Pilgrim's Pyrrhic victory?

"I bought it in China - I had no idea it was a copy". Can a company these days pass the buck to their Chinese supplier, or should they not at least ask the question? This seems to have been the issue in Pilgrim A/S v Dansk Smykkekunst A/S (Maritime and Commercial Court, August 17 2010, Case V-6-09), reported by Mads Marstrand-Jørgensen of Norsker & Co in the ever-helpful International Law Office newsletter.
Pilgrim sued on the basis of a men's necklace. They failed to cross the copyright threshold, and Denmark's usually-reliable Marketing Practices Act let them down because they did not establish Danish sales, apparently. However, subsistence and infringement of Unregistered Community Design right were found. A good result? Alas, no. The Court held that Pilgrim should have no damages or compensation because "the Court is not satisfied that Dansk Smykkekunst has known or should have known Pilgrim's necklace" and, indeed, they made Pilgrim pay Dansk's costs.
Somehow, it seems wrong to us that the proprietor, after infringement has been shown, has to pay the infringer's costs because the infringer did not determine that the goods were infringements. On the one hand, of course, it is generally better to chase the copyist and manufacturer rather than the retailer. But on the other, that is far from easy when they are located abroad - and they know it. So we think it is just a bit too easy these days to play the innocent or ignorant importer. Is there anyone out there who is unaware that fakes can be bought in the Far East? We doubt it.
But what do you think?

Too Like Likeabike!

I am grateful to my partner (and fellow beard wearer) Felix Rummler, of our German office, for the following summary.

The Federal High Court (the Bundesgerichthof or "BGH") has recently, in its "LIKEaBIKE" decision I ZR 124/06, taken the opportunity to illustrate some principles of the unfair competition prohibition on close imitation.

The case was concerned with a copied product consisting of a ride-on wooden vehicle for infants, resembling a bicycle. The original design had been registered back in 1997 (as International Design DM 040209), and the plaintiff later developed a "mountain bike" version which was the subject of the infringement action. The design of the product is characterised among other things by the streamlined appearance of the timber frame as well as a laminar steering wheel fork with an opening for the timber frame. These characteristics were also present - with slight modifications - in the imitation.

The Court held that imitation of a product is adverse to competition if the product has a "competitive characteristic" and the imitation is unfair. In order to have a competitive characteristic, the product must show special characteristics, which refer to its operational origin or characteristics of the product. However technically necessary characteristics cannot justify a competitive characteristic because they cannot be omitted without arriving at something technically inferior.

The imitation of a product with competitive characteristic is competition-adverse, if unfair circumstances are additionally present, for example if no suitable reasonable measures are taken in order to prevent possible confusion of the products as regards origin or characteristics.

In the infringement action the defendant pointed out the fact that some of these characteristics - in particular the organization of the fork - were technically necessary and could therefore be taken. The BGH rejected this. The characteristics were technically motivated, but the technical requirements did not dictate this particular physical arrangement. On the contrary, technically equivalent solutions existed, by use of which the danger of the deception over the origin of the product could have been avoided in a reasonable way.

This decision highlights the continuing importance of unfair competition protection for products in the civil law world.

Community Designs a good fit for G Star

Trade-mark-oriented readers may recall the ECJ G-Star decision concerning jeans (Benetton Group v G-Star International, ECJ case C-371/06, 20 September 2007) in which the shapes of stitching and other aspects that gave substantial value to the jeans were unregistrable as marks despite subsequently acquired reputation.
The Class 46 blog carries an Italian sequel. In January, in the absence of copyright or trade mark protection, the Milan Court allowed G-Star's unfair competition claim based on copying of their "Elwood" jeans.
It is pleasing to see that G-Star also successfully enforced the design of the "Limit Regular" jeans, registered as Community Designs at OHIM (where they have registered more than 100 RCDs).

Designs in Israel

Class 99ers with an interest in Israeli design law should take a regular look at The IP Factor, Dr Michael Factor's excellent blog, which covers several recent design decisions.
We are fascinated to learn that "Israel’s archaic design law is covered by the Patent and Design Ordinance that was last amended in 1937, and the Design Regulations of 1925." Those old UK-based design laws have proved difficult enough in the UK, and we heartily agree with Michael that Israel would do well to modernise them. On the other hand, it sounds as if you can do great things with unjustified enrichment there, at least at the interlocutory stage. Apparently, protection of Aluminium (or should it be "Aluminum"?) roof extrusions is as popular there as in the endless UK Ultraframe design litigation, and the issue of design disclosure on the Internet is as hot there as it currently is at OHIM in the CROCS appeal. Maybe there is more fun to be had with old design laws after all.