The industrial design, or in European Union terminology, the Community design, is most likely the most complex type of intellectual property as it is at a crossroad or is the link in the entire discipline. The industrial design, a creation that is materialized into a product, can indeed also be protected as another type of intellectual property through another type of intellectual property rights, and it can also be protected under unfair competition laws.

The industrial design in Spain (and in the EU) can be protected by means of registration (registered design) or without registration. After a fast and simple procedure, protecting a registered industrial design in Spain or in the EU results in the grant of the design, and after the grant there is a possibility of opposition (for national Spanish designs – Article 33 LD) or revocation for Community designs (Article 52 CDR). There is no opposition against Community designs. Notwithstanding the foregoing, both types of registrations must comply with two requirements at the time of filing: novelty on one hand and a singular individual character on the other hand. Novelty involves the lack of availability to the public of a design that is identical to the requested design at the time of filing. Individual character means that the overall impression produced by the requested design on an informed user differs from the overall impression produced on said user by any other already available design. Both in Spain and in the EU, a registered design has a five-year term that can be renewed every five years up to twenty-five years. However, an industrial design can also be protected in the EU, and therefore in Spain, without the need for registration. We say that it “can” be protected because it must likewise comply with the aforesaid requirements. As there is no application, the moment in which such requirements must be met is shifted to the first disclosure when it was made available to the public. It must always be taken into account that protection of an unregistered design only protects such design against identical copies (barring insignificant differences), and said protection only lasts for three years after the time it first became available to the public.

ECJ judgment from February 13, 2014 (case C-479/12) deals with several issues relating to unregistered designs. The object of dispute is the “Athen” outdoor gazebo, used in trade by the company MBM. The gazebo was created by the company manager in the fall of 2004, and it was marketed in Germany. In the year 2006, the company Gautzsch started marketing the gazebo, manufactured by a company established in China. The MBM gazebo was included in its April and May 2005 new product leaflets distributed among major retailers in the sector and among furniture-purchasing associations. In its defense, Gautzsch argued the autonomous creation of the gazebo by the Chinese company(Zhengte) at the beginning of 2005, having no knowledge of the MBM model. Said gazebo had been presented to European customers in March 2005 and in Zhengte’s showrooms in China. Additionally, a model of said gazebo was sent to the company Kosmos, established inBelgium, in June 2005.

Therefore, the decisive issue consists of assessing if such events constitute “disclosure”, i.e., if such events involve availability to the public in the sense of Regulation 6/2002. Disclosure to the public is hence the relevant issue for the substantive requirements, and for unregistered designs, it is the time parameter for measuring the substantive requirements for each model. Let’s assume that both models are identical and that the issue at hand is therefore if the described events have lead to the disclosure. This is a grey territory that National Courts must rule on in view of the proven events. First, disclosure in the scope of Community designs must be defined; a design shall be deemed to have beenmade available to the public in any way, particularly exhibited, used in trade or otherwise disclosed except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community (Article 7 CDR). This latter precision is a real puzzle. Therefore we must insist: the point is to assess if the described acts constitute disclosure, and in such case determining the consequences brought about by the dispute between two unregistered designs. For the case of unregistered designs, it must be the first disclosure (Articles 6.1a and 11.1 CDR).

Insofar as the content of the registered design law allows prohibiting the use (the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied) of a registered design by a third party, an unregistered design is only granted those powers if said use results from the design having been copied, i.e., these powers are not granted if said design is the result of 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.

In this theoretical area, the ECJ judgment answers the following points:

1. Is there disclosure in the sense of Article 11.2 CDR if the design was disseminated by means of representations thereof between retailers?

The judgment considers that the specialized circles cannot be restricted to persons in that sector involved in creating designs and developing and manufacturing products that incorporate them. If use in trade is one means of making unregistered designs available to the public, taking into account the normal course of business- such that such events are reasonably known to the interested circles - it can be inferred that traders which have not been involved in the design of the product in question cannot be excluded from the group of persons who may be considered to form part of those circles. Therefore, such restriction has no support in the wording of the CDR.

2. Despite the existence of disclosure of the design to a third party, can it be concluded that it could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned operating within the EU if it is made available to only one undertaking in the specialized circles or it is exhibited in the showrooms of an undertaking in China?

First of all, the judgment reiterates that for the purpose of disclosure, it is not necessary for the events constituting disclosure to have taken place within the EU territory. In other words, a disclosure made outside the EU can become reasonably known in the normal course of business to the specialized circles in the sector concerned operating within the EU. Such reasonable knowledge is a question of fact that must be assessed by the competent Courts. Second of all, disclosing the design to a single company of the sector concerned within the EU territory does not by itself exclude the disclosure, and in certain circumstances, such disclosure may be sufficient. However, in principle, presentation only in the showrooms of a company in China and the disclosure to a single company of the EU cannot be considered disclosure for the purposes of the CDR.

3. Does the holder of an unregistered Community design bear the burden of proving that the contested use results from copying the protected design? The judgment establishes that the holder of an unregistered Community design bear the burden of proving that said design was copied (Article 19.2 CDR), whereas the burden of proving that the contested use results from an independent work of creationrests with the opposing party (Article 19.2, second paragraph). Insofar as the proof that the use results from copying the unregistered design may be difficult, if not impossible, to produce, the principles of equivalence and effectiveness ensure the application of the rules of national law which allow adjusting or lightening said burden of proof. We therefore understand that presumptions can be very important in this field, such that substantial and objective coincidences can be a relevant indication of copying, taking into account the author’s degree of freedom in the field in question.

4. and 5. Action for an injunction against a Community design: does it extinguish? Is such action subject to time-barring? The ECJ replies that Regulation 6/2002 is silent on the subject of the extinction of rights over time and of an action being time-barred, both of which are defenses that may be raised against an action of infringement, and they are governed by national law, which must be applied in a manner that observes the principles of equivalence and effectiveness.

6. Is Article 89(1)(d) CDR to be interpreted as meaning that claims for destruction, disclosure of information and damages by reason of infringement of an unregistered Community design which are pursued in relation to the entirety of the European Union are subject to the law of the Member States in which the acts of infringement are committed? Regarding the claim for destruction, it is part of the “other sanctions appropriate under the circumstances” of Article 89.1d) CDR, it follows that the law applicable to that claim is the law of the Member State in which the acts of infringement or threatened infringement have been committed. The claims for compensation for damage and for providing information of the infringing party do not constitute sanctions within the meaning of Article 89 CDR, such that, according to Article 88.2 CDR, the applicable law is the national law of the Community design court hearing the proceedings.

(c) José GARRIDO