New ruling determines design rights' scope of protection

New ruling from the Maritime and Commercial High Court expands the protection of holders of design rights. Horten represented the manufacturer of a diaper pail, Sangenic, during a legal action where the court determined that the depicting of a pail on a label used in Lamico's marketing of a pail cassette infringed Sangenic's design right.

Sangenic was the first manufacturer of a diaper pail with a cassette sealing the diaper in a bag. Subsequently, Lamico also started selling cassettes fitting into Sangenic's diaper pails and in connection with this sale, Lamico used special labels on its packages depicting Sangenic's diaper pail. Sangenic holds the design right to a three-dimensional design of the entire depicted diaper pail, but in connection with Lamico's sale of a "part" of the diaper pail, Sangenic wished to prohibit a two-dimensional use of the design.

The legal action gave rise to two fundamental questions:
1) whether article 19 (1) of the Community Design Regulation  gives the holder of the design right the possibility of prohibiting third party use of a design irrespective of whether the use is two-dimensional or three-dimensional, and 2) whether the third party may lawfully use its design whenever necessary to  indicate the purpose of the product as an accessory or spare part.

ARTICLE 19 (1) OF THE  COMMUNITY DESIGN REGULATION MUST BE INTERPRETED EXPANSIVELY

As regards the first question, the Court was inspired by the German Supreme Court ruling of 7 April 2011 in case ZR 56/09 (KG) ICE, GRUR 2011/1117. The Supreme Court ruled that the design right to a train had been infringed as an exhibition catalogue depicted a resembling train. According to the Supreme Court, the holder of the design right could prohibit third party use of the design irrespective of whether the use was two-dimensional or three-dimensional.

In the case before the Maritime and Commercial High Court Lamico claimed that article 19 (1) of the Community Design Regulation does not mention depiction and based on this, Lamico concluded that article 19 (1) only protects against imitation of the actually registered design. The Court dismissed this construction stating that: "the use of the design, which Sangenic can prohibit, is described in article 19 (1), 2nd sentence, and initially aims at the use of a "product", see article 3 b), but the description is not exhaustive and does not contradict that the exclusive right may also be enforced in relation to a two-dimensional use of a three-dimensional design by way of e.g. depiction and graphic representation."

The Danish Court therefore agreed with the German Supreme Court's expansive interpretation, according to which the protection of article 19 (1) must be understood as including two-dimensional depictions and representations.  

THIRD PARTIES MAY NOT USE A PROTECTED DESIGN TO INDICATE THE PURPOSE OF A PRODUCT AS AN ACCESSORY OR SPARE PART

The second question concerning the possibility of using a third party design whenever necessary to indicate the purpose of a product as an accessory or spare part was of a more fundamental nature.

Sangenic claimed that no parallel could be made to section 5, paragraph 3 of the Trademark Act, which allows the use of trademarks whenever necessary to indicate the purpose of a product as an accessory or a spare part. Lamico disputed this view claiming that a spare part manufacturer must be able to refer to the fact that a product fits a design. According to Lamico this exemption to the protection of the design right appeared from section 10, no. 3 of the Design Act, which allows a third party to "cite" a protected design.

As regards the second question, the Court also dismissed Lamico's interpretation of the Act thereby determining that no parallel may be made between the exemption in section 5, paragraph 3 of the Trademark Act and the exemption in section 10 (3) of the Design Act. Holders of design rights are therefore not to tolerate third party use of their designs to indicate the purpose of a product as an accessory or a spare part.

PROTECTION OF HOLDERS OF DESIGN RIGHTS HAS BEEN EXTENDED

Via this legal action, Horten has contributed to expanding the protection of holders of design rights, and with the Court's ruling, the holders have:

1) both the German Supreme Court's and the Court's word that article 19 of the Community Design Regulation must be interpreted expansively and
2) the Court's word that a third party may not lawfully use a protected design to indicate the purpose of a product as an accessory or a spare part.

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Anders Valentin

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