The European Communities Court of Justice hold on February 16th, a relevant judgement referred to Community Designs that is likely to deter the practise of some potential infringers of registering “hedge community designs” to defend themselves of infringing actions sued by earlier registered design owners.


In this case the conflict took place between the companies Celaya Emparanza y Galdós Internacional, S.A. («CEGASA»), as plaintiff and Proyectos Integrales de Balizamiento, S.L. («PROIN») as defendant, by means of an infringing action of Registered Community Design (RCD) sued by CEGASA.


 


In the course of the proceedings, the defendant alleged that the “infringing design” was also a registered design that even though later it confers to the owner the same exclusive rights than the earlier design to his proprietor. Therefore, under the same argument, the defendant stated that prior to the infringing action the plaintiff should have been file an invalidity action against the “infringing design”. Moreover, it is relevant to indicate that the defendant registered its design at the OHIM only after CEGASA had sent it formal cease and desist letter.


 


Following the cited arguments the Alicante’s Commercial Court, in charge of the case, needed guidance about the interpretation of Article 19(1) of the Community Designs Regulation (6/2002/EC), since the Regulation does not address expressly the issue of whether the owner of an earlier RCD can sue the owner of a later RCD for infringement., therefore it asked the CJEU for clarify by means of a preliminary ruling.


 


The Court indicated that this wording does not exclude the possibility of bringing an action against the holder of a later registered design when it is read in combination with Article 10(1) of the Regulation that gives the registered design holder a right to exclude use of any designs that do not produce on the informed user an overall impression different to their design.


Moreover it added that the conduct or intention of the third party does not change the aforesaid conclusions.


 


The beneficial consequences of the above findings for the owners of registered community designs would be:


 


a) On one hand that the owners of registered designs will sue confidently for infringement, even if the challenged product in question is protected by a later registered design.


 


b) On the other hand, the above also implies an advantage for the plaintiff that would not need to apply for invalidity of the later design before bringing an infringement action (contrary to the practise in much cases of trademarks infringements).


 


Without any doubt, all the above will deter from now on the potential infringers from registering “hedge community designs” with the intention of invoking them as a defence argument in case of an infringing action.