NEW TRANDS FOR PROTECTION OF DESIGN IN THE EU NEW TRENDS FOR THE PROTECTION OF DESIGNS IN THE...

NEW TRANDS FOR PROTECTION OF DESIGN IN

THE EU

NEW TRENDS FOR THE PROTECTION OF

DESIGNS IN THE EUROPEAN UNION

Dr. Simone Dr. Simone BONGIOVANNIBONGIOVANNI

[email protected]@studiotorta.it

2009 © Studio Torta 1

Sources of protection:

a) Protection conferred by Community Design

b) Protection conferred by three-dimensional Community Trademark

c) Protection conferred by Copyright


Protection conferred by Community Design

Industrial design protection is Industrial design protection is available in the EU for available in the EU for new designsnew designs having having individual characterindividual character..

Protection may be obtained by filing at Protection may be obtained by filing at the Office (registered design) or by the the Office (registered design) or by the disclosure of the design in the EU disclosure of the design in the EU (unregistered design).(unregistered design).


Protection conferred by three-dimensional (3D) community trademark

A 3D trademark protection is available if A 3D trademark protection is available if the the product can be considered as a signproduct can be considered as a sign which distinguishes the applicant's goods which distinguishes the applicant's goods from those of anyone in a similar from those of anyone in a similar business. business.


Protection conferred by three-dimensional (3D) community trademark A new and very unusual or original shape A new and very unusual or original shape

may be protected by Community Design may be protected by Community Design but is not automatically protected by but is not automatically protected by trademark too.trademark too.

In fact, it will not be registered as a CTM In fact, it will not be registered as a CTM if it does not comply with the condition of if it does not comply with the condition of being distinctive as regards the products being distinctive as regards the products or services which have been applied for.or services which have been applied for.


Protection conferred by Community DesignCase Law


The scope of protection conferred by a The scope of protection conferred by a Community design shall include any design Community design shall include any design which does not produce a different overall which does not produce a different overall impression on the informed user.impression on the informed user.

In assessing the scope of protection, the In assessing the scope of protection, the degree of freedom of the designer in degree of freedom of the designer in developing his design shall be taken into developing his design shall be taken into consideration.consideration.



Since 2003 Fiat has been selling the “Nuova Since 2003 Fiat has been selling the “Nuova Panda” – a restyled version of the well-Panda” – a restyled version of the well-known “Panda” car which has been known “Panda” car which has been marketed with great success since the early marketed with great success since the early eightieseighties



Fiat filed an Italian Design in year 2002 Fiat filed an Italian Design in year 2002 which has been extended as Community which has been extended as Community Design. Design.

This design has also been filed in a number This design has also been filed in a number of non EU-countries, for instance, China.of non EU-countries, for instance, China.




“Nuova Panda” car


Great Wall Motor Co. sells its “Peri” car in Great Wall Motor Co. sells its “Peri” car in China and in a number of extra China China and in a number of extra China countries. (Russia, Algeria, Egypt and countries. (Russia, Algeria, Egypt and Syria)Syria)




“Peri” car


According to media According to media releases (internet releases (internet websites and interviews websites and interviews by its managers) Great by its managers) Great Wall communicated its Wall communicated its intention to launch the intention to launch the “Peri” car in the “Peri” car in the European Union.European Union.



Fiat showed the Court that Great Wall had Fiat showed the Court that Great Wall had already selected its European distributors already selected its European distributors and had started type test procedures on the and had started type test procedures on the car according to European standards.car according to European standards.



Fiat sued Great Wall Motors Co. both in Fiat sued Great Wall Motors Co. both in Italy and in China claiming infringement of Italy and in China claiming infringement of its Community Design. The request was its Community Design. The request was based on the following:based on the following:


In the perception of an informed user the general impression of the “Peri” car would not differ from the design filed by Fiat.



“Peri” car “Nuova Panda” car



Superimposed imageSuperimposed image


The Court ruled that the individual The Court ruled that the individual character of the design deriving from the character of the design deriving from the general lines and proportions of the single general lines and proportions of the single volumes was almost entirely replicated in volumes was almost entirely replicated in the “Peri” car, irrespective of the specific the “Peri” car, irrespective of the specific shape of some details. The “simple” lines of shape of some details. The “simple” lines of the “Panda” car were reproduced.the “Panda” car were reproduced.



The main differences were found in the front grill, The main differences were found in the front grill, in the lights and in some details of the sides; in the lights and in some details of the sides; however the above differences were not however the above differences were not considered sufficient to exclude infringement. considered sufficient to exclude infringement.

The Court noticed that the “Peri” car could be The Court noticed that the “Peri” car could be considered a “Panda” with a different front grill. considered a “Panda” with a different front grill.

The Court also acknowledged that some views The Court also acknowledged that some views (for instance side view) were almost identical.(for instance side view) were almost identical.



The Court ruled that the general impression The Court ruled that the general impression of the “Peri” car did not differ from Fiat’s of the “Peri” car did not differ from Fiat’s and produced a “déjà vu” feeling in the and produced a “déjà vu” feeling in the informed user. Consequently, the Court informed user. Consequently, the Court granted Fiat’s claims.granted Fiat’s claims.



On the contrary the Chinese Court took an On the contrary the Chinese Court took an opposite view. The Chinese Court held that opposite view. The Chinese Court held that there were noticeable differences between there were noticeable differences between the Fiat’s design and the “Peri” car.the Fiat’s design and the “Peri” car.

The Court therefore rejected Fiat’s claim The Court therefore rejected Fiat’s claim and condemned Fiat to pay legal costs.and condemned Fiat to pay legal costs.



Protection conferred by three-dimensional Community TrademarkCase Law

Protection conferred by three-dimensional Community Trademark

Daimler Chrysler AG owns an International Daimler Chrysler AG owns an International Design registration and a three-dimensional Design registration and a three-dimensional Community Trademark for the “Smart” car.Community Trademark for the “Smart” car.



Daimler Chrysler AG claimed that Nord-Daimler Chrysler AG claimed that Nord-Auto and O.M.C.I. infringed its Trademark Auto and O.M.C.I. infringed its Trademark and Design rights by distributing the and Design rights by distributing the Chinese “Buble” city car in Europe.Chinese “Buble” city car in Europe.



Daimler Chrysler AG acted on three Daimler Chrysler AG acted on three different grounds.different grounds.

Design infringementDesign infringement Trademark infringementTrademark infringement Unfair competitionUnfair competition (the car, very cheap, (the car, very cheap,

was presented as the “Chinese” Smart on was presented as the “Chinese” Smart on several specialized magazines.)several specialized magazines.)




““Buble” car “Smart” carBuble” car “Smart” car



A previous urgent decision (inhibition) was A previous urgent decision (inhibition) was obtained in Germany where the court of obtained in Germany where the court of Frankfurt has inhibited (2007) the Chinese Frankfurt has inhibited (2007) the Chinese producer to import the car and to make producer to import the car and to make advertisement of the car (the car had to be advertisement of the car (the car had to be presented at the Frankfurt car exhibition).presented at the Frankfurt car exhibition).



The defender claimed that:The defender claimed that: The design was not valid because of a The design was not valid because of a

previous disclosure.previous disclosure. The trademark was not valid as a car shape The trademark was not valid as a car shape

cannot be registered.cannot be registered. Unfair competition was not an issue as the Unfair competition was not an issue as the

two cars had different technical features.two cars had different technical features.


The Court held that the general impression of the The Court held that the general impression of the design of the “Smart” car and the general impression design of the “Smart” car and the general impression of the design of the “Buble” car differed, as the of the design of the “Buble” car differed, as the Chinese car did not have the Chinese car did not have the same two-tonesame two-tone effect. effect.

Consequently Design infringement was excluded.Consequently Design infringement was excluded. Moreover, only the two-tone effect was found to be Moreover, only the two-tone effect was found to be

valid because of the disclosure of the design but valid because of the disclosure of the design but without the two-tone effect.without the two-tone effect.



However, according to the Court, However, according to the Court, Trademarks and Designs had a Trademarks and Designs had a different different scope of protectionscope of protection. In particular the scope . In particular the scope of Trademark protection is of Trademark protection is broaderbroader than than the scope of Design protection. the scope of Design protection.



In addition In addition the relevant publicthe relevant public (i.e. the (i.e. the “informed user”) “informed user”) is differentis different: in the case of : in the case of Trademarks it is the “average consumer” Trademarks it is the “average consumer” whereas in the case of Designs it is the whereas in the case of Designs it is the “informed consumer”.“informed consumer”.



In greater detail, the Court ruled that the In greater detail, the Court ruled that the shape of the Chinese car was very similar to shape of the Chinese car was very similar to the shape represented in Daimler’s three-the shape represented in Daimler’s three-dimensional Community Trademark so that dimensional Community Trademark so that there was a relevant risk of confusion. The there was a relevant risk of confusion. The Court ruled that the Chinese “Buble” car Court ruled that the Chinese “Buble” car infringed Daimler’s three-dimensional infringed Daimler’s three-dimensional Community Trademark.Community Trademark.



Moreover, Community Design was a valid Moreover, Community Design was a valid one as the shape of the car was not imposed one as the shape of the car was not imposed by the nature of the product (was not a by the nature of the product (was not a necessary one). necessary one).

Due to the “Special” shape and the Due to the “Special” shape and the commercial success, the public immediately commercial success, the public immediately links the shape with the producer.links the shape with the producer.



So both Design and Trademark protection So both Design and Trademark protection applied.applied.



Measures granted by the CourtMeasures granted by the Court- Seizure of all vehicles importedSeizure of all vehicles imported- Inhibition of any commercial activity Inhibition of any commercial activity

regarding the above vehiclesregarding the above vehicles- The Court imposed the payment of 10.000 The Court imposed the payment of 10.000

euros for any violation of the ordereuros for any violation of the order- Publication of the Court order on a number Publication of the Court order on a number

of important magazinesof important magazines



Protection conferred by CopyrightCase Law

Protection conferred by Copyright

An Italian company (Vitra) An Italian company (Vitra) summoned another Italian summoned another Italian company before the Court of company before the Court of Milan, claiming that it was Milan, claiming that it was the licensee of the Design of a the licensee of the Design of a famous chair called “Panton”, famous chair called “Panton”, created by designer Verner created by designer Verner Panton in the 1960’s.Panton in the 1960’s.


““Panton” chairPanton” chair


Verner Panton Verner Panton is considered one of is considered one of Denmark's most influential 20th-Denmark's most influential 20th-century furniture and interior designers. century furniture and interior designers. During his career, he created During his career, he created innovative and futuristic designs in a innovative and futuristic designs in a variety of materials, especially plastics, variety of materials, especially plastics, and in vibrant colours. His style was and in vibrant colours. His style was very "1960s" but regained popularity at very "1960s" but regained popularity at the end of the 20th century; as of 2004, the end of the 20th century; as of 2004, Panton's most well-known furniture Panton's most well-known furniture models are still in production.models are still in production.



The Court held that the "Panton" chair The Court held that the "Panton" chair had to be considered as a very famous had to be considered as a very famous product that was also exposed in product that was also exposed in museums and exhibitions.museums and exhibitions.



The plaintiff claimed that the The plaintiff claimed that the defendant produced and sold a defendant produced and sold a number of chairs named number of chairs named “Loft” that wholly resembled “Loft” that wholly resembled the “Panton” chair, thus the “Panton” chair, thus infringing Vitra’s exclusive infringing Vitra’s exclusive rights in the design.rights in the design.


““Loft” chairLoft” chair


The claimant requested the Court to The claimant requested the Court to grant a preliminary injunction and to grant a preliminary injunction and to order the seizure of the infringement order the seizure of the infringement goods.goods.



In Italy protection by copyright for In Italy protection by copyright for individual design is available; however individual design is available; however the protection is not automatic as only the protection is not automatic as only items having “artistic value” may items having “artistic value” may benefit from this longer protection (25 benefit from this longer protection (25 years from the death of the designer years from the death of the designer instead of 25 years from the date of instead of 25 years from the date of filing of designs).filing of designs).



The Court came to the conclusion that The Court came to the conclusion that the "Panton" chair had an "artistic value" the "Panton" chair had an "artistic value" and an "artistic character" and therefore and an "artistic character" and therefore had to be protected under the Italian IP had to be protected under the Italian IP Code. In light of this, the Court granted Code. In light of this, the Court granted the preliminary injunction and seizure the preliminary injunction and seizure requested by the claimant.requested by the claimant.



Key issue: Key issue:

copyright protection is available only in copyright protection is available only in limited cases, however in this selected limited cases, however in this selected cases protection is rather broad.cases protection is rather broad.


NEW TRANDS FOR PROTECTION OF DESIGN IN

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