In Stormwear ApS v Yakkay A/S, the Danish Supreme Court refused to refer three questions concerning a Registered Community Design (“RCD”) to the Court of Justice of the European Union (“CJEU”).

This case started with an EU-wide temporary injunction, which the plaintiff Yakkay secured against the defendant Stormwear, concerning Stormwear’s infringement of Yakkay’s bike helmet, which was protected by RCD 917901-0002, the side view of which is illustrated on the right.

This helmet was used together with outer coverings made of fabric and designed to look like common hats. Consumers could purchase a single helmet and also several interchangeable coverings.

 Stormwear made bike helmets that were also covered by fabric designed to look like common hats., using a plastic bike helmet that was nearly identical in dimensions to the RCD. There were, though, differences in the ventilation holes and some other minor differences. Stormwear’s hats were only sold with the common hat coverings attached.

 The Maritime and Commercial Court in Copenhagen found that Stormwear’s bike helmet gave the same overall impression as Yakkay’s. The differences in the ventilation holes and the other minor differences were just details, and did not change this overall impression. Even though Stormwear’s hats were only sold with the common hat coverings, that did not mean that they were a “complex product” in relation to Art. 4(2)(a) of the RCD Regulation (6/2002), because the covering could easily be removed and the bike helmet could be used without the covering.

The Court held that infringement of the design was intentional or at least negligent, ordering the defendant to pay compensation. However, the Court did not find that the plaintiff had suffered damage or disruption of the market. Accordingly the Court ordered the defendant to pay DKK 25,000 in compensation and DKK 82,800 in costs.

 Stormwear appealed to the Danish Supreme Court and, as part of its initial procedure, requested that court to refer three questions to the CJEU:

 1.  When assessing if a later design has a different overall impression from that of a registered Community design, shall the term "overall impression" in Article 10(1) of the Regulation be assessed in relation to all parts of the later design or only in relation to the parts of the later design which are visible under normal use?

 2.  If the answer to question 1 is "only in relation to the parts of the later design, which are visible under normal use", are the assessment criteria applicable identical, mutates mutandis, to the assessment criteria stipulated in Article 4(2) of the Regulation?

 3.  If a registered Community design exclusively consists of a general shape of a product, shall the term "overall impression" as stipulated in Article 10 of the Regulation then be interpreted to referring to all parts of the later design or alternatively be interpreted to refer to the general shape of the alleged infringing design?" 

On 18 June 2014 Danish Supreme Court rejected the request to refer the questions, holding that the question whether the Stormwear’s product was a complex product, and the question of whether there was an infringement of Yakkay’s design rights, were concrete assessments. The provisions of the Regulation which were of importance for the decision did not give rise to such a doubt as to warrant referral to the CJEU.

 Comment: under Art. 234 of the Treaty of Rome, the Danish Supreme Court, as court of last resort, has an obligation to refer when there is a question of interpretation of EU law to the CJEU. There are exceptions, one of them being the principle of acte clair, according to which the correct application of EU law may be so obvious as to leave no scope for any reasonable doubt as to the manner in which the question is raised is to be resolved. 

Although the Danish Supreme Court did not expressly mention acte clair, the decision shows that the Court felt confident that it will be able to make the correct decision without additional assistance from the CJEU. In a way it would have been more helpful to practitioners to get more CJEU guidance concerning complex products, in that there has only been one General Court decision (Honda v Kwang Yang) and no CJEU decisions concerning Art. 4(2) of the Regulation.