Federal Court of Justice, Decision of 19 May 2010, I ZR 71/08

The Federal Court of Justice decided on the infringement of a Community design for coasters. In its decision, the court gave guidance on the scope of protection of a Community design, and, in particular, how this scope of protection shall be assessed.

Alessi S.p.A. is the owner of a Community design for the coaster "Blow up".

Please click here to view Alessi's Community design for "Blow Up" coaster

It claimed infringement of its design by Koziol ideas for friends GmbH (Koziol) who produced and sold the plastic coaster "STIXX".

Please click here to view Koziol's "STIXX" coaster

The Regional Court of Frankfurt rejected the claim; the Court of Appeal of Frankfurt granted the claim.

On further appeal, the Federal Court of Justice confirmed the validity of Alessi's Community design, holding it was new, had individual character and there were no other reasons to exclude its protection as a Community design.

With regard to the scope of protection, the court said this neither depended on the level of individual character nor on the grounds on which the individual character of the Community design was established. Rather, the assessment of the scope of protection of a Community design shall be based on a comparison of its overall impression with the overall impression of the allegedly infringing design. For the assessment of the scope of protection (and equally for the assessment of its individual character), the degree of freedom of the designer with regard to the prior art at the time of the registration of the Community design shall be taken into account.

The court held that the degree of the freedom of the designer for coasters was relatively wide, given that the number of possible designs for coasters was almost unlimited. Taking this wide degree of freedom of the designer into account when comparing Alessi's Community design with Koziol's design for the coaster "STIXX", the court found that they shared the same overall impression and that Koziol's design for its "STIXX" coaster was not sufficiently different.

The Federal Court of Justice concluded that Koziol's "STIXX" design infringed Alessi's Community design. It ordered Koziol to pay damages and granted Alessi's additional claims for disclosure and rendering of accounts.