February 2023

Interim Order of the Athens Court of First Instance on the Prohibition of Placing on the Market and Recall of Products infringing a Community Design Right

An interim order was granted by the Athens Single Judge Court of First Instance on 1/2/2023, which accepted our request in the context of a case of copying a bag design legally registered throughout Europe by our client and its illegal circulation in the market by a foreign company based in the United Arab Emirates. In particular, the exclusive proprietor of the rights to a particular bag design filed an application for injunctive relief against the foreign commercial company, which had started to promote and market a bag design identical to that of the proprietor's bag. The judge was convinced of the originality (contribution of the elements of "novelty" and "individual character") of the said design and the recognition enjoyed in the market by the specific type of bag of our client, and also accepted that the bag promoted by the foreign company was identical to that of the beneficiary. Thus, the interim order issued on the dispute determined the following: 'Granted interim injunction. Prohibits the first respondent from disposing of the bag depicted on page [...] of the application without the applicant's permission and orders the first respondent to temporarily recall the set of bags (with the design depicted on page [...] of the application) all of the above until the application is discussed and subject to discussion [...]'. In other words, the foreign company was obliged not only to stop further marketing of the bags in question, but also to temporarily recall the pieces already on the market. 

It is also important to mention the following:

- Under current Community law, the Community design right holder can prohibit the marketing of any product infringing his right throughout Europe, without the need to take legal action in each EU Member State. It is sufficient for the relevant court decision to be issued by the court in which the infringer is domiciled, or, if he is domiciled outside the EU, by the court in which the Community design right holder is domiciled. This was the case in the present case: since the undertaking infringing the right in question was established outside the EU, the courts competent to issue the 'pan-European order' were those of the place of establishment of the beneficiary undertaking, i.e. Greece. 

- Protection in the Greek territory is provided only by the special courts of Athens and Thessaloniki. There are judges there who have specialised in the Community design and EU trade mark, in order to provide the best possible protection with a harmonised application of the law within the EU as far as possible.

- If an infringement of the right to the design occurs, the request for injunctive relief may consist of the immediate withdrawal of the products infringing the registered design and the prohibition of their sale, without of course excluding the subsequent claim for damages, as well as criminal sanctions against the infringer under the legislation on protection against unfair competition. In this case, at a first level, a prohibition on the marketing and recall of the contested products was ordered.

(for more on the industrial design see here)