September 2023

Decision of the Athens Court of First Instance on the invalidity of the design

The decision of the Athens Court of First Instance, No. 4946/2023, was recently issued. The latter ruled the following with regard to the issue of industrial design (as other issues relating to unfair competition and intellectual property were also examined): with regard to the legal basis based on the provisions of Decree 259/1997 and Regulation 6/2002, i.e. the legislation regulating, inter alia, the acquisition and protection of rights to industrial designs at national and European level, the judgment rightly pointed out that the "presumption of legality generated by the registration of a design or an industrial design" is "not a legal presumption". 1 of Decree No 259/1997, which may be raised by the party claiming invalidity by way of action, counterclaim or objection. The grounds for invalidity, which relate to the novelty and individual character of the registered design, presuppose that an earlier design which is identical or does not produce a different overall impression has been made known ("disclosed") to the public in any way within the meaning of Article 13(1) of Decree No 259/1997, irrespective of the place where the relevant facts took place, i.e. it is not necessary that they took place only within the European Union'. The court held that the opposition to the invalidity of the opponent's Community designs raised by our client was admissible, because "in the context of litigation in interlocutory proceedings, the claim of invalidity of registered Community designs may be raised in the form of an 'opposition'. In that regard, the Court of First Instance relies in that regard on Article 90(1)(b) of Regulation No 40/94. 2 of Regulation No 6/2002 on the manner in which a plea of invalidity of a Community design may be raised in proceedings for interim measures, which refers in this respect to Article 85(2) of Regulation No 6/2002. 2 of the same Regulation, which 'provides that in proceedings in which protection is sought on the grounds of infringement/imitation of an unregistered European design, the validity of an unregistered European design may be challenged by the defendant not only by way of a counterclaim but also by way of an objection'.

The court then accepted that the opponent's designs lacked the element of 'novelty' and were therefore invalid, making the following assumptions: "the new and individual character of the latter has been annulled in accordance with the provisions of Article 14 para. 1 of Decree No 259/1997 and paragraph 7 of Decree No 259/1997. 2 of Regulation 6/2002, since a period of more than one year elapsed between the time when the original designs were first made available to the public (2016) and the time when the first application for registration was filed on behalf of the applicant, concerning the designs Nos.  ... national designs.[...]'. On the identity of the legal ground, the court denied protection of the opponent's said designs also as unregistered Community designs, holding in particular that "even if attributed to the applicant's original designs/designs, which were released in the year 2016, as 'unregistered Community designs', they enjoyed protection for three years from the date of their first marketing (Article 11 of Regulation No 6/2002), so that the three-year period in question had expired before the applicant filed its first application for registration'.

As we have written before: 'Of particular weight in this judgment of EUIPO were some posts on Rihanna's Instagram account and on her profile "badgalriri" with 300,000 likes, which showed Rihanna wearing these shoes as early as 2014: that is, earlier than 26 July 2016 when PUMA SA filed the application for an industrial design registration. Recall that the requirements of novelty and individual character are decided at that time (i.e. of filing). Exceptionally, only if the industrial design right holder himself has disclosed the industrial design (e.g. by marketing the product) before the filing of the declaration, he is granted a grace period of 12 months within which he must file it (i.e. the declaration). Only under this condition, notwithstanding the earlier publication of the design, the requirement of novelty and individual character (and thus the registration of the design is not impeded) is not impaired."