22nd October 2013
1 October 2013, Munich
In a recent German case,[¹] a fashion retailer selling a bolero jacket called “Amisu” (pictured below right) brought infringement proceedings against the seller of a similar bolero jacket, called the “LIVRE” (also below photo).
The claimant asserted that the defendant had infringed its unregistered Community design (UCD) which it said subsisted in the design of its Amisu jacket.
Where proceedings are brought on the basis of a UCD, the claimant must first show that it is the rightful owner of the claimed UCD. This is in contrast to the position in relation to registered Community design (RCD) infringement where there exists a presumption of ownership in favour of the party listed as being the registered owner.
Whilst the claimant did not itself create the design of the Amisu jacket (and nor was it the legal successor of the designer), it claimed that the design was created by its employees in the execution of their duties and/or following its instructions and so the claimant was the rightful owner (Article 14(3) CDR).
In order to prove this, the claimant mainly relied on two facts:
(1) the “Amisu” bolero jacket design was first made available to the public in the EU when sold by the claimant, and
(2) three of the claimant’s employees had designed the bolero jacket shown in the design sketch below right.
The German Federal Supreme Court found however that the claimant had not proved that it owned the UCD in the Amisu jacket. The bolero jacket sold by the claimant was not the same as that shown in the design sketch – in particular, the essential features of the UCD, such as the circumferentially closed broad cuff running from the neck over the back and back to the back, could not be derived from the design sketch. Furthermore, the German Federal Supreme Court did accept that there was any basis for a legal presumption that the first party to disclose the design to the public is also the rightful owner of the UCD in that design.
Consequences for right holders
Given the burden of proving ownership of UCD, the enforcement of UCDs in Germany might become somewhat harder in the future. Therefore, designers (especially those in the fashion industry, which often rely on UCDs alone) must be sure that they carefully compile and save contemporaneous documentary evidence demonstrating how, when and by whom designs were created, so that they can prove UCD ownership when required to do so. We also recommend that designers carefully reconsider whether they would be better off seeking registrations of their key designs. In addition to avoiding the need to prove ownership, registered Community designs are inexpensive and quick to obtain, last for significantly longer than their unregistered counterparts and do not require proof of copying to establish infringement.
 German Federal Supreme Court decision of December 13, 2012 – Case I ZR 23/12 – Bolerojäckchen
Originally published in DesignWrites 2nd Edition.
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