CEGASA: the mystery is explained

Katarzyna Gibas (Salvador Ferrandis & Asociados, Madrid) has kindly contacted Class 99 with some further information about Case C-488/10 Celaya Emparanza y Galdos Internacional S.A. v Proyectos Integrales de Balizamientos S.L. which was mentioned on Class 99 on 30 December last.  Katarzyna's firm acts for the plaintiff in the design infringement litigation which has been referred for a preliminary ruling to the Court of Justice. Says Katarzyna:

Our client – CEGASA is the owner of a Community Design no. 000421649-0001, registered in 2005, for road signs. In 2007 Cegasa discovered that PROIN had started commercializing road signs that, in CEGASA´s opinion, did not produce a different overall impression with respect to CEGASA´s road signs. A cease&desist letter was sent, but no initial settlement was forthcoming and eventually PROIN registered its own road sign as a design at OHIM.

In the light of the above, and with the aim to stop the commercializaing the infringing product as soon as possible, our client brought an infringement action before the Community Design Court in Alicante. The other party´s defence was based on the lack of CEGASA´s legal standing to bring an infringement action. It argued that its design was protected by registration for as long as it is not first declared invalid by the OHIM, and that such registration gives it  a right to use its design, according to Art. 19.1 of the Community Design Regulation. It also brought a counter-claim asking for our client's design to be declared invalid.

In essence, we believe that the PROIN design is a defensive design which has been registered to impede the infringement action and to take advantage of the time needed for the declaration of invalidity in order to make a profit from it. Moreover, our opinion is that, since there is the infringement of a prior right, it is irrelevant that the infringer has a registered design if it was registered later than our client´s right. This case also shows that one can make an abusive use of the design registration system where there is no substantial examination whatsoever.

The exclusive right of the rightholder conferred on him by virtue of Art. 19.1 of the Regulation has  both positive and negative aspect (ius prohibendi). Therefore the righholder has the right to prevent any third party not having his consent from using it, regardless of whether that subsequent design is registered.  This disposition does not distinguish between whether it is a third party with or without a registered design. Further, Art. 10 determines expressly that the scope of protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. Again, no distinction is made between a registered and non-registered design.

To sum up, the resolution of the preliminary ruling will permit the Community Court to decide whether CEGASA can bring an infringement action against PROIN without having to request the declaration of invalidity earlier".

Class 99 thanks Katarzyna for her useful information. We all look forward to the ruling.