Protection of fashion by unregistered Community Design rights

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.