After-the-event design registration won't spare defendant from infringement claim, says AG

It can't be a very important case, since the Advocate General's Opinion this morning has only been published in 11 of the European Union's official languages, and certainly not in English, but Case C‑488/10 Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL is presumably of enough significance for the Alicante Commercial Court to have referred it to the Court of Justice for a preliminary ruling.  The speed at which it has progressed, taking just 13 months from receipt of the request for a preliminary ruling until the publication of the Opinion, would suggest that it's not one of those difficult cases -- but the fact that an Opinion was sought at all suggests that it must have difficult enough for the Court to feel it needed guidance and not dispense with the Advocate General's services.  Mind you, we all feel like that when it comes to Community registered designs, the subject of the underlying Spanish litigation.

The IPKat can't be sure precisely what this case is about, but he can report that there's a picture (below) on the Curia website. A picture is worth a thousand words, it has been said. If you can't understand the words, the picture's not always quite so informative.

Image not found
Image not found

Two questions were referred for a preliminary ruling, from which can get a good idea of what the pictures, and the dispute itself, was all about:
"1. 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 ... 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? [i.e. is the use of one's own Community design a good defence unless and until that design is ruled invalid?]
2. 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?" [i.e. does it matter if the registration on which the defendant relies came after he was accused of infringement?]
Thanks to Google Translate, the Kat has some sense of the Advocate General's advice to the court:
"The right to prohibit the use by others of a registered design by virtue of Article 19(1) ... can also be invoked against a third party who uses his own registered design later. It is not necessary for that purpose to first obtain a declaration of nullity of that design. [So registration of one's own design only confers a right to stop others using it, not a right to use]
In this context, both for the third party that the registration of the design of the latter has taken place or not in response to a notice, by which he was asked to stop marketing of its product, are irrelevant".
The IPKat hopes that this advice will be followed by the Court of Justice.  Apart from the fact that it is (in his ever-so-humble opinion, with a small 'o') correct, it reduces the temptation on the part of businesses that suspect they will be sued -- or which are actually sued -- to file for after-the-event registrations that must then be invalidated before they can be sued. It also adds a little more value to the registered design right from the standpoint of the design registrant, who is often a small or medium-sized enterprise with few resources to throw at even necessary litigation, never mind the unnecessary sort.

There's some background on this ruling on Class 99 here.
After-the-event design registration won't spare defendant from infringement claim, says AG After-the-event design registration won't spare defendant from infringement claim, says AG Reviewed by Jeremy on Tuesday, November 08, 2011 Rating: 5


  1. Exactly like Community Trade Marks, in other words -- you can have as many of those as you like and still be sued for infringement.

  2. According to Section 51.2 of the Spanish Design Law (Law 20/2003) “the registered design right may not be invoked to exempt the holder of responding to the actions against him for violation of other rights of intellectual property with an earlier priority date” (Google translation)


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