1. When Does a Design Infringement Occur?

A design infringement occurs when a third party uses a design that is identical or creates the same overall impression as a registered design without the owner’s consent. Under the Community Design Regulation (CDR) (Regulation (EC) No 6/2002, Article 19), the rights holder can prohibit any unauthorized use of the protected design.

Key Legal Criteria for Infringement:

• Same Overall Impression: The alleged infringing design must create the same overall impression on an informed user (CDR Art. 10).
• Individual Character and Novelty: The protected design must be novel and have individual character at the time of registration.
• Comparison from an Informed User’s Perspective: The court assesses how the design is perceived by a person with knowledge of the sector but not an expert (Case T-68/10, Grupo Promer v. OHIM).

Example Case:

• In PepsiCo v. Grupo Promer (C-281/10), the court found that minor variations in promotional items were insufficient to prevent infringement because they created the same overall impression.
• In Karen Millen v. Dunnes Stores (C-345/13), the ECJ reinforced that small differences do not necessarily negate infringement if the overall impression remains the same.

2. Legal Procedure in a Design Infringement Case

1. Cease and Desist Letter (Warning Letter)
   • The first step is usually sending a cease-and-desist letter demanding the infringing party to stop using the design, remove infringing products, and pay damages.
   • This letter often includes a request for a penalty-bearing cease-and-desist declaration.
2. Preliminary Injunction (Fast Legal Protection)
   • If immediate action is needed (e.g., to stop ongoing sales), a preliminary injunction can be filed with the competent court (e.g., Landgericht in Germany, IPEC in the UK).
   • Example: In Germany, courts like LG Düsseldorf or LG Hamburg regularly grant fast injunctions in design disputes.
3. Main Proceedings (Court Case)
   • If the case is not settled, the rights holder may initiate a full legal action.
   • The court examines whether the designs create the same overall impression on the informed user.
   • The burden of proof lies with the rights holder, but the defendant can argue invalidity of the registered design.
4. Invalidity Proceedings as a Defense
   • The accused party can file an invalidity request at the EUIPO (for RCDs) or national offices to challenge the validity of the design based on lack of novelty or individual character.
   • Example: In T-450/08, Shenzhen v. OHIM, the design was invalidated due to prior publications.
5. Possible Remedies
   • Injunction (prohibition of further use)
   • Destruction or recall of infringing products
   • Monetary damages (lost profits or reasonable royalties)
   • Publication of the judgment

3. How Design Lawyers Assist in Offensive and Defensive Strategies

Offensive Strategy (Enforcing Design Rights)

• Preliminary Design Search & Risk Assessment: Before filing a lawsuit, we assess the likelihood of success by comparing the designs.
• Cease-and-Desist Letters & Negotiation: We draft legally binding warning letters and negotiate out-of-court settlements.
• Filing Injunctions & Litigation: If necessary, we initiate court proceedings to stop infringement immediately.
• Customs Actions & Anti-Counterfeiting: We help register designs with customs authorities to block counterfeit goods.

Defensive Strategy (Challenging Claims & Invalidity Proceedings)

• Analyzing Prior Art for Invalidity Arguments: We conduct a search to find earlier designs that might invalidate the plaintiff’s design.
• Defending Against Cease-and-Desist Orders: We assess whether the claims are justified and, if needed, negotiate a settlement or file counterclaims.
• Invalidity Proceedings at EUIPO or National Offices: If a registered design lacks novelty or individual character, we initiate invalidity proceedings.
• Modifying the Design to Avoid Infringement: If an infringement risk exists, we advise on modifications to create sufficient differentiation.

Conclusion

Design infringement cases are complex, requiring a thorough analysis of the overall impression and legal strategies tailored to either enforcing or defending against claims. With our expertise, we assist in aggressive enforcement actions and robust defense strategies, ensuring our clients’ interests are effectively protected.