Evaluation of merit in infringement actions and the jurisdictions of Courts in cases of cross-border counterfeiting actions

The Artists’ Resale Right (“ARR”) consists in the entitlement of visual artists to receive a royalty (i.e. a share of the proceeds) on the re-sale of their original works, provided that an art-market professional is involved in that sale and the sale price is above a specified minimum threshold.

Intellectual Property has become one of the most valuable assets of most businesses across the EU and elsewhere. European policies recognize this and offer comprehensive EU protection of IP rights. Design rights are among the most common rights across industrial sectors. According to the European Office of Industrial Property, today 62% of EU companies use design in their business.

The importance of these rights deserves focused attention, especially as the risk of copying and counterfeiting is ever-present. Successful design adds value to products and therefore deserves protecting.

We start with the presumption of the existence of a registered Community design (RCD) that has allegedly been violated. In such case, it is first necessary to consider the merit of an infringement action before any formal action is initiated. Merit should be confirmed by an appropriate test for RCD infringement.

To support infringement action against an RCD violation, the design in question must be incorporated in or applied to a product in relation to which an infringing act has taken place, i.e., “offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is attached, or storing such a product for those purposes.”

For a design to be infringing, it must not create on the informed user a different overall impression to the design protected under the RCD. The scope of protection is set out in Art. 10 of the Council Regulation on RCDs: “The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.”

An “overall impression” depends on the existing design corpus, the nature of the product, the industrial sector and the level of freedom of the designer.

Designs are to be assessed from the perspective of an “informed user”. This can be defined as a physical person who is a user of the product in which the design is intended to be incorporated, and who is not a designer or a manufacturer or seller. The term “informed user” in this context is understood as a person who perceives the designs as a whole without analyzing any details and, at the same time, does not observe in detail any minimal differences that may exist.

If the application of the test indicates an infringement, we must consider to which court we will apply for legal remedies such as an interim injunction and further action on the merits of the matter. When dealing with EU cross-border cases or even global overseas cases with infringement impact on the territory of a Member State, we must carefully follow the provisions of the Council Regulation on RCDs to prevent any refusal or possibly serious delay in our action against the infringement.

Despite the provisions of the Convention on Jurisdiction and the Enforcement of Judgements in Civil and Commercial Matters, signed in Brussels on 27 September 1968, disputes concerning the infringement and validity of Community designs are in general decided by Community design courts. Under the provisions of the Council Regulation on RCDs, each Member State was asked to communicate to the EU Commission not later than March 6, 2005 a list of so-called “Community design courts”, indicating their names and their territorial jurisdiction.

If a Member State has not communicated the list of its Community design courts, jurisdiction for any relevant Community design proceedings remains with the court of the Member State in question that would have jurisdiction ratione loci and ratione materiae in proceedings relating to a national design right of that State.

Provided that the Community design courts were duly communicated to the European Commission, the following rules will apply.

Proceedings with respect to actions and claims relating to an infringement of an RCD shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment.

If neither the defendant nor the plaintiff is so domiciled nor has such an establishment, such proceedings shall be brought in the courts of the Member State where the EI Intellectual Property Office (EUIPO) has its seat, i.e. in Alicante, Spain.

The relevant Articles of the above-mentioned Convention shall still apply if the parties agree that a different Community design court shall have jurisdiction, or if the defendant enters an appearance before a different Community design Court.

Furthermore, proceedings for infringement actions and, if permitted under national law, actions with respect to a threatened infringement of Community designs may also be brought in the courts of the Member State where an act of infringement has been committed or threatened.

When considering the Community design court’s jurisdiction, we recommend paying special attention to UK overseas territories. It could very well be the case that such overseas UK territories have not designated a Community Design court, and there would be the likelihood that infringement proceedings would need to be commenced in the United Kingdom (such as in case of Gibraltar, despite Gibraltar’s particular position within the EU). To conclude, be observant.

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