UNREGISTERED DESIGNS
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.
T e court also clarifi ed 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.
A
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. T is 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 fi ndings 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?
B
T e 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.
C
that it was proprietor of the earlier design, as it was required to prove under Article 14(3) CDR. T e 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 benefi t from the provision. Proof of the origin of the drawing was not suffi cient 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 fi rst made the design available to the public within the Community. T is appears correct since disclosing a design could
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As a fi rst obstacle to be overcome by both Europeans and non-Europeans, as already indicated above, a design which has not been made public for the fi rst 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).
T ird, as demonstrated in Bolero Jacket, the owner of an alleged unregistered Community design must prove (without any privilege of legal
Henning Hartwig prosecutes and litigates IP rights in the fi elds of trademark, design, copyright and unfair competition law. He focuses on industrial design law and multinational design infringement proceedings as well as invalidity proceedings before the OHIM. He is the editor of the annual casebook Design Protection in Europe, now in its fourth volume. Clients include manufacturers
of computers, electronic
games, fi tness equipment, clothing and the food industry.
“CLEAR EVIDENCE COVERING
DISCLOSURE OF THE DESIGN AND, IN CASE OF NON-IDENTITY BETWEEN DESIGNER AND CLAIMANT, TRANSFER OF RIGHTS IS REQUIRED.”
presumption) that the asserted rights vest in the claimant. T is 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 diffi culties arise.
Henning Hartwig is a partner at Bardehle Pagenberg in Munich. He can be contacted at:
hartwig@bardehle.de
World Intellectual Property Review September/October 2013
83
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