Opinion of the Advocate General — ECLI:EU:C:2011:714
Date: 2011-11-08
Language of the case: Spanish
Subject matter: Intellectual, industrial and commercial property;Approximation of laws;Designs
Procedure: Reference for a preliminary ruling
Origin: Spain

Summary of the Judgment Community designs — Effects of a Community design — Rights conferred by Community designs — Right to prevent any third party from using the design — Any third party — Meaning (Council Regulation No 6/2002, Art. 19(1)) Article 19(1) of Regulation No 6/2002 on Community designs must be interpreted as meaning that, in a dispute relating to infringement of the exclusive right conferred by a registered Community design, the right to prevent use by third parties of the design extends to any third party who uses a design that does not produce on informed users a different overall impression, including the third party holder of a later registered Community design, irrespective of the intention or conduct of the third party. The provisions of the regulation must be interpreted in the light of the priority principle, under which the earlier registered Community design takes precedence over later registered Community designs. It follows in particular from Article 4(1) of the regulation that a design is to be protected by a Community design to the extent that it is new and has individual character. However, where two registered Community designs are in conflict with each other, the design that was registered first is deemed to have met those conditions for obtaining protection before the design that was registered second. Thus, the holder of the later registered Community design may be afforded the protection conferred by the regulation only if he can demonstrate that the earlier registered Community design fails to meet one of those conditions, by seeking a declaration of invalidity, where appropriate by way of counterclaim. Under the procedure for the registration of Community designs procedure, governed by Articles 45 to 48 of the regulation, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is to examine whether an application complies with the formal requirements for filing, as laid down in the regulation. If the application satisfies those requirements, corresponds to the definition of a design under Article 3(a) of the regulation and is not contrary to public policy or to accepted principles of morality, OHIM is to register the application in the Community design Register as a registered Community design. That procedure therefore amounts to an essentially formal, expeditious check, which, as indicated in recital 18 of the preamble to the regulation, does not require any substantive examination as to compliance with the requirements for protection prior to registration, and which, unlike the registration procedure under Regulation No 207/2009 on the Community trade mark, does not provide for any stage during which the holder of an earlier registered design can oppose registration. In those circumstances, only an interpretation of the term ‘any third party’ within the meaning of Article 19(1) of the regulation as encompassing the third party holder of a later registered Community design is capable of ensuring attainment of the objective of effective protection of registered Community designs pursued by the regulation, as well as the effectiveness of infringement proceedings. (see paras 39, 40, 42-44, 52, 58, operative part 1-2)