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Whilst it is common to consider the interaction between IP rights of the same type, and the extent to which the earlier right affects the validity of the later one, existing IP rights can sometimes also impact on the validity of later rights that are of a different type. A case in point is that a European registered community design (RCD) can be held invalid if it makes unauthorised use of a work protected under the copyright law of an EU country. This is set out in Article 25(1)(f) of Regulation (EC) No. 6/2002. In judgments T-556/11 and T-567/11 recently handed down by the EU’s General Court, two RCDs were held to be invalid for making unauthorised use of a work protected under French copyright law.
The RCDs represented a cup and saucer decorated with grooves and a soup dish decorated with grooves. Representations of the RCDs are shown on the left hand side of the picture.
The work protected by French copyright law constituted a grooved decoration. Items of crockery with the grooved decoration protected by French copyright law are shown on the right hand side of the picture. The grooved decoration was protected by French copyright law because it fell within the category of intellectual works capable of reflecting the personality of their author.
The RCDs and the items of crockery shown in the picture had nothing in common apart from the grooves, i.e. the work protected by French copyright law.
The General Court upheld an earlier decision, made by the Board of Appeal at the Community Designs Registry OHIM, that the RCDs made unauthorised use of the grooved decoration as protected by French copyright law and were therefore invalid under Article 25(1)(f) of Regulation (EC) No. 6/2002. That Board of Appeal decision had followed an original hearing before the Invalidity Division of OHIM.
One practical point raised by this judgment is that RCDs can be invalidated on a number of grounds under Article 25(1) of Regulation (EC) No. 6/2002. When applying to invalidate an RCD, a party should consider using all of the grounds that could be available, particularly if the party owns relevant earlier rights, e.g. a prior design, a work protected by copyright of an EU Member State or any registered or unregistered trade mark rights in an EU Member State.
In addition, it should be borne in mind that copyright laws are not completely harmonised across the EU. Hence, works protected by copyright in one EU Member State may not be the same as in another EU Member State. Therefore if one of your RCDs is attacked under this provision, it may be advisable to seek assistance from an attorney in the country where the work is protected by copyright (assuming the cost is warranted, of course).
In this case, the RCDs were owned by a Spanish company, while the owner of the work protected under French copyright law was a French company. There was nothing in the General Court’s judgment to suggest that the Spanish company had ever sought advice from a French attorney. Had it done so, the Spanish company’s initial defence to the invalidity action could perhaps have been stronger, since the French attorney might have been more familiar with French copyright law than the Spanish lawyers who represented the Spanish company.
The judgments also emphasised the importance of submitting complete arguments and evidence at first instance in cases involving RCDs. The General Court rejected some plausible-sounding arguments and evidence relating to alleged prior disclosure and lack of originality of the French copyright work as inadmissible solely because they had not been raised earlier (i.e. before the Invalidity Division of OHIM or the Board of Appeal of OHIM). Of course, the General Court still might not have decided the case differently even if the non-admissible arguments and evidence had been admitted. However, it would certainly have been harder for the owner of the French copyright work to have succeeded in invalidating the RCDs. Therefore it is important that there should not be an approach of “holding back” any attacks and a full review of all possible ways to challenge the RCD and all supporting arguments should be made at an early stage.
The boundaries between different IP rights are certainly worth bearing in mind. Indeed, the crossover between registered designs and trade marks was considered in a case last year relating to highlighter pens, which showed that the overlap between registered designs and trade marks can be exploited in invalidation proceedings. In addition, the overlap between rights can assist in building a strong portfolio of IP rights when considering your registration strategies. Utilising and considering all of the available options out of patents, registered designs, unregistered design rights, trade marks and copyright will certainly place you in a stronger position than relying solely on a single type of IP right.