The Lisbon Court of Appeal (CoA) has judged a case of alleged infringement of a registered Community design regarding soles for footwear in a decision dated 20 September 2018.
The judgement applies the ECJ interpretation regarding “intervening” design registrations and gives hints as to the concept of the informed user and comparison of designs in the footwear sector.
TBL Licensing LLC applied for a preliminary injunction against Vapesol, a company based in Portugal, invoking the Community design no. 001403844-0001, registered by the EUIPO on 10-02-2014 for the Sensorflex ™ sole.
CRD 001403844-0001 Sensorflex ™ sole
The claimant was seeking to prevent use of the defendant’s product in trade and to obtain information on the prices and the quantities sold. The defendant contested the claim based on three arguments:
- that the products in question are protected by the defendant’s Community design no. 3419407-0001 registered on 21-10-2016;
- that there was no urgency to justify a preliminary order because one year had passed since the claimant gained knowledge about the alleged infringement;
- that there is no infringement since the designs in question produce a different overall impression on the informed user.
The 1st instance court dismissed the claim on the basis of the first argument, considering basically that article 19(1) of the Regulation (Council Regulation EC 6/2002 of 12 December on Community designs) confers to the defendant an exclusive right to use the registered design.
Appeal: a different impression
On appeal not surprisingly the Lisbon Court of Appeals (CoA) rejected the findings of the 1st instance IP Court for being contrary to the interpretation of the European Court of Justice in case C-488/10, Celaya Emparanza y Galdos Internacional SA v. Proyectos Integrales de Balizamentos. According to ECJ said article 19(1) of the Designs Regulation must be interpreted as meaning that, in a dispute relating to infringement of the exclusive right conferred by a registered Community design, the right to prevent use by third parties of the design extends to any third party who uses a design that does not produce on informed users a different overall impression, including the third party holder of a later registered Community design.
Interestingly, the CoA rejected also the second argument raised by the defendant. The CoA said that although urgency is a basic element of any precautionary measure, where the applicant alleges an actual infringement of an industrial property right, it is not necessary to establish that there is a danger of serious and irreparable injury therefore it is up to the claimant to define when a court order became urgent. It appears that the CoA understanding was that urgency will be presumed wherever the actual infringement of an industrial property right is claimed.
Finally the CoA analysed the designs and concluded that the claimant’s design was not infringed as a different overall impression is produced.
About the informed user, the court referred to being someone “half way between the technician and the final consumer of shoes, therefore someone like a shoemaker who is accustomed to appreciate the diversity of soles available to apply the remaining materials that make a shoe" and a shoemaker that “has seen a lot of soles with these characteristics".
Then, the CoA highlighted the differences, and in particular “the central part, which corresponds to the arch of the sole of the foot, is of a different size, regardless of the zebra coloring, but above all it has a central motif or medallion which is remarkably diverse” and from which immediately “a different impression results”.
Meanwhile a request for invalidation of the defendant’s Community Design Registration was filed by TBL and is pending at the EUIPO.