Registered community designs can infringe earlier registered community designs

The Court of Justice of the European Union has clarified the interpretation of the term “any third party” in Article 19(1) of the Community Designs Regulation (6/2002/EC) in its decision in Case C-488/10 Celaya Emparanza y Galdos Internacional SA (Cegasa) v Proyectos Integrales de Balizamiento SL.

BACKGROUND

Since 2005, Celaya Emparanza y Galdos Internacional SA (Cegasa) has owned a registered Community design (RCD), consisting of a beacon-like marker used for traffic-signalling purposes. On two separate occasions in 2008, Cegasa demanded that Proyectos Integrales de Balizamiento SL (PROIN) cease and desist the marketing of a beacon-like marker that Cegasa viewed as producing an overall impression similar to its RCD. PROIN provided Cegasa with an undertaking to alter its design, but proceeded subsequently to register the design at issue. Cegasa did not make an application for a declaration of invalidity of PROIN’s design but instead brought infringement proceedings against PROIN before the Alicante Commercial Court. The Alicante Court, having considered that PROIN’s design was a reproduction of Cegasa’s design, asked the CJEU for guidance in respect of whether grounds for an infringement proceeding existed, considering the alleged infringing design was registered in its own right.

DECISION

The Regulation does not address expressly the issue of whether the owner of an earlier RCD can sue the owner of a later RCD for infringement. The CJEU referred to Article 19(1) of the Regulation, which states that “a registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it”. The CJEU indicated that this wording does not exclude the possibility of bringing an action against the holder of a later RCD when read in combination with Article 10(1) of the Regulation. Article 10(1) gives the RCD holder a right to exclude use of any designs that do not produce on the informed user an overall impression different to their design. Therefore, the holder of a later RCD who used a design that offended Article 10(1) could be encompassed by the “any third party” term of Article 19(1).  

The CJEU emphasised that this interpretation was necessary to ensure that infringement proceedings are not undermined and to guarantee that effective protection of RCDs under the Regulation is achieved. This is important considering the examination procedure for registration of RCDs does not take into account pre-registration circumstances surrounding the use of the design, does not provide a means of opposition to registration and is generally less rigorous than the registration process for other forms of registered intellectual property protection, such as trade marks.  

In addition, the CJEU applied the priority principle when interpreting the Regulation. This means that earlier RCDs take precedence over later RCDs, with earlier RCDs being deemed to have met the conditions for registration first. Therefore, although PROIN’s design is registered, PROIN can only enjoy exclusive protection rights if it shows Cegasa’s design is invalid.

The CJEU made it clear that the interpretation of the scope of the rights conferred by CDRs is an objective exercise, rendering the conduct and intention of the parties irrelevant. As such, the fact that PROIN registered its design only after Cegasa had sent it formal cease and desist notices was immaterial.  

COMMENT

The CJEU ruling will be welcomed by holders of RCDs, who can now sue confidently for infringement, even if the product in question is protected by a later RCD. RCD holders should also take comfort in this decision as it shows that: i) the holder of the earlier RCD does not need to apply to invalidate the later RCD before bringing an infringement action; and ii) where two RCDs are in conflict, the onus to prove that the earlier RCD is invalid falls on the holder of the later registration. This judgment is also likely to deter potential infringers from registering “infringing designs” in the hope of invoking the registration as a defence in an infringement action.