Being at the right time in the right place is crucial. But what is the right time for assessing a design infringement? This is one of the questions posed by a Belgian court to the Court of Justice of the EU (‘CJEU’) in a new reference for a preliminary ruling (Van Ratingen, case C-749/24).
Background
Koninklijke Philips NV (‘Philips’) marketed various air fryers under the brand ‘Airfryer’. Since 2010, it owns registered Community designs (‘RCD’) for the Airfryer, including RCD no. 001654591-0001 and no. 001656521-0001:
Background
Koninklijke Philips NV (‘Philips’) marketed various air fryers under the brand ‘Airfryer’. Since 2010, it owns registered Community designs (‘RCD’) for the Airfryer, including RCD no. 001654591-0001 and no. 001656521-0001:
Van Ratingen NV (‘Ratingen’), a Belgian company that sells small electrical household appliances, launched the following three models of a multifunctional convection oven for preparing snacks in 2016, branded the ‘SnackTastic’:
In 2017, Philips sent a warning letter to Ratingen for alleged infringement of their RCDs and copyright through the import, offering and distribution of the SnackTastic devices. Ratingen refused to comply with Philips’ demands.
Philips applied for a preliminary injunction before the Commercial Court in Brussels. The preliminary injunction was granted on the basis of design infringement.
Ratingen appealed to the referring court. In the course of the proceedings, Philips transferred its intellectual property rights to Versuni Holding BV (‘Versuni’), which continued the legal dispute.
Arguments of the parties
The parties essentially disagree as to the relevant point in time for the assessment of design infringement and the relevance of the saturation of the state of the art that occurred subsequent to the filing of an RCD.
Versuni contends that the comparison between an RCD and an allegedly infringing design should be made from the perspective of the informed user at the time of filing the application or, if priority is claimed, at the priority date of the asserted RCD.
According to Versuni, the scope of protection of an RCD, including the saturation of the prior art, has to be determined at the filing or priority date and does not change thereafter. Versuni relies on Art. 10(2) Community Design Regulation (‘CDR’), which stipulates that, in assessing the scope of protection of a design, the degree of freedom of the designer in developing his design should be taken into account.
Versuni also emphasizes the importance of the distance between the RCD and the pre-existing design corpus and argues that its Airfryer was revolutionary at the filing date of the RCDs. This results, Versuni contends, in a broad scope of protection, which does not narrow because of similar designs coming on the market after the filing date.
Further, design law does not know the concept of dilution and Versuni took action against designs with the same overall impression.
Ratingen argues instead that the assessment of the overall impression from the perspective of the informed user must be made at the time of the alleged infringement. Due to several similar third-party designs that were marketed at the time of the alleged infringement, the informed user would be more sensitive to the differences between the designs.
Ratingen relies on the General Court’s decision in joint cases T-828/14 und T-829/14 at para. 55, where the saturation of the state of the art in the assessment of the individual character of an RCD was taken into account, and asserts that the case law applies analogously to the examination of infringements, whereby the time of the infringement should be used as the reference point.
The reference for a preliminary ruling
Against this background, the referring court asked the following questions (my own translation):
(1) Must Article 10 [CDR] be interpreted as meaning that the comparison between the registered design and the allegedly infringing design should be made from the perspective of the informed user at the time of filing the application (or, if a priority is claimed, at the priority date), or as meaning that it should be made at the time of the infringement?
(2) In the latter case: Can a possible saturation of the market at the time of the infringement, if proven, be suitable to make the informed user more sensitive to the detailed differences between the registered Community design and the allegedly infringing designs?
(3) Is it relevant for answering this question whether and to what extent the holder of the registered Community design has consistently defended the exclusive character of their design?
Comment
The German Supreme Court seems to agree at least insofar with Versuni as it found that the scope of protection of a design must be assessed at the filing date (Ballerinaschuh at para. 26). The General Court also appears to agree with this approach (cf. case T‑9/07 at para. 70).
Nevertheless, the determination of the scope of protection is just one step in the assessment of an infringement. The question whether the contested design produces the same overall impression on the informed user can be answered with reference to the time of the infringement. On the one hand, the informed user would have to ignore market realities if a subsequent saturation of the design corpus were disregarded. On the other hand, registered design rights in the EU are limited to a maximum duration of 25 years. Therefore, it might not seem unjust not to narrow the scope of protection of an RCD subsequent to its filing because its protection will end.
Let us see what the Advocate General and the CJEU have to say.
Philips applied for a preliminary injunction before the Commercial Court in Brussels. The preliminary injunction was granted on the basis of design infringement.
Ratingen appealed to the referring court. In the course of the proceedings, Philips transferred its intellectual property rights to Versuni Holding BV (‘Versuni’), which continued the legal dispute.
Arguments of the parties
The parties essentially disagree as to the relevant point in time for the assessment of design infringement and the relevance of the saturation of the state of the art that occurred subsequent to the filing of an RCD.
Versuni contends that the comparison between an RCD and an allegedly infringing design should be made from the perspective of the informed user at the time of filing the application or, if priority is claimed, at the priority date of the asserted RCD.
According to Versuni, the scope of protection of an RCD, including the saturation of the prior art, has to be determined at the filing or priority date and does not change thereafter. Versuni relies on Art. 10(2) Community Design Regulation (‘CDR’), which stipulates that, in assessing the scope of protection of a design, the degree of freedom of the designer in developing his design should be taken into account.
Versuni also emphasizes the importance of the distance between the RCD and the pre-existing design corpus and argues that its Airfryer was revolutionary at the filing date of the RCDs. This results, Versuni contends, in a broad scope of protection, which does not narrow because of similar designs coming on the market after the filing date.
Further, design law does not know the concept of dilution and Versuni took action against designs with the same overall impression.
Ratingen argues instead that the assessment of the overall impression from the perspective of the informed user must be made at the time of the alleged infringement. Due to several similar third-party designs that were marketed at the time of the alleged infringement, the informed user would be more sensitive to the differences between the designs.
Ratingen relies on the General Court’s decision in joint cases T-828/14 und T-829/14 at para. 55, where the saturation of the state of the art in the assessment of the individual character of an RCD was taken into account, and asserts that the case law applies analogously to the examination of infringements, whereby the time of the infringement should be used as the reference point.
The reference for a preliminary ruling
Against this background, the referring court asked the following questions (my own translation):
(1) Must Article 10 [CDR] be interpreted as meaning that the comparison between the registered design and the allegedly infringing design should be made from the perspective of the informed user at the time of filing the application (or, if a priority is claimed, at the priority date), or as meaning that it should be made at the time of the infringement?
(2) In the latter case: Can a possible saturation of the market at the time of the infringement, if proven, be suitable to make the informed user more sensitive to the detailed differences between the registered Community design and the allegedly infringing designs?
(3) Is it relevant for answering this question whether and to what extent the holder of the registered Community design has consistently defended the exclusive character of their design?
Comment
The German Supreme Court seems to agree at least insofar with Versuni as it found that the scope of protection of a design must be assessed at the filing date (Ballerinaschuh at para. 26). The General Court also appears to agree with this approach (cf. case T‑9/07 at para. 70).
Nevertheless, the determination of the scope of protection is just one step in the assessment of an infringement. The question whether the contested design produces the same overall impression on the informed user can be answered with reference to the time of the infringement. On the one hand, the informed user would have to ignore market realities if a subsequent saturation of the design corpus were disregarded. On the other hand, registered design rights in the EU are limited to a maximum duration of 25 years. Therefore, it might not seem unjust not to narrow the scope of protection of an RCD subsequent to its filing because its protection will end.
Let us see what the Advocate General and the CJEU have to say.
New CJEU reference: What is the relevant point in time for the assessment of design infringement?
Reviewed by Marcel Pemsel
on
Monday, January 27, 2025
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