The Civil Division of the High Court of Justice (TS as per its Spanish acronyms), in its judgment dated September 27th, 2012 dismissed the appeal filed by a private individual and the company CM Salvi, SL against the judgment issued by the Court of Appeal. In this case the claim was filed based on a failure to comply with the payments intended for royalties as agreed by the parties in the contract signed, by virtue of which, Industrias de Iluminación Roura, S.L. were authorized to use the design of the lamppost of the plaintiffs. Likewise, the defendant claimed based on the infringement of the intellectual property rights on the design as a result of the exploitation of the design after the completion date of the contract.

In the first instance the claim based on the breach of the contract was accepted, however, the claim on infringement of the design was dismissed, given that the Court considered that the use of such design was permitted by virtue of the agreement entered by and between the parties.

Later the Regional Court of Barcelona confirmed both judgements with a slight difference; the Regional Court of Barcelona considered that the design could not be protected as intellectual property since it did not comply with the required level of “originality” to be protected by such Law.

The claimants filed an appeal against the mentioned decision, in this respect, it is worthy to highlight the rejection of the third plea in the appeal which was based on the violation of the case law concerning the unitary concept of originality included in Section 10 of the Intellectual Property Law (LPI as per its Spanish acronyms), and the principle of dual protection of industrial design duly established by the sforementioned Law as well as the additional disposition 10 of the Act on legal protection of Industrial Designs, given that the Court issued the judgement based on the lack of enough originality of the design of the lamppost.

Thus the High Court considers that in order for the design to be protected by copyright, apart from fulfilling the requirements of novelty and uniqueness requested for a design to be registered pursuant to Section 5 of the aforementioned Act 20/2003 dated July 7th, on Legal Protection of industrial Design, it is also necessary that the design complies with the requirements included in the Explanatory Memorandum and the 10th Additional Provision of the mentioned Act, in which it is stated that that nothing prevents that whether the "original or particularly creative design", that "meets the required level of creativity and originality necessary for the design to be protected as a piece of art by the LPI", may also avail itself of the protection provided by the LPI.

Additionally the High Court states that as far as it is explained in the Explanatory Memorandum on the Intellectual Property Protection Act, the legal protected good by the mentioned law and in general, by the industrial property law related to the features of appearance of the product itself or its ornamentation, is "the value added by the design to the product from the commercial point of view, regardless of its aesthetic or artistic level and its originality.”

Thus in this case the High Court of Justice considered that the lamppost design could not be protected by the LPI as it does not meet the creativity and originality level requested for the design to be protected as a work of art pursuant to the LPI, and thus the third plea of the appeal was rejected.