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Invalidation of registered designs not needed to chase 'infringing' reproductions, ECJ rules


Owners of design rights can take action against suspected infringers without first having to formally invalidate infringers' later-registered design rights, the European Court of Justice (ECJ) has ruled.

The ECJ said that rights holders claiming infringement do not have to invalidate later-registered valid designs in order to legitimately claim a reproduction of that design is invalid. This is because of the way EU laws on Community design rights have been worded as well as the framework for legal action around those design rights, it said.

Design rights can be registered by designers and offer protections that are similar to copyright. Designers can gain a monopoly right to the appearance of the whole or part of a product based on its features including the lines, contours, colours, shape, texture and materials used, or its ornamentation. Designers in the UK can register their designs with the Designs Registry.

Designers can also gain pan-EU protection by registering a Community design with the Office for Harmonisation in the Internal Market (OHIM). Those that register a Community design have "the exclusive right to use it and to prevent any third party not having his consent from using it".

Under the EU's Regulation on Community design rights a 'use' of a design shall "in particular" refer to "the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes".

The OHIM, like the Designs Registry, will only register a design if it is new and has individual character.

Under the EU's Regulation a design is said to be new if it differs from known designs by more than "immaterial details". To have individual character the designs must give an "informed user" a different "overall impression" from their "overall impression" from other known designs. "In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration," according to the Regulation.

Designers can obtain up to 25 years worth of protection over registered Community designs, although the protection has to be renewed every five years.

"It is clear that the wording of ... the Regulation does not make any distinction on the basis of whether the third party is the holder of a registered Community design or not," the ECJ said in its ruling.

"Thus, that provision states that a registered Community design is to confer on its holder the exclusive right to use it and to prevent ‘any third party’ not having his consent from using it. Similarly ...  the Regulation provides that the scope of the protection conferred by a Community design is to include ‘any design which does not produce on the informed user a different overall impression'," it said."It is apparent from those provisions that the Regulation does not preclude the holder of a registered Community design from bringing infringement proceedings to prevent the use of a later registered Community design which does not produce on the informed user a different overall impression."

The ECJ was ruling in a case referred by a court in Spain involving two companies, Cegasa and PROIN.

Cegasa owns a Community design right for a 'beacon-like' marker for traffic signalling purposes which it registered in 2005. It has brought a case against rival company PROIN over "the offering, promoting, advertising, stocking, marketing and distributing" of its 'H-75' marker in 2007. Cegasa claimed that PROIN's activities had infringed its exclusive Community design rights because the H-75 marker "did not give [an informed user] an overall impression different" to the one created by its own design.

A Spanish court previously ruled that another of PROIN's designs, which PROIN registered for Community protection in 2008, was a "reproduction" of Cegasa's design. However, Cegasa did not apply for PROIN's registered design to be invalidated.

PROIN said its H-75 marker is a reproduction of another Community-registered design and that therefore until that registered design is invalidated Cegasa has no legal right to claim its H-75 marker design is infringing. The Spanish court asked the ECJ if that interpretation of Community design right laws was correct. The ECJ said that it is not.

The ECJ said that, in line with the "priority principle", the design that had been registered first "takes precedence" over designs registered later. It also said that the Community design rights Regulation makes a distinction between cases over the validity of designs and whether the rights relating to those designs are infringed. Special Community design rights courts are responsible for assessing infringement cases and are obliged to view designs as valid until proven otherwise. It is the job of the OHIM to assess the validity aspect of designs.

Because of this it would be wrong if an owner of a registered design was unable to take action against an owner of another design just because that rival's infringing registered design had yet to be invalidated, the ECJ said.

"Actions alleging infringement and applications for a declaration of invalidity are distinguished in terms of their object and effects, so that the fact that it is possible for the holder of an earlier registered Community design to bring infringement proceedings against the holder of a later registered Community design cannot render the bringing of an application for a declaration of invalidity against the latter before OHIM devoid of any purpose," the ECJ said.

"Consequently, it must be concluded that, in so far as the later registered Community design, use of which is prohibited, remains valid until such time as it has been declared invalid by OHIM or a Community design court in the context of a counterclaim for a declaration of invalidity, the review system established by the Regulation is not undermined by the conclusion [that] ... only an interpretation of the term ‘any third party’ within the meaning of ... the Regulation as encompassing the third party holder of a later registered Community design is capable of ensuring attainment of the objective of effective protection of registered Community designs pursued by the Regulation, as well as the effectiveness of infringement proceedings," it said.

The ECJ said that courts do not have to take into account the "conduct" of the third party when assessing whether action can be taken against it.

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