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.

99 mentions of 'design', but it's really a copyright case

Case C‑168/09 Flos SpA v Semeraro Casa e Famiglia SpA, a reference to the European Court of Justice for a preliminary ruling from the Tribunale di Milano (Italy), is really a copyright case but the 'd' word appears in it exactly 99 times.

As the headnote states, the case concerns a "National law [that of Italy] precluding copyright protection or rendering it unenforceable for a certain period in the case of designs which entered the public domain before the entry into force of the law".  The court considers the effect of Article 17 of Design Directive 98/71 on Italy's copyright law, Article 17 being the provision that permits cumulative protection by design and copyright law and, by inference, which also permits protection by copyright even where the work in question was formerly protected by an expired design right.  There's also some interesting analysis of the principle of the protection of legitimate expectations, a doctrine of which I suspect we have yet to hear the last.

Background and illustration here.

Go with the Flos -- unless you're English

A quick reminder: the Court of Justice of the European Union is scheduled to give its ruling this Thursday in Case C-168/09 Flos SpA v Semeraro Casa & Famiglia SpA, a reference for a preliminary ruling from the Tribunale di Milano (Italy) lodged on 12 May 2009.
In case you've momentarily forgotten the questions, let Class 99 jog your memory:

1. Must Articles 17 and 19 of Directive 98/71 be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date?

2. If the answer to the first question is in the negative, must Articles 17 and 19 of Directive 98/71 be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party - without authorisation from the holder of the copyright on such designs - has already produced and marketed products based on such designs in that State?

3. If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive 98/71 be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party - without authorisation from the holder of the copyright on such designs - has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?

We wait with excitement.  Meanwhile, if you want to read the Advocate General's Opinion, it's available in every single official language of the European Union, including Maltese -- but with the exception of English. It is sincerely hoped that Thursday's judgment is not treated in similar fashion.

Class 99 explanation of the background and the Advocate General's ruling here
Teach yourself Maltese here

Spain refers two design infringement questions to Court of Justice

Posted on Curia recently was news of another reference to the Court of Justice of the European Union for a preliminary ruling -- this time from the Juzgado de lo Mercantil No 1 de Alicante, which is Spain's Community Design Court. This is Case C-488/10 Celaya Emparanza y Galdos Internacional S.A. v Proyectos Integrales de Balizamientos S.L. The questions referred for a ruling are as follows:

"In proceedings for infringement of the exclusive right conferred by a registered Community design, does the right to prevent the use thereof by third parties provided for in Article 19(1) of Council Regulation ... 6/20021 ... on Community designs extend to any third party who uses another design that does not produce on informed users a different overall impression or, on the contrary, is a third party who uses a subsequent Community design registered in his name excluded until such time as that design is declared invalid?

Is the answer to the first question unconnected with the intention of the third party or does it depend on his conduct, a decisive point being whether the third party applied for and registered the later Community design after receiving an extra-judicial demand from the proprietor of the earlier Community design calling on him to cease marketing the product on the ground that it infringes rights deriving from that earlier design?"

This weblog would be delighted to hear from any informed reader as to what is the factual background of this reference.

Mystery traffic device design case: can anyone help?

I've just received an email circular from the UK's very helpful Intellectual Property Office which reads as follows:

"We have received notification of a new case referred by Juzgado de lo Mercantil de Alicante - Spain, to the Court of Justice: C-488/10. The case regards the possible infringement of a Community design for a traffic signalling device and the application of prevention of use by a third party under Article 19(1)

The Court have been asked for a preliminary ruling on Article 19(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs

This case and the questions referred to the Court can be viewed on our website at:
http://www.ipo.gov.uk/pro-policy/policy-information/ecj/ecj-2010.htm

If you would like to comment on this case please e-mail policy@ipo.gsi.gov.uk before 29 November 2010.

Regards
International Policy Directorate
Intellectual Property Office"

I clicked the website and the case wasn't listed.  I then tried the case number on the Curia website and couldn't find it either.  Have I been pressing the wrong buttons? Can anyone help -- quickly, since time is of the essence ...

Flos Opinion: help is at hand!

Yesterday I reported here on Class 99 that Advocate General Yve Bot had delivered his opinion in Case C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA -- which was published on the Curia website in ten official languages of the European Union but not in English. It is now my pleasure to thank one of our readers, Alberto Bellan (a trainee with Hogan Lovells Studio Legale, Milan), for the following explanation of the background:

"Factual background

The Italian case on which the Advocate General gave its opinion concerned the "Arco lamp", a master piece of post-war Italian design created by Achille and Pier Giacomo Castiglioni in 1962. The dispute originally involved Flos S.p.A. and Semeraro Casa & Famiglia S.p.A.. Flos is one of the most important global design companies, which had made and sold Arco lamps since the late Seventies under an agreement with Achille and Pier Giacomo Castiglioni's heirs. Semeraro is a furniture producer and retailer which is widely known in Italy. According to the Court of Milan, Semeraro imported from China and distributed in Italy a lamp called "Fluida", which was very similar to Castiglionis' Arco.

Given that Arco has never been protected through any design right, in 2006 Flos started an interim proceeding before the Court of Milan on the basis of its copyright in the Arco, seeking a preliminary injunction and seizure against Semeraro. In December 2006 the Court of Milan made a preliminary declaration to the effect that copyright in the Arco had been infringed, ordering Semeraro to stop importing and selling Fluida in Italy. In the same year Flos also sued Semeraro in proceedings on the merits, seeking confirmation of the preliminary measures obtained during the interim proceedings. In April 2009 the Court was finally ready to hear the final decision on the issue.

Legal background

During the less than three year long proceedings on the merits, a controversial issue arose, and this is the subject on which the Advocate General has advised the ECJ. This issue concerns article 239 of the Italian Industrial Property Code, which strangely enough limits the copyright protection for designs in Italy, in apparent breach of the relevant European provisions.

Article 239 was originally aimed to balance the obligations set forth by Directive 98/71 with the Italian economic context before 1998. Indeed, while the Directive provides that designs are to be eligible for copyright protection, until then copyright protection for designs had been denied in Italy on the basis that what is "industrial" (like designs) is not capable of being considered "art" and cannot be protected under copyright law. Needless to say, the obligation for Italy to implement the European directive conflicted with a wide part of the national economy which, until then, was legally copying historical industrial designs (such as Arco) on the assumption that they were not protected (or were no longer protected) by any IP right.

The new-born copyright in some historical Italian designs makes article 239 a battlefield for lobbying carried out by companies owning (or not owning) the copyright rights in the Italian historical design works. The very proof of the economic relevance of such provision is that the Italian Parliament has amended article 239 three times in the past 10 years.

The first version (2001-2005) provided that copyright protection in designs did not apply for those who, before 2001, were producing or selling industrial designs works that belong to the public domain; this moratorium should have lasted for 10 years. In 2005 the European Commission brought an infraction procedure against such moratorium period (infraction procedure n. 4088/2005), in that it was considered inconsistent with Directive 98/71.

According to (or in spite of) the infraction procedure, in 2007 the Italian Government amended article 239. The second version (2007-2009) provided that the copyright protection should not apply to any design which fell into public domain before 2001, making no distinction between those who produced or sold such designs before that date and those who did not. The 10-year moratorium period disappeared, therefore excluding the copyright protection for designs which fell into public domain before 2001 tout court.

The opinion given by the Advocate general relates to this second version. In this regard, the Advocate General maintained that a national rule which wholly excludes copyright protection for a wide group of designs is not allowed under European law, while a moratorium period of five years could at least be allowed and sufficient for those who produced and sold formerly copy-free designs to change their business.

In the meantime, article 239 has been amended once again. Now it states that copyright protection does not apply to the designs fallen in public domain before 2001, but this limitation concerns only those who produced and sold them before that date. We should email the ECJ, asking it take into account also of that last amendment, even if it is not explicitly part of the Court of Milan's reference".

Thanks, Albert! For the record, according to Google Translate (somewhat edited), the Advocate General has advised the Court as follows:

"1) Article 17 of Directive 98/71 shall be interpreted as precluding the legislation of a Member State which provides that the drawings and models which have fallen into the public domain before the entry into force of national provisions transposing this Directive do not enjoy protection by copyright.

2) Article 17 of Directive 98/71 does not preclude the establishment of a reasonable transition period during which people who could legitimately produce and market a product by imitating the shapes of a model which has fallen into the public domain before the entry into force of national provisions transposing this Directive may continue to market this product".

Flos Opinion: can anyone help?

The Opinion of Advocate General Yve Bot in Case C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA was published on the Curia website on Friday, in ten official languages of the European Union -- but not in English. The questions referred by the Tribunale di Milano for a preliminary ruling were as follows:

"Must Articles 17 and 19 of Directive 98/71/EC [on the legal protection of designs] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date?

If the answer to the first question is in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party - without authorisation from the holder of the copyright on such designs - has already produced and marketed products based on such designs in that State?

If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party - without authorisation from the holder of the copyright on such designs - has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?".

According to the Advocate General, the court is advised to rule as follows (in French --but you can read it in Latvian too ...):

«1) L’article 17 de la directive 98/71/CE du Parlement européen et du Conseil, du 13 octobre 1998, sur la protection juridique des dessins ou modèles, doit être interprété en ce sens qu’il s’oppose à la législation d’un État membre qui prévoit que les dessins et les modèles tombés dans le domaine public avant l’entrée en vigueur des dispositions nationales transposant cette directive ne bénéficient pas de la protection par le droit d’auteur.

2) L’article 17 de la directive 98/71 ne s’oppose pas à l’instauration d’une période transitoire raisonnable durant laquelle les personnes, qui avaient pu légitimement produire et commercialiser un produit imitant les formes d’un modèle tombé dans le domaine public avant l’entrée en vigueur des dispositions nationales transposant cette directive, peuvent continuer à commercialiser ce produit.»

Can anyone provide information concerning the background to this dispute and as to what the Advocate General is generally advocating?

Vitra v High Tech: what the ECJ must rule on

The Curia website has now posted information about Case C-219/09 Vitra Patente AG v High Tech Srl, a reference for a preliminary ruling from the Tribunale di Milano, Italy, which was lodged on 16 June 2009. The questions in this reference are as follows:

"(1) Must Articles 17 and 19 of Directive 98/71/EC [on the legal protection of designs] be interpreted as meaning that -- in implementing a national law of a Member State adjusting the domestic legal order to the abovementioned Directive -- the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which -- albeit meeting the requirements for protection laid down in copyright law -- fell to be regarded as having entered into the public domain before the date on which the national implementing legislation entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date?

(2) If the answer to the first question is in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that the discretion accorded to the Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection where a third party -- without authorisation from the holder of the copyright on such designs -- has already produced and marketed in that State products based on such designs which were in the public domain before the date on which the national implementing legislation entered into force?

(3) If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that the discretion accorded to the Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection where a third party -- without authorisation from the holder of the copyright on such designs -- has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?"

Notes on the background to this dispute, which involves the design of the Panton chair, can be found here.