee of the applicant had designed the blouse at the beginning of 2013. On the basis of this design, the applicant had ordered a Hong Kong based company to manufacture the blouse. The finished blouses were presented to the public in showrooms in Germany and other European countries for the first time in mid/late June 2013.

 

The defendant had purchased the design of its impugned blouse as a “free design” from the manufacturer of the blouse the applicant based in Hong Kong.

 

After a warning letter was not successful, the applicant applied for a preliminary injunction. The District Court Düsseldorf issued a preliminary injunction without a prior oral hearing by which the defendant was prohibited to further manufacture and distribute the blouse. In addition, the defendant was ordered to provide information on the origin and the way of distribution as well as the amounts of the impugned blouses manufactured, distributed or ordered.

 

The defendant opposed the preliminary injunction arguing among other things that the design consisting of drawings of flamingos was not protectable and the blouse offered by it was not a copy of the applicant’s blouse.

 

The District Court Düsseldorf confirmed the preliminary injunction with its judgement of 2 July 2015. The full (German) text of the decision with pictures of the designs of both blouses can be found here.

 

The Court based its decision on the following reasons:

The design of the blouse as well as its pattern of cloth are protectable as unregistered Community designs. Both do not just picture naturalistic flamingos, but abstract drawings of flamingos which are arranged in a particular way.

 

The applicant had substantiated that it made the design available to the public for the first time in mid / late July 2013. It can therefore still rely on protection for the design by an unregistered Community Design which lasts three years from the day on which the design was first made available to the public within the Community.

 

The validity of the applicant’s unregistered Community Design is presumed and the defendant has not been able to refute this. The defendant failed to show that the applicant’s unregistered Community Design lacked novelty or individual character. The earlier designs on which the defendant had relied on for this purpose all differed significantly from the applicant’s unregistered Community Design.

 

The impugned blouse and the pattern of its cloth left the same overall impression on the informed user and were the result of a copying of the applicant’s earlier unregistered Community Design. For the comparison of the designs an average scope of protection was taken into account for the applicant’s unregistered Community Design. The impugned blouse was considered to be in the scope of protection of the applicant’s unregistered Community Design, as the most relevant details of the cut and the design contained no notable differences.

 

The design of the blouse and its pattern were also held to be the result of a copying of the applicant’s unregistered Community Design. In principle, the party relying on the unregistered Community Design rights also had to prove that the attacked design was the mere result of a copying of the earlier design. However, in this case the Court held that the burden of proof had shifted to the defendant as the matches between the designs exceeded a shared overall impression. The defendant did not make an effort to prove that the impugned blouse was the result of an independent parallel creation. This was also already not much of an argument, as the design of the impugned bloused had originated from the manufacturer of the applicant’s blouse. The defendant could also not use the fact that the design of the blouse was offered to it as “free design” as a valid defense. For the question whether the attacked design was the result of the copying of the earlier unregistered Community Design only the knowledge of the designer was relevant, and not the knowledge of a potential purchaser of the design.

 

All in all, a positive decision showing that the unregistered Community Design indeed also offers some protection for those opting not to register their design. However, it should be kept in mind that the protection only lasts for 3 years from the date on which the design was first made available to the public in the Community compared to maximum 25 years in case of registration as Community Design.

 

The decision is not yet final.

Shape is what matters in case of a yoghurt container

/in /by

In invalidity proceedings before OHIM the Board of Appeal overruled a decision by the Invalidity Division rejecting a request for declaration of invalidity against a Community Design registration (“CDR”) for a yoghurt container based on the colorful lid and label it contained compared with the earlier design.

On 10 October 2014 the Board of Appeal at the Office for Harmonization in the Internal Market (“OHIM”) had to decide on the appeal against a decision by the Invalidity Division rejected an application for invalidity of a CDR for a yoghurt container design comprising a colorful lid and brand labels based on an earlier plain white yoghurt container design without lid (Case R 1682/2012-3).

The shape of the dual container yoghurt pots to be compared was quite similar, but the earlier design did not contain any colorful lid or labels like the attacked CDR.

The Board of Appeal upheld the appeal and annulled the contested decision. It held that the earlier design consisting of a plain white dual container yoghurt pot, as disclosed by the applicant’s earlier International trademark registration, led to a lack of individual character of the attacked CDR.

The Board of Appeal underlined in its decision the considerable degree of freedom of designers in the field of dual container yoghurt pots, as evidenced by the different designs of these containers shown in the applicant’s submission to OHIM.

As the shape of the containers was according to the Board of Appeal very similar, it went on to examine whether the colors used on the lid and side labels of the attacked CDR would leave an imprint on the informed user, in this case dairy producers as well as end users.

It argued that dairy producers would focus primarily on the shape and dimensions of the container itself, as they would usually buy blank containers, fill them and seal them with lids branded with different marks / logos. The way in which the attacked CDR was filed, namely not as a trademark or as an ornamental design, would support the finding that the shape of the container was of primary importance.

Also for the end user, it was according to the Board of Appeal the shape of the container that would count. The end consumer would see the graphic features as a trademark rather than as a design and was accustomed to seeing trademarks and logos in its everyday life.

Accordingly, for all informed users the shape of the design would largely dictate the overall impression. An overprotection of graphical features in the nature of trademark rights could lead to illogical and unjust results.

Bearing in mind the quite wide freedom of the designer and the predominance of the shape of the container, the Board of Appeal therefore concluded that the designs convey substantially the same overall impression on the informed user leading to a lack of individual character of the attacked design.

European Court of Justice confirms the presumption of individual character for unregistered Community Design

/in /by

On 19 June 2014 the European Court of Justice (ECJ) had to deal with questions surrounding the individual character of an unregistered Community Design and the burden of proof for the individual character In the framework of the request for a preliminary ruling origination from Ireland (Case ref.: C-345/13).

In the first question put to the ECJ, the referring court wanted to know whether for assessing the individual character the overall impression of the unregistered design differs from the overall impression of an informed user caused by a) a single earlier design which had been made publicly available to the public before or b) the combination of known characteristics of earlier designs.

In addition the ECJ had to deal in the second question put to it with the question whether the burden of proof for the individual character rests with the owner of the unregistered design.

With respect to the individual character the ECJ has made it clear that the comparison has to be made with older designs as such and not with a combination of characteristics from several earlier designs. Individual character may therefore still be given where the characteristics of the design could be found in several different earlier designs. On the second question the ECJ decided that the burden of proof for the individual character was not on the owner of the unregistered design. The individual character was presumed. The owner only has to indicate due to which elements the design possessed individual character.