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In a recent judgment of the Community Design Court number 1 of Spain (Judgment 106/2019 of 6th May 2019 issued by the Commercial Court number 1 of Alicante), which is the relevant court for hearing such matters since it is also the location of the offices of the Intellectual Property Office of the European Union (EUIPO), the question arises as to the scope of protection of the industrial design and that of unfair competition.
The law protecting community designs and industrial designs protects a subjective right arising from registration. However, the purpose of the legislation on unfair competition is to protect, not the right over the trade mark, but the proper functioning of the market, preventing the consumer from being misled, so that the recipient of the protection is not the owner of the trade mark as such, but all those who participate in the market and the market itself.
This relationship between acts of infringement of industrial property rights and acts of unfair competition has been explained by scientific doctrine through the so-called “concentric circles theory” and the “theory or principle of relative complementarity”, which have been accepted by the Supreme Court.
In the specific case referred to in this brief overview, the graphic design studio Mr. Wonderful filed a lawsuit against Cial Lama and DCasa, because it considered that, among other issues, the defendants were engaging in acts of unfair imitation, as set forth in article 11.2 of the Unfair Competition Law, which establishes the following:
“(…) the imitation of the services of a third party shall be deemed unfair when it generates association on the part of the consumers with respect to the service or involves an undue exploitation of the reputation or effort of others.
The inevitability of the aforementioned risks of association or exploitation of the reputation of others excludes the unfairness of the practice.”
Specifically, Mr. Wonderful sought to compare the defining elements of Mr. Wonderful’s design style, as deduced from existing registrations, and not that of an exclusive right, without specifying the registered community designs and industrial designs which it considered to have been infringed.
This claim is accepted by the Court, on the understanding that Mr. Wonderful is strongly implanted in the market and has created its own design style consisting of a combination of three elements -textual, graphic and chromatic- that lend it originality in the sense that, when incorporated into the products it sells, it allows consumers to identify such products as those of Mr. Wonderful.
Therefore, the judgment concludes that the defendants have engaged in acts of unfair imitation as set forth in article 11.2 of the Unfair Competition Law and that as a consequence they have caused damages to Mr. Wonderful. Finally, the judgment orders Cial Lama and DCasa to cease the use of the defining elements of Mr. Wonderful’s design style, to withdraw from the course of trade and to destroy all products incorporating drawings and/or designs that copy or imitate such elements, and to compensate Mr. Wonderful for damages.
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Barcelona, 5th July 2019.