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14-01-2014 » The Unregistered Community Design under Examination

The unregistered community design generated apparently little interest when it was created by the Council Regulation (CE) No 6/2002 of 12 December 2001 on Community designs.

Nevertheless, it is on the basis of such IP rights that the Bundesgerichthof (German Court) asked the Court of Justice of the European Union (CJEU) for a preliminary ruling, which will give the opportunity, for the first time, to interpret the conditions of protection of these unregistered Community Designs (C-479/12).

Indeed, since March 6, 2002, date of entry into force of the Council Regulation, a creator who makes a design available to the public within the European Union for the first time, has been able to benefit from the rights provided for Unregistered Community Designs by the Council Regulation and to enjoy protection, during a period of three years from the date of first disclosure, against unauthorised copying.

In application of these rules, a German company A, which was selling (in Germany) a design of garden furniture created by its manager, and had disclosed it to German traders, sued a German competitor B, who had commercialized (in the European Union) a Chinese-made copy of this design. Company A obtained a court decision prohibiting company B from selling.

Then, the Bundesgerichthof referred several questions to the Court of Justice of the European Community for a preliminary ruling, in relation to: the notion of disclosure, the starting point of the protection period of the unregistered community design (art. 11 CE), the burden of proof of the allegedly infringing acts, the prescription rules or the foreclosure rules of the infringement action and the applicable law. All these issues were submitted to the CJEU. The Advocate General Wathelet MELCHIOR delivered his Opinion on September 5, 2013.

The first question is whether the disclosure of the design to traders can be considered as a public disclosure under the Council Regulation.

To that question, the Advocate General Wathelet MELCHIOR proposes that a positive answer should be given, 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”. On this basis it would seem too restrictive to include as “public” only people of the relevant sector who are in charge of designing, developing or making the design, without also including traders and sellers. Therefore, in the Advocate-General’s view, the disclosure of an unregistered Community Design and the starting point of the protection period can come from the disclosure of the design to traders.

The second question is whether a design can be considered as having been made available to the public when it was exposed in the premises of a company located out of the European Union, in China in the present case.

The answer to this question has several consequences on the protection of the design, and especially on its novelty. Pursuant to Article 5 CE, the first public disclosure of an Unregistered Community Design destroys the novelty of a later design. 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 specialized in the sector concerned”. Such a disclosure can be opposed against an Unregistered Community Design to destroy its novelty.

As a result, this public disclosure can take place out of the European Union, but it must be known in the sector concerned in the European Union. The question here is to know if the mere exhibition of the design in the premises of a company in China can be considered as public disclosure.

For this question, Mr. Wathelet MELCHIOR offers as answer “that 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 European Union, if it have been made available to only one company from these specialised circles or if it was only shown on the premises of a company located out of the European Union and out of the usual field of observation of the market”.

Therefore, it is not absolute novelty nor relative novelty which is required, and the disclosure has to be sufficient to be relayed to the relevant specialized circles in the European Union. Such would be the case of a disclosure in a famous international exhibition which many or the most important European actors of the sector attend.

The third question concerns the burden of proof of the litigious facts. Mr. Wathelet MELCHIOR answers that the burden of proof rests with the owner of an Unregistered Community Design, who has to prove that the use of the contested design involves copying of the invoked design. However, he may use all the procedural means of his national law to do this.

Finally, the last question is in relation to the relevant prescription and foreclosure rules that are applicable to a claim seeking an injunction based on an Unregistered Community Design. For Mr. Wathelet MELCHIOR, in the absence of European Regulations in this matter, the rules are those that are applicable in the national law of each member state (which must define them to respect the principles of equivalence and effectiveness).

We have to wait now for the decision of the CJEU, in order to have the rules of the game for Unregistered Community Designs clarified and we will see if the opinion of the General Advocate is followed.

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