Lessons from the Spanish Supreme Court on unregistered Community designs: a new Tous case

S. Tous S.L. is a Spanish jewellery company that has been marketing for many years a successful design that a good observer will spot in the ears, neck and other generally exposed parts of the body of human beings, and possibly pets. The design in question represents a forward-looking bear, drawn child-like with a few simple lines. This technique –- afew, simple lines -- has also been used in other Tous designs, such as one representing a girl and a teardrop that are the subject of the decision discussed here.

In 27 July 2010, S. Tous S.L. and Tous Franquicias S.A. (together "Tous"), as owner and licensee respectively of an unregistered design of a teardrop and of a Spanish design registration (no. I0135127) representing a girl, sued New AuriJoya S.L. and Colev Style S.L. ("Aurijoya") for design infringement before the Juzgado de lo Mercantil 1 de Alicante (sitting as the Community Design Court in Spain). The Court dismissed the claim. Tous then appealed and the Appellate Court (Audiencia Provincial de Alicante) confirmed such decision, declaring that Aurijoya did not infringe the Tous designs.

 In 11 May 2012, Tous filed an appeal before the Supreme Court. It alleged that the Appellate Court was wrong because, according to Tous, it had considered that the scope of protection of the unregistered Community design only comprised copies, as opposed to "any design which does not produce on the informed user a different overall impression". The same test would have been applied for the Spanish registered design by the Appellate Court because it allegedly avoided a global comparison and stressed the differences between the designs and the infringing product.

 In its decision of 26 June 2014 no. 339/2014, the Supreme Court (Civil Chamber) again dismissed Tous' appeal, and gave its reasoning on the scope of protection and the rights conferred by a Community design. The Supreme Court said the Appellate Court was right because, while the scope of protection of an unregistered Community design includes any design which does not produce on the informed user a different overall impression –making no difference with the Community registered design (Art. 10 Council Regulation 6/2002 on Community designs), the rights conferred are only against copies of it (Art. 19.2). By copies, one could only understand those designs inspired by the prior design, even where these copies were not identical to it. Therefore, what is relevant is whether the alleged infringing product was created independently. Tous could not convince the Supreme Court that the Appellate Court followed a different approach.

 As to the Spanish registered design (readers should note that there are no provisions in the Spanish Designs Act 20/2003 covering unregistered designs), the Supreme Court added that the Appellate Court, by describing the differences between the registered design and defendant's product, did not mean to exclude a global comparison which was clear on the reasoning of the appealed decision.

 Finally, the Supreme Court recited that this is not a third instance, and so it can only assess whether the law was applied correctly by the Appellate Court to the facts as declared evidenced by the lower courts. In accordance, no comparison was then made by the Supreme Court and it relied on the outcome of this comparison as made by the Appellate Court.

This note was furnished for Class 99 by our good friend and Class 46 blogger Fidel Porcuna (Bird & Bird, Madrid)

Posted by: Blog Administrator @ 03.23
Tags: Spain, unregistered Community designs,

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