A knotty problem: how to establish unregistered design claims
In October 2008, the German Federal Supreme Court held in its well-known Bakery Press judgment (in line with the Frankfurt District Court and the Hamburg Appeal Court) that a design enjoys protection as an unregistered Community design only if it was first made available to the public within the territory of the European Union (EU); a disclosure outside the territory of the Community—even if it could have become known to specialised circles operating within the Community—would not meet the requirements under Articles 11, 110a (5) Sentence 2 of the Community Designs Regulation (CDR).
Interestingly, the Supreme Court refused to refer the case to the Court of Justice of the European Union (CJEU) pursuant to Article 267(3) of the Treaty on the Functioning of the EU (TFEU) as the law was acte claire. Although some practitioners thought and even now continue to find that this case law discriminates against non-European entities (or small and medium-sized European entities), the text of the regulation is clear and, at the same time, there is an inexpensive alternative: the registered Community design.
The Bolero Jacket case
Of course, the place of disclosure is not the only issue arising when considering unregistered Community designs. Germany’s Supreme Court provided further helpful guidance—this time on the significance of proof of ownership of an unregistered Community design (decision of December 13, 2012, Case I ZR 23/12 Bolero Jacket). Again, the court refused to refer the case to the CJEU.
Claimant and defendant were acting as textile trading companies selling clothing through their retail stores. The claimant’s portfolio included the bolero jacket pictured below (earlier design, picture A).
The claimant asserted claims for infringement of an unregistered Community design right through the use by the defendant of the design picture B.
According to the claimant, the earlier design was designed by the claimant’s employees in July 2006, demonstrated by the drawing picture C.
The court’s findings
The court found that the claimant failed to show that it was proprietor of the earlier design, as it was required to prove under Article 14(3) CDR. The requirements of that provision, according to the court, had to be shown, under the general rules of burden of proof, by the party seeking to benefit from the provision. Proof of the origin of the drawing was not sufficient because the earlier design actually did not constitute a product made in accordance with the drawing. In other words: the disclosed and claimed design must be identical.
Moreover, according to the court, deciding on the ownership of an unregistered Community design had to be distinguished from the identity of the person who first made the design available to the public within the Community. This appears correct since disclosing a design could be performed not only by the designer or his/her successor-in-title, but by any third party, such as by a wholesaler or retailer.
"Clear evidence covering disclosure of the design and, in case of non-identity between designer and claimant, transfer of rights is required."
The court also clarified that the presumption of ownership provided for in Article 17 CDR for registered designs could not be applied, by way of analogy, to an unregistered Community design right.
Likewise, Article 85(2) Sentence 1 CDR would establish only, according to its clear wording, a presumption of validity of an unregistered Community design right, not a presumption of ownership. This is interesting because the Court of the Hague found to the contrary in 2005, applying Article 85(2) CDR for the presumption of ownership of an unregistered Community design.
However, the Dutch court’s findings do not appear convincing, as they are in line neither with the wording, which clearly refers to the validity of the invoked unregistered Community design (being contested by way of a plea), nor the intended purpose of Article 85(2) CDR, namely providing a defendant with means to contest the validity of the invoked unregistered Community design.
Is it safe to rely on unregistered design rights?
The Bolero Jacket case is most welcome for its detailed, clear and conclusive guidance. Nonetheless, it raises doubts as to whether protection by way of an unregistered Community design is a safe approach to be recommended—whether seen from a European perspective or from abroad.
As a first obstacle to be overcome by both Europeans and non-Europeans, as already indicated above, a design which has not been made public for the first time within the territory of the Community does not enjoy protection as an unregistered Community design. Hence, actual disclosure within the EU is essential.
Second, an unregistered Community design protects only against use resulting from copying the protected design, allowing the accused infringer to demonstrate that the contested use results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder (corresponding questions have been referred, according to the German Supreme Court’s decision Garden Pavilion, to the CJEU for a preliminary ruling).
Third, as demonstrated in Bolero Jacket, the owner of an alleged unregistered Community design must prove (without any privilege of legal presumption) that the asserted rights vest in the claimant.
This means clear evidence covering disclosure of the design and, in case of non-identity between designer and claimant, transfer of rights is required and may cause major problems in daily practice (here, non-identity between the disclosed “drawing” and the asserted “earlier design” presented a further obstacle).
In light of this, seeking protection by way of registered design rights (Community-wise and/or national) seems to be a safer alternative, as none of these difficulties arise.
Henning Hartwig is a partner at Bardehle Pagenberg in Munich. He can be contacted at: hartwig@bardehle.de
