OHIM Invalidity Division, Decision of 8 December 2010, ICD 7085

In a rare case, OHIM's Invalidity Division decided on the invalidity of a Community design, based on claims of unauthorized use of a work protected under French and Belgian copyright law.

AS GmbH is the owner of a Community design for fabrics.

Please click here to view AS' Community design

Prodeco Sarl claimed invalidity of the Community design due to lack of novelty and infringement of French and Belgian copyright law. In particular, Prodeco claimed it was the owner of the copyright in the earlier design of a very similar fabric and that AS had filed the Community design following the seizure of counterfeit fabrics imported by it from China in an attempt to undermine Prodeco's rights in its earlier design. As evidence, Prodeco provided

  • an invoice from the company TEMPO relating to the sale of the rights in the design of the following fabric to Prodeco,

Please click here to view the fabric.

  • a statement of a Belgian designer that this fabric was created by her before the filing date of the Community design and
  • a contract between the designer and TEMPO on the grant of the rights to use and reproduce this fabric.

It also submitted a decision by the Belgian Court of Appeal of Mons which had rejected claims by AS against the seizure of the counterfeit fabrics and confirmed that the design of the fabric was protected under Belgian copyright law and that Prodeco had acquired the rights of use of the fabric from TEMPO.

According the article 25 (1) (f) of the Community Design Regulation, a Community design shall be declared invalid if it constitutes an unauthorized use of a work protected under the copyright law of a EU Member states.

OHIM's Invalidity Division confirmed that the evidence submitted by Prodeco was sufficient to support its claims. The earlier design of the Prodeco's fabric was a work of applied arts which enjoyed protection under French and Belgian copyright law - which was also confirmed by the decision of the Belgian Court of Appeal of Mons.

The Invalidity Division said that according to French case-law, use of a copyright-protected work was established if the main features constituting the originality of the work were copied. Comparing the earlier design and AS' Community design, the Invalidity Division found that they shared the number, width and direction of the stripes, the olive and olive leaves patterns and the design of the stripes and patterns. Since these features constituted the originality of the earlier fabric design, the Community design made use of this work.

OHIM's Invalidity Division concluded that AS' Community design was invalid.