The consequences of the anticipation of some of the elements of an infringed design, according to the Appeal Court of Alicante.
In its recent Judgement of October 8, 2015 (in Spanish), the Appeal Court of Alicante, acting as the Community Trademark and Design Court, issued its decision on the existence of a possible infringement of different international designs owed by our client, the Swiss company Swatch AG, upholding our claim and revoking the first instance ruling.
The registered designs that served as a basis for the infringement lawsuit were, among others, the following:
The Appeal Court shared our position that the following watches, manufactured and marketed by the defendants produced a similar overall impression to the prior designs of Swatch:
The Appeal Court disagreed with one of the key arguments of the earlier decision, according to which the informed user will not focus its attention on the monochromatic aspect of the registered models or on the concept of the double flexible strap, given that these elements have been anticipated by the very plaintiff in its earlier designs that have not been renewed.
In this regard, the Appeal Court followed our thesis, indicating that the above anticipation does not affect in any way the overall impression that the infringing watches produce in the informed user who perceives them as a whole and that the classification of the above indicated elements as less important disregards that the overall impression deriving from the representation of a design is crucial for defining what other models or designs are incompatible with the registered design as a result of a similar overall impression.
Likewise, the decision states that taking into account the type of design in question, the monochromatic aspect and the form of the strap play a leading role. Since the watches are worn in a visible manner on the wrist, the informed users will pay special attention to their appearance.
On the other hand, the judge criticized the absence, in the appealed decision, of specific considerations on the degree of freedom of the designer and sustained that it is a factor that affects the level of differentiation that is required between the compared designs, from the point of view of the requirement of the individual character. In this regard, the appeal judge recalled that the greater the degree of freedom of the designer, the greater the differentiation between the designs has to be.
Moreover, the ruling sustains that the degree of freedom of the designer in the design applied to a wrist watch is extremely high, since practically all elements that compose the basic structure of the watch – the strap, case, crown, face and the cover – , not only can adopt any shape or form but some of them are even dispensable. Also, the appearance of none of the above elements is predetermined by the technical function of the product.
The decision concludes that the strap and the case, in particular, allow for an infinite variability of forms.
As regards the damages, the action was uphold only in relation to the defendant that manufactured the products and, at the same time, was responsible for placing the infringing products on the market for the first time. Consequently, the action for damages was dismissed in relation to the other two co-defendants, the local newspapers published in the south and north of Spain that sold the infringing products together with the newspapers or were about to do that.
The Appeal Court indicated that the damages claim cannot be successful in relation to the newspapers publishers for the following three reasons:
- The codefendants are not objectively responsible for the damages caused in the terms of Article 54.1 of the Design Law (in Spanish) nor they manufactured, imported or placed the products on the market for the first time
- The codefendants, companies that publish the local newspapers, do not operate in the sector of the products in question – the sector of wrist watches – and, therefore, are not required to have particular, extensive and detailed knowledge of the different designs existing in such sector
- The codefendants complied with the cease and desist letter sent by the plaintiff and ceased the infringing activity immediately after receiving
In relation to the above, the fact that the Appeal Court did not order the codefendant that sold the infringing watches with the newspaper to pay the 1% of the turnover made with such sales is surprising, taking into account that the decision holds this company accountable for the infringement of the plaintiff´s designs.
The ruling is not final yet as it may be appealed in cassation.
Related Posts:
- The Relevance of the Description in the Protection of a Community Design
- Industrial Design: scope of protection and informed used according to Spanish Supreme Court
- On the power of owners of Spanish trademarks to file infringement action against owners of later identical or similar trademarks
- The Spanish Supreme Court rules on “forum shopping”: Judgment no. 1/2017, of 10 January 2017.