Industrial Design: scope of protection and informed used according to Spanish Supreme Court
Last 5th of May, the Spanish Supreme Court (TS) ruled on the Case 275/2017 between Barcino R. Mas de Formes y Colors S.L. (Barcino) et al. and Creaciones Jumi S.L. et al.
The conflict was referred to a series of animal designs produced by the defendant who creates them by using trencadís – a technique inspired by Antonio Gaudí’s works.
Barcino (claimant and counter-defendant, now appellant) based their actions on trademark and designs infringement, as well as on unfair competition. In addition, they requested the cancellation of the defendant’s designs.
On the other hand, Creaciones Jumi (defendant and counter-claimant, respondent now) replied to the claimant and also requested the cancellation of their trademarks.
The 8th Commercial Court of Barcelona substantially admitted the claims and also cancelled Barcino´s trademarks. Conversely, Barcelona Court of Appeal admitted the cancellation of the trademarks while fully dismissed the claim.
Barcino appealed the judgement before the TS based on three grounds: the first was referred to the “informed user” standard – used to evaluate the novelty and singularity of industrial designs. The Court understands that a retailer, with a high degree of attention and reduced technical knowledge, may be deemed an “informed user”. Consequently, the evidence furnished by the defendant was rightly taken into account by the Court of Appeal.
The second ground refers to design´s scope of protection, namely to those similarities which come from the public domain. The TS affirms that slight differences might reinforce the singularity of the conflicting designs if their similarities are referred to elements within the public domain.
Finally, the TS rejects that art. 11 of Spanish Unfair Competition is of application, since the “competitive singularity” of the products relies on elements within the public domain. Additionally, the entrepreneurial origin is not a relevant factor for purchasers of this type of products; and moreover, the use of different trademarks contributes to exclude the risk of association.
Consequently, the Court totally rejects the appellation.
Related Posts:
- Jurisdiction for declarations of non-infringement
- The Supreme Court Rules on the Post-mortem Protection of Salvador Dalí’s Image Rights
- The consequences of the anticipation of some of the elements of an infringed design, according to the Appeal Court of Alicante.
- Recent ruling of the Supreme Court in “VILEDA Vs. SPONTEX” Case