Interpreting the unregistered community design
Nevertheless, it is on the basis of these IP rights that the Bundesgerichtshof (the German Federal Court of Justice) asked for a preliminary ruling from the Court of Justice of the European Union (CJEU), which will have the opportunity, for the first time, to interpret the conditions of protection of these UCDs (C-479/12).
Indeed, since March 6, 2002, the date of entry into force of the regulation, a creator who makes available a design to the public for the first time can benefit from the rights provided for UCDs by the regulation and enjoy protection for three years against copy from the date of first disclosure.
In application of these rules, a German company A, which was selling a design for garden furniture created by its manager in Germany, and had disclosed it to German traders, sued a German competitor B, which had commercialised in the EU a copy made in China of this design. Company A obtained a decision prohibiting company B from selling the copy.
The Bundesgerichtshof referred several questions to the CJEU for a preliminary ruling and Advocate General (AG) Melchior delivered his opinion on September 5, 2013.
The first question was whether disclosure of the design to traders can be considered as a public disclosure under regulation CE 6/2002. The AG agreed, considering that Article 11§2 provides that “a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed”, so that it “could reasonably have become known to the circles specialized in the sector concerned”.
It would be too restrictive for the AG to include only people of the relevant sector who are involved with designing, developing or making the design, without also including traders and sellers. Therefore, the disclosure of a UCD and the starting point of the protection period can come from the disclosure of the design to traders.
The second question was whether a UCD can be considered as having been made available to the public when it was exposed in a company outside the EU, ie China in the present case.
"Can an unregistered community design be considered as having been made available to the public when it was exposed in a company outside the EU?"
This has several consequences for the protection of the design, and especially for its novelty. Article 7 provides that there is disclosure to the public of a design, “published following registration or otherwise, or exhibited, used in trade or otherwise disclosed”, if it could “reasonably have become known in the normal course of business to the circles specialised in the sector concerned”. Such a disclosure can be claimed against a UCD to destroy its novelty.
As a result, this public disclosure can take place outside the EU, but it must be known in the EU. So, could exhibition of the design in the premises of a company in China be considered as public disclosure?
The AG answered: “A design, even if it was made available to third parties without explicit or implicit conditions of confidentially, could not, in the normal course of business, be reasonably known to the circles specialised in the sector concerned within the EU, if it had been made available to only one company of these specialised circles or if it was only exposed in the premises of a company located out of the EU and out of the usual observation scope of the market.”
Neither absolute nor relative novelty is required, but the disclosure has to be sufficient to be relayed to specialist circles in the EU, such as display in an international exhibition which many of the most important companies attend.
To the question of burden of proof, the AG answered that it rests with the owner of a UCD, who has to prove that the use of the contested design is a copy of the design invoked. However, he may use all the procedural means of his national law to do it.
The last question related to the relevant prescription and foreclosure rules to a UCD. For the AG, in the absence of European regulations, the rules are those that are applicable in each national law.
We now have to wait and see whether the CJEU follows the opinion of the AG.
Aurélia Marie is a partner at Cabinet Beau de Loménie. She can be contacted at: amarie@bdl-ip.com
