The Relevance of the Description in the Protection of a Community Design
Perhaps the title of this post surprises more than one of our readers since in many decisions we find the principle that the protection of a registered Community design is not affected by its description. See as a mere example the judgement of the Spanish Community Trademark no.1 of the 26th of June of 2008, the 10th of June of 2010 or the or the 2nd of January of 2014.
That is nothing but the logical consequence of the general visibility criterion that determines the scope of protection afforded by a given design. In other words, and putting the above in simpler terms, right holders get protection for what it is perceived in the pictures that are filed altogether with the design application, whereas sensu contrario, what may not be seen therein lacks any sort of relevance in this context.
Applying the said principle, a right holder may not intend to rely on the description that could have been included in his registration (note that such description is not mandatory) to extend the protection of a specific design beyond what is shown in the images filed at the time of the application. As already said what we see is what is protected.
However, would the description be relevant to the contrary, this is, not to extend design protection (beyond the pictures filed) but to justify a limitation on the ius prohibendi of its proprietor?
In response to the point raised we find the Judgement of the General Court of the European Union of October 15th 2015, T-251/14 “Promarc Technics” (only available in French and Polish)
In the case at hand what is at stake is the validity of the registered Community design no. 1608365-0001 for “door parts” in view of the existence of the previous US patent. No. 4247237.
One of the arguments of the owner of the challenged design to justify the validity of its right was that the degree of freedom was limited by its technical function (the production process of the design had a number of limitations that reduced the said degree of freedom).
In this regard, the Court notes that, contrary to what was claimed by the right holder, in this case the production process of the design did not limit the aforesaid degree of freedom at all.
To justify its conclusion the GC analyzed the description of the design. Following the words of the judgement, the aforementioned description, limited to “door parts” was considered to be too broad and as such not providing any information about the type of part that constitutes the design or its function. Being that so, and in the absence of any specific reference regarding the functionality of the design, it was understood that the degree of freedom was not, as claimed, limited, and thus the overall impression was not different in relation to earlier patent.
The ruling is a clear example of how the very own actions of the right holder, in this case materialized in the description incorporated into his design, may affect the validity (or the scope of protection ,should that be the case) of a particular right. Thus, and in order to avoid undesired surprises it is very important to get proper advice before applying for the registration of a design.
Related Posts:
- Visible/Not Visible…the General Court, Cookies and Community Design protection
- The consequences of the anticipation of some of the elements of an infringed design, according to the Appeal Court of Alicante.
- The repair clause (“must match”): Is it applicable in cases of trademark infringement? – Brief Analysis of the Spanish case law
- Article by Salvador Ferrandis on Designs in INTA Bulletin