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OHIM
The Trade Marks and Designs Registration Office of the European Union
You are here: Home > About OHIM > OAMI-ONLINE - Newsletter 12 - 2010 - Copyright versus Design
- Editorial
A record year for OHIM - Interview
The Interview - Community Trade Mark
“Bad faith” claim following company division is rejected New format for reporting opposition decisions Country overview: United Kingdom - Community Design
Copyright versus Design Country overview: United Kingdom - E-business
RCD E-Filing now available via MyPageE-Business users’ group meetingE-Business Roundup - More News
Ireland and Malta adopt harmonised list of goods and services Trilateral to investigate joining TMview Top Swedish RCD owners Expanded user representation at OHIM's ABBC Statistical highlights - Case-Law
Luxembourg Case-LawNew Decisions from BoA
Copyright versus Design
Despite its importance and widespread use copyright plays a marginal role in conflicts with designs. The Community Design Regulation (CDR) explicitly foresees the possibility to attack a registered Community design (RCD) on the basis of an earlier copyright (see Article 25(1)(f) CDR). However, this ground is rarely invoked.
In one of these rare cases the Invalidity Division took a decision (ICD 7085, in German) where the RCD 001595737-0001 is declared invalid on the ground that the RCD constitutes an unauthorized use of a work protected under the copyright law of a Member State .
The contested RCD was registered for “fabrics” with the following representation of the design:
The claimant argues that a very similar design has been created prior to the filing date of the contested RCD by a designer in Belgium who transferred the related copyright to a company which in turn sold it to the claimant. As evidence, the claimant provides a copy of a drawing book of the designer together with a written statement wherein the designer declares that she has created the design prior to the filing date of the RCD and that she has ceded all the reproduction rights (“droits des reproduction”) related to her creations to the company. The copy of the drawing book includes the following image:
The statement of the designer is supported by a copy of a labour contract between her and the company signed prior to the filing date of the RCD.
Furthermore, the claimant provides an invoice note in the name of the company addressed to the claimant about the selling of rights for certain designs. The invoice note bears a date prior to the filing date of the RCD and is accompanied by the following image:
Finally, the claimant submits a decision of a Belgium court wherein the court confirms the legality of seizure of fabrics in Belgium by the claimant on the basis of copyright infringement and an expert opinion by a lawyer explaining Belgian and French copyright and citing relevant case law.
The proprietor of the RCD doubts the authenticity of the invoice note and contests the fact that the claimant is entitled to enforce any copyright related to the prior design.
The Invalidity Division found that the evidence on file was sufficient to support the claim that the contested RCD design constitutes an unauthorized use of a work protected under the copyright law of Belgium and France .
The present case is an example for how to successfully argue copyright infringement in invalidity proceedings against a Community design. This line of attack is an interesting alternative to the usual claim of lack of novelty and/or lack of individual character because it also applies where the work has not been made available to the public prior to the RCD or where the work and the contested RCD produce different overall impressions due to some additional features in the RCD which are not present in the work.