Community Registered and Unregistered Designs

07 December 2006

UK

1.1 Quads 4 Kids v Campbell [2006] All ER (D) 162 (Oct)

This was a decision in an interim injunction application by the Claimant (Q) who was offering for sale children’s dirt bikes on eBay. The Defendant (C) was the proprietor of several Registered Community Designs for a child’s dirt bike, the publication of which had been deferred by the Defendant under Article 50, Council Regulation (EC) 6/2002. Claiming that Q was infringing his Community design rights, C notified eBay via ‘VeRO’, an online system by which IPR holders can report alleged rights infringements found on the eBay forum. As a result, Q’s listings for children’s dirt bikes were removed, but C took no further steps to enforce his purported rights.

Q brought a claim, alleging that C’s VeRO complaint to eBay amounted to a groundless threat of Registered Community Design infringement proceedings, and that C’s rights were also invalid for lack of novelty. Pending the outcome of the main action, Q applied for an interim injunction to restrain C from interfering with its eBay sales pages.

In determining whether C’s VeRO notification constituted a threat to bring infringement proceedings, Pumfrey J held that the test to be applied was whether or not a reasonable person in eBay’s position would understand that it could be subject to future infringement proceedings if it failed to take down the allegedly infringing sales pages. Pumfrey J ruled that this was indeed the case here, so there was a serious issue to be tried. The balance of convenience favoured the grant of the injunction because of the potential damage to Q, and C’s inability to pay any damages that might in future be awarded. He therefore granted the application for an interim injunction.

Italy

1.2 Emu Group (Court of Venice, IP specialised section, order on 10 August 2006)

Emu Group S.p.A. brought proceedings against RD International for, among other things, infringing the Claimant’s Registered Community Design in respect of its outdoor tables and chairs.

Emu Group obtained a partially favourable decision. The decision of the Court of Venice is interesting since it concerns the relationship between the functional form and the protection of the ornamental form of a product (in this case, a table).The Court of Venice held that the form of a product is protected by Registered Community Design right even if its characterising element has both a technical and ornamental function (in this case, a folding table’s legs).

Sweden

1.3 Nokia mobile phone covers and keypads (Swedish Court of Appeal, case T 651-05 on 8 June 2005)

Nokia Corporation (“Nokia”) filed an infringement claim against an importer of “mobile phone covers” and keypads for mobile phones, claiming that the imported products infringed Nokia’s registered national design right and unregistered community design rights. Nokia had gained an unregistered right for its design (in accordance with Council Regulation (EC) 6/2002) by presenting the design at a trade fair in 2002. The designs had later also been formally registered in Sweden.

The importer had, on a previous occasion, imported mobile phone covers similar to Nokia’s registered design. On that occasion a settlement was reached between the parties in which the importer signed an undertaking to desist, under the penalty of a payment to Nokia, from future unauthorised use of Nokia’s intellectual property.

The importer argued, when infringement was alleged for the second time, that the overall impression of his products was not similar to the overall impression of Nokia’s products and therefore his products did not infringe Nokia’s design rights.

The City Court of Stockholm held there were only small differences in the design of the two products and that these small differences were irrelevant to the overall impression. A designer could have designed the mobile phone covers in a variety of ways, but the similarities between the products and Nokia’s design were so significant that the Court found infringement in both the registered and unregistered design rights. Nokia was granted the penalty payment as stipulated in the parties’ original settlement agreement.

The case was appealed but the Svea Court of Appeal affirmed the Judgment on 8 June 2005.

We believe this is one of the first cases regarding unregistered design rights to be examined before a Court of Appeal in a Member State.

Germany

1.4 No retro-active effect of Council Regulation (EC) 6/2002

One of the few published decisions by the higher German courts on the enforcement of Community Designs relates to the date from which protection under Council Regulation (EC) 6/2002 (the “Regulation”) is afforded to a design. The Oberlandesgericht Hamburg (Hamburg Appeal Court) confirmed that Art. 19 (2) of the Regulation does not have retroactive effect (Judgment dated 24.2.2004, 5 U 66/04, GRUR-RR 2006, 94, 95 - Gipürespitze). In the proceedings which led to that decision, the Claimant claimed protection for the design of a laced bra under Unregistered Community Design. The bra was first made available to the public in September 2001. The court held that Art. 19 (2) does not afford protection to designs made available before the date of entry into force of the Regulation (6.3.2002). Such retro-active affect would have required an express provision.

The Netherlands

1.5 Ferrari (President in interlocutory proceedings District Court The Hague, 12 April 2005, IER 2005/48)

Ferrari claimed in an application for interim relief that a Dutch importer of toy cars infringed (amongst other things) Ferrari’s Community registered design rights in its F1 car. The Dutch importer was selling red toy F1 cars. According to the Dutch importer, the Ferrari F1 design right was not valid for toy cars because the same design had been used previously for “real” Ferrari F1 cars. Ferrari argued that by changing the utility function of the design, this same design would be novel and have an individual character regarding the new utility function.

The Court agreed with the local importer and considered that a design shall only be considered new if no identical design has been made available to the public. Designs shall be deemed to be identical if their features differ only in immaterial details. According to the Court, the toy Ferrari F1 race car is a miniature of the real Ferrari F1 race car which was already known to the informed user of toy cars before the filing date of the Community registered design for toy cars. One can assume, according to the Court, that the designs of real cars are known to the circles specialised in the toy car sector. A design that already exists for real cars will therefore be relevant to the question of whether the same design used for toy cars is novel and of individual character. The Court ruled that there was a serious chance that an invalidity action on the grounds of lack of novelty or individuality before OHIM would be successful.

Unfortunately, the Dutch Court explicitly did not go into the question of whether a first use of a design for a certain functionality would harm novelty and individual character of that same design when used in a different functionality (e.g. in this case the real car and toy car functionality). This is surprising in the sense that it has commonly been argued in Dutch legal articles that a difference in functionality may provide novelty and individual character.

Ferrari did not go home empty handed: the Dutch importer was found to infringe Ferrari’s copyrights in the colour scheme and sticker lay-out, and was ordered to stop the sale of the red toy F1 cars in The Netherlands.

1.6 See separate table of OHIM invalidity decisions (click here)