Design protection in the EU through exhibition in China?

An unregistered Community design enjoys protection against imitation for a period of three years, commencing on the day the design is first made available to the public within the Community. However, this requires that the design possesses individual character and the product is not known to the trade, i.e. is new. The Court of Justice of the European Union (EuGH) had to address the question of in which cases knowledge of the relevant professional circles must be assumed.

A manufacturer of exclusive garden furniture sued a competitor for infringement of an unregistered Community design relating to a wrought-iron garden pavilion.

The manufacturer had already exhibited his design at a trade fair in China. Furthermore, the manufacturer had presented the design to a company in the EU with which the latter intended to do business. The protection of the unregistered design had thus been created.

The competitor defended itself by arguing that the design was thereby not made known to the professional circles in the EU and that therefore no rights could be asserted from an unregistered design.

The Federal Court of Justice (BGH) now referred the legal question to the Court of Justice of the European Union (EuGH) as to when design protection for unregistered designs is established and whether, due to the exhibition of the design in China and/or the disclosure of the garden pavilion to a European market participant, knowledge on the part of the relevant professional circles that establishes protection must be assumed.

Decision of the Court

In itsEntscheidung vom13.02.2014 – Az. C-479/12 (garden pavilion) – the Court of Justice of the European Union (EuGH) first clarified that protection of the unregistered design applies from the point in time when the design is first made available to the relevant public.

The sending of images of a newly designed product within the framework of a brochure to traders operating in the Union regularly leads to disclosure of the unregistered design to professional circles of the business sector in question.

However, knowledge on the part of these professional circles must not be assumed insofar as the garden pavilion was exhibited only at a fair in China. This constitutes just as little a public making available of the design to European professional circles as the presentation of the pavilion to a single market participant in the EU – even if this company was not contractually obliged to maintain confidentiality. In these cases, design protection in the EU has not yet been established.

Conclusion

As a result, the manufacturer cannot assert design protection for an unregistered design against its competitor. If the designer wishes to protect his product design, he should present it in time to the professional circles or have the design protected as soon as possible as a registered design. The designer has one year for this following public disclosure to the professional circles.