The Community design court can, in cases where the jurisdiction towards one defendant is based on Article 82(1) Community Designs Regulation (CDR) and jurisdiction towards a second defendant established in another Member State is based on Article 6(1) Brussel 1 Regulation and Article 79(1) of the CDR, because the second defendant makes and supplies goods to the first defendant, adopt orders concerning measures falling under Article 89(1) and Article 88(2) CDR also covering the second defendant’s conduct other than that relating to the supply chain and with a scope which extends throughout the European Union. Concept “country in which the act of infringement was committed” from Article 8(2) Rome II Regulation refers to the country where the event giving rise to the damage occurred. Where the same defendant is accused of various acts of infringement in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it.Third party that, without consent of the holder of rights of a design, uses images of goods corresponding to a Community design when lawfully offering for sale goods intended to be used as accessories to specific goods of the holder of the rights of those designs in order to explain the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an authorised “reproduction for the purpose of making citations” within the meaning of Article 20(1)(c) CDR, as long as it fulfils the cumulative conditions laid down therein, provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.
IPPT20171102, CJEU, Easy Sanitary Solutions and EUIPO v Nivelles
Error in law in judgment of the General Court when it imposed the requirement on EUIPO to construct elements of earlier designs in assessing the novelty of a design. Rightly held that ‘sector concerned’ within meaning of Article 7(1) of the EU Designs Regulation is not limited to that of the product in which the contested design is intended to be incorporated or applied. The General Court erred in law when it imposed the requirement that the informed user of the contested design should know the product in which the earlier design is incorporated or to which it is applied.
Licensee may bring proceedings alleging infringement although that licence has not been entered in the register. Licensee can claim damages for its own loss under Article 32(3) CD-Regulation.
IPPT20140619, GJEU, Karen Millen Fashions v Dunnes Stores
Individual character: must not be evaluated on the basis of a combination of isolated features from a number of earlier designs, but by one or more individually considered earlier designs and is not required to be proven by the right holder.
Distribution of images of a design to traders operating in the involved sector in the Union can be sufficient to be known in the course of business to the circles specialized in the sector concerned. Burden of proving: holder of protected design must bear the burden of proving that the contested use results from copying that design; national law may counter difficulties in production of evidence
Community design not invalid based on older Community trademark: difference in facial expression is a fundamental characteristic that is remembered by informed user
Community design infringement: later registered Community design can infringe earlier Community design. Intention and conduct third party irrelevant for infringement.
Informed user: from a five year old to a marketing Director. When possible a direct comparison, but can be impracticable and may be indirect. Overall impression: account can be taken of goods as actually marketed
Inadmissibility of action: failure to submit signed original of the application nit capable of being regularised. No excusable error: responsibility rests with the lawyer
Copyright protection not affected by expiration of national design right. Legislation reviving copyright protection – no safe harbour for previous public domain designs irrespective of date of manufacture or marketingof products.
IPPT20100622, GCEU, Shenzhen v BHIM
Made available to the public at trade fair and specialised press: Informed user - no technical expert: With regard to the interpretation of the concept of informed user, the status of ‘user’ implies that the person concerned uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended. However, contrary to what the applicant claims, that factor does not imply that the informed user is able to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product’s technical function from those which are arbitrary
The right to the Community design vests in the designer, unless it has been assigned by way of contract to his successor in title. Principal is not the proprietor of the right to the Community design.
IPPT19881005, ECJ, Maxicar v Renault
Exercise design law not precluded by free move-ment of goods. Abuse of a dominant position: the mere fact of obtaining protective rights in re-spect of ornamental designs for car bodywork com-ponents does not constitute an abuse of a dominant position within the meaning of Article 86 of the Treaty.
IPPT19881005, ECJ, Volvo v Veng
Refusal to license not in itself abuse of a dominant position. an obligation imposed upon the proprietor of a protected design to grant to third parties, even in return for a reasonable royalty, a licence for the supply of products incorporating the design would lead to the proprietor thereof being deprived of the substance of his exclusive right