Enforcement

Grounds for a claim

What are the key causes of action?

The European Union Intellectual Property Office (EUIPO) can decide on invalidity, whereas national courts can decide on infringement and invalidity matters.

Procedures

What enforcement procedures are available?

According to article 105 of the EUIPO, the Invalidity Division of the EUIPO shall be responsible for taking decisions concerning applications for declarations of invalidity of registered Community designs. Article 106 extends the responsibilities of the EUIPO Boards of Appeal to the examination of appeals relating to decisions given by the Invalidity Division.

The decisions by the Boards of Appeal may be subject to an appeal before the General Court of the European Union. The grounds for such appeals are laid down in article 61(2) of the registered Community design regulation. According to article 61:

  • actions may be brought before the General Court of the European Union against decisions of the Boards of Appeal on appeals;
  • action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or any rule of law relating to their application or misuse of power;
  • the General Court of the European Union has jurisdiction to annul or to alter the contested decision;
  • an action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision;
  • an action shall be brought before the General Court of the European Union within two months of the date of notification of the decision of the Board of Appeal; and
  • the Office shall be required to take the necessary measures to comply with the judgment of the General Court of the European Union.

 

Appeals on points of law only may be brought before the Court of Justice against judgments and orders of the General Court of the European Union. If the appeal is admissible and well-founded, the Court of Justice sets aside the judgment of the General Court. Where the state of the proceedings so permits, the Court of Justice may itself decide the case. Otherwise, it refers the case back to the General Court, which is bound by the decision given by the Court of Justice on the appeal.

 

Infringement matters

According to article 81 of the Community Design Regulation (CDR), the Community design courts have exclusive jurisdiction:

  1. for infringement actions and – if they are permitted under national law – actions in respect of threatened infringement of Community designs;
  2. for actions for declaration of non-infringement of Community designs, if they are permitted under national law;
  3. for actions for a declaration of invalidity of an unregistered Community design; and
  4. for counterclaims for a declaration of invalidity of a Community design raised in connection with actions under (1).

 

Article 92 of the CDR concerns appeals relating to Community design courts (national courts). It provides as follows:

  • an appeal to the Community design courts of the second instance shall lie from judgments of the Community design courts of the first instance in respect of proceedings arising from the actions and claims referred to in article 81;
  • the conditions under which an appeal may be lodged with a Community design court of the second instance shall be determined by the national law of the EU member state in which that court is located; and
  • the national rules concerning further appeal shall be applicable in respect of judgments of Community design courts of the second instance.
Remedies

What remedies are available?

Article 89 of the CDR provides:

 

Where in an action for infringement or threatened infringement a Community design court finds that the defendant has infringed or threatened to infringe a Community design, it shall, unless there are special reasons for not doing so, order the following measures:

  • an order prohibiting the defendant from proceeding with the acts that have infringed or would infringe the Community design;
  • an order to seize the infringing products;
  • an order to seize materials and implements predominantly used to manufacture the infringing goods, if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circumstances;
  • any order imposing other sanctions appropriate under the circumstances that are provided by the law of the Member State in which the acts of infringement or threatened infringement are committed, including its private international law.

 

The Community design court shall take such measures in accordance with its national law as are aimed at ensuring that the orders referred to in paragraph 1 are complied with.

A Community design is an object of property in accordance with national law. The remedies for infringing a Community design are the same as with infringement of national rights. Damages and unjust enrichment may be available.

Enforcement time frame

What are the time frames for the resolution of enforcement actions for registered and unregistered rights?

The time frames depend on the national proceedings and should be assessed country-by-country.

Recent cases

What key cases from the past 18 months should rights holders be aware of?

Rothy’s Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC)

The Intellectual Property Enterprise Court ruled that Austrian shoe manufacturer Giesswein infringed the registered Community Design right of California-based shoe manufacturer Rothy’s Inc (Rothy’s) concerning a design of a pointed ballet flat shoe. The case also included an unregistered design for which no infringement was found. The case provides insight especially concerning the role of evidence and from a practical perspective also highlights the importance of sufficiently detailed and high-quality drawings when filing design applications. It should be noted that, as a result of Brexit, this is the last Community Design decision of a UK court.

 

Lego A/S v EUIPO [2021] T-515/19 General Court

The Second Chamber of the General Court (GC) annulled a decision of the EUIPO that declared the design of a Lego brick invalid. The decision of the GC provides insight into the interpretation of article 8 of Design regulation ‘Designs dictated by their technical function and designs of interconnections’. Clarification is helpful in the assessment and registration of modular systems and designs with technical functions, as well as in appeal procedures.

 

Bibita Group v EUIPO [2021] T‑326/20 General Court

The Fifth Chamber of the GC upheld the EUIPO’s Board of Appeal decision, which rejected the application for a declaration of invalidity of the design of a beverage bottle. In evaluating the alleged conflict with a prior design, the GC carried out a four-stage assessment of the individual character of the contested design under article 6 of Council Regulation (EC) No. 6/2002. This decision illustrates how such assessment is typically based on:

  • the sector to which the products belong;
  • the informed user of those products;
  • the designer’s degree of freedom in developing his or her design; and
  • the outcome of the comparison of the overall impressions produced on the informed user by the design at issue and by the prior design, which has been made available to the public, taken individually.