Protection of Registered Bag Design

Critical points:

- The case concerned a dispute between an individual - sole proprietor who had registered a specific bag design in Europe, which was marketed in Greece and other member states of the European Union, and a well-known cosmetics company, which, as part of an advertising campaign in view of the festive season, made available on the market certain cosmetics with a gift bag of an identical design.

- The proper support of the case resulted in a compromise resolution of the dispute. As part of this settlement, the cosmetics company expressly acknowledged that its counterparty was the exclusive owner of the specific bag design and agreed to source - subject to authorisation - the bag in question from the manufacturing plant with which it was working.

- The immediate recourse to the court and the issuance of an interim order, which prohibited the cosmetics company from further marketing the bags in question and obliged the latter to temporarily recall the bags already placed on the market in the middle of the festive season, resulted in the above-mentioned settlement with the proprietor of the specific bag design.

Background

An entrepreneur, who was active on the market through a sole proprietorship, had registered a specific handbag design throughout Europe (as a Community design). The bags were produced by another company with which the design proprietor cooperated and then marketed them under the registered trade mark [X]. That particular bag design - an identical design which, up to the time of its registration, had not been marketed or otherwise made known in the countries of the EU - had become very well known, particularly in the Greek and European markets, because of the promotional activities undertaken by the design proprietor, via the internet and social media, by organising events to present the product in question, while numerous articles had been published in the electronic and written press, which praised the originality and ergonomics of this product. A few days before the start of the Christmas festive season, a well-known cosmetics company began to promote and sell a range of cosmetic products produced by it enclosed in a bag of an identical design to the contested products and with an imprint on it of an indication similar to the proprietor's trade mark, confusing the public, who would either believe that it was the specific bag marketed by the proprietor or, at the very least, that there was some form of cooperation between the proprietor and the cosmetics company in question. The proprietor, suffering damage as a result of the unlawful marketing of a product identical to the bags marketed by him, initially lodged an out-of-court complaint with the cosmetics company, requesting that it cease the production, distribution and sale of the products in question, which were identical to the design which he had inspired and registered in Europe. The cosmetics company did not respond to the above out-of-court complaint of the proprietor and continued to promote and market the contested product.  

Strategy

Key points for the successful outcome of the case were the following:

- The immediate reaction of the owner of the design, who brought an application for injunctive relief before the competent courts, seeking an interim order requiring the cosmetics company to cease further production, marketing and sale of the contested product and to recall the products already on the market.

- The demonstration of the similarities between the two products, namely the bags available to the proprietor of the design and those available to the cosmetics company in the context of its festive campaign. This was achieved not only by the detailed and precise description of the two products, but also by their appearance before the examining judge.

- Highlighting the originality and recognition of the product available on the market by the proprietor of the design. The evidence gathered convinced the judge that, on the one hand, it was a globally original design and, on the other hand, that the specific product available to the proprietor had received extensive promotion and advertising, and was now displayed in the windows of many well-known shops in many parts of the country.

- The invocation of successive legal bases, namely both the relevant legislative framework for the protection of designs at Greek and European Union level and the legislative framework on unfair competition. 

Outcome

The beneficiary filed its application on 20.12 and the request for an interim order was heard before the competent judge on 27.12, in the heart of the Christmas holiday season. The judge was convinced of the originality of the design in question and the market recognition that this type of bag enjoyed, and also accepted that the bag promoted by the cosmetics company was identical to the product marketed by the proprietor. Thus, the interim order issued in the dispute determined the following: "Prohibits the first respondent from disposing of the bag depicted on page 3 of this application without the permission of the applicant and orders the first respondent to temporarily recall all of the bags in dispute, both of the aforesaid orders (prohibition and obligation) pending the hearing of this application and subject to discussion at the hearing of [...]". In other words, the cosmetics company was obliged not only to stop further marketing of the bags at issue, but also to recall the items already on the market. The company complied with the court's order and, before the main application for injunctive relief was discussed, asked the design proprietor to find a compromise solution. As part of the settlement, the cosmetics company acknowledged that the businessman was the exclusive owner of the bag design in question and agreed to purchase a certain number of pieces of the bag from the factory with which the owner was working in return for an agreed price. 

Conclusion 

Very often litigation is a necessary precursor to a good settlement. In this case, the cosmetics company did not even reply, initially, to the proprietor's complaint that it had marketed a product identical to the bag design which he had registered in his name. However, the immediate recourse to the court and the company's obligation to cease further production and marketing of the bags in question, as well as to recall those that had already been placed on the market, led the company to reconsider its position, to comply fully with the above and, finally, to recognise our client's exclusive rights to the design in question, while agreeing to supply the bags in question from the factory with which he was cooperating.