Audrey Dufrenoy Aintzane MARBOEUF August 29 2022 Design infringement: Decathlon has no monopoly on full-face diving masks MIIP MADE IN IP | Intellectual Property - France Audrey Dufrenoy, Aintzane MARBOEUF Intellectual Property IntroductionFactsDecisionCommentIntroductionAlthough Decathlon's Easybreath mask may be the first diving mask that comes to mind when consumers think of snorkelling, the French leader in the sports market has no monopoly on full-face masks. This was decided by the Paris Court of Appeal on 28 January 2022 in a case that examined the validity of the Easybreath mask design and its potential infringement by Intersport.This decision is a useful reminder that the adoption of essentially functional characteristics does not constitute design infringement. The judgment also specified that the successive filing of Community designs does not constitute fraudulent behaviour.FactsIn August 2014, Decathlon, already the owner of Community design No. 002340224-0001 (dated 6 November 2013) (Figure 1), filed Community design No. 002526699-0001 (Figure 2).Figure 1: Decathlon's existing Community design (No. 002340224-0001)Figure 2: Decathlon's applied-for Community design (No. 002526699-0001)In 2017, Decathlon brought an action against the commercially linked companies Intersport France and Phoenix Group GmbH, after becoming aware that they were marketing a full-face diving mask sharing some of the characteristics of its Easybreath mask (Figure 3). Decathlon alleged both infringement of its Community design No. 002526699-0001 and unfair competition and parasitism.Figure 3: diving mask marketed by Intersport France and Phoenix Group GmbHDissatisfied with the judgment issued by the Paris Court of First Instance in February 2020, both Decathlon and Intersport France and Phoenix Group GmbH filed an appeal.Decision Several points were submitted to the Paris Court of Appeal – in particular:the validity of Community design No. 002526699-0001its infringement; andthe question of unfair and parasitic competition.Validity of designRegarding the validity of the Community design, Intersport and Phoenix Group tried to obtain its cancellation on the basis of several arguments, which were all rejected by the judges – namely, that:the filing of the design had been fraudulent – as Decathlon had filed a similar model in November 2013 (No. 002340224-0001), Intersport and Phoenix Group claimed that the only goal of the new filing was to extend the duration of the monopoly attached to the first one, which constituted a fraudulent filing. However, the judges recalled that although fraud can be a ground of invalidity of a trademark, this is not the case for designs – fraud is not mentioned in the exhaustive list under article 25 of the relevant regulation. The judges also held that:the only successive filing of Community designs for the same mask, but differing in the representation of the product, which determines the scope of the filing, is not sufficient to establish the fraudulent nature of the fraudulent nature of the second filing;the design filing was unclear – according to Intersport and Phoenix Group, it was not easy distinguish the different elements of the design in the images filed by Decathlon. Considering that the representation of the diving mask model showed a single product, the characteristics of which were clearly identifiable, this argument was dismissed by the Court;the design lacked novelty – Intersport and Phoenix Group claimed that Decathlon's prior Community design, dated 2013, had to be considered as destroying the novelty of the filing dated 2014. However, as the first design had been filed less than a year before the second one (ie, within the grace period) and in the name of the same company, this argument was rejected; andthe design comprised functional characteristics – the Paris Court of Appeal also rejected the argument that the Easybreath mask was essentially characterised by technical functions, as Decathlon had provided sufficient documents and information attesting its intention to create an "attractive design" for some parts of the mask, such as its external shape and the form of the snorkel.InfringementDespite confirming the validity of Decathlon's Community design, the Court also held that it had not been infringed by Intersport. Considering that the frame of the Easybreath mask was made up of two parts, whereas the "Technopro" mask comprised a single block, and that the respective shapes and colours of the snorkels also differed, no risk of confusion could be validly established.Unfair and parasitic competitionHowever, regarding unfair and parasitic competition, as Decathlon managed to prove that its Easybreath mask was one of its flagship products and the subject of heavy advertising investments, Intersport and Phoenix Group's full-face diving mask had to be recognised as a deliberate intention to benefit from the reputation and the investment of Decathlon. This was particularly the case since they failed to evidence their intention to make their product known to the general public.CommentFirst, the decision recalls the principle that the reproduction of functional characteristics alone cannot result in a finding of infringement, despite the fact that such reproduction led to the same visual global impression being created in this case.Indeed, the goal of designs is to protect the appearance of products and the aesthetic choices made by their creators independently of all technical constraints. Therefore, as recognised by the judges, it is essential to identify the nature of each characteristic of both designs to appreciate whether they are technical or aesthetic. Only once this analysis is complete can the aesthetic characteristics be compared to determine whether they give the products the same visual global impression. At this stage, the degree of freedom of the designer in developing their creation shall be taken into consideration.In the current case, Decathlon accused Intersport and Phoenix Group of having created and commercialised a mask that shared the following elements with its mask:the same ovoid shape;its full transparency;the positioning of the snorkel at the top centre of the mask; andits straight shape.However, all these elements were solely dictated by technical functions. On the contrary, and as highlighted by the judges, the masks differed from each other regarding the shape and appearance of the snorkel (ie, transparent versus white), the global form of the mask frame and the shape of the window. As these different elements were not constrained by technical functions, the masks in comparison had to be considered as sufficiently different to reject a finding of infringement.Second, the judgment emphasises that even where a court decides that no infringement has occurred, this does not necessarily mean that the court will also decide that there has been no parasitic behaviour.It is interesting to see how, despite the fact that the masks are considered different, Intersport and Phoenix Group's behaviour evidenced their intention to benefit from the financial efforts, investments and success of Decathlon with its own Esaybreath mask by creating another full-face diving mask.Indeed, when Intersport and Phoenix Group decided to create and market their own mask, the business success and the notoriety of the Esaybreath mask was clear. Since its launch in 2014, and especially in 2017 when the challenged mask arrived on the market, Decathlon's mask was already a flagship product and was considered a breakthrough innovation by both consumers and the media (both specialised and unspecialised). All the evidence suggested that Intersport and Phoenix Group had deliberately intended to benefit from such success, which characterises parasitic behaviour.The final interesting point of this decision concerns the fraudulent filing claim. According to Intersport and Phoenix Group, Decathlon's second Community design had to be considered fraudulent as it concerned the same product and territory as the one filed less than a year before. As such, its sole goal was to extend the protection duration of the first filing.As recalled by the Court, in design law – contrary to trademark law – fraud is not a ground for invalidity, as it is not mentioned in the exhaustive list set out in the regulation. Even if fraud was prescribed by the law, the second design application was filed less than a year after the first one – that is, within the grace period, the purpose of which is to offer a one-year tolerance after the first disclosure to the creator or the beneficiary of a design right.In any case, and as Intersport and Phoenix Group failed to provide any evidence in support of their claim, the successive filing remained valid.The decision is a good example of the different legal means offered by the law to protect and defend IP rights while respecting freedom of trade.For further information on this topic please contact Audrey Dufrenoy at INLEX IP Expertise by telephone (+33 1 56 59 70 90) or email ([email protected]). The INLEX IP Expertise website can be accessed at inlex.com.