Design of jewellery casket protected

The Swiss Supreme Court has allowed the registration of the design of a jewellery casket (Case 4C.344/2006, January 8 2007). In doing so, the court delivered an analysis on two key issues of design protection in Switzerland: distinctiveness and technical necessity.

Leser GmbH, a German company, is the owner of international design registrations for a jewellery case with a convex lid and a concave bottom. In 2004 it sued a competitor which displayed similar caskets at a major Swiss exhibition of watches and jewellery. At first instance the court ruled in Leser's favour. The defendant appealed to the Swiss Supreme Court, arguing in particular that Leser's design is (i) not distinctive in the sense of Article 2(1) of the Swiss Design Act, and (ii) is dictated by technical necessity as set forth in Article 4(c) of the act.

The Supreme Court upheld the lower court's ruling. Under Article 2(1) of the Design Act, a design is not distinctive if it only immaterially differs from existing designs known to the relevant public. The court held that the term 'relevant public' does not refer to design experts, but rather to the average buyer interested in purchasing a product with the relevant design. Such purchasers will, in the court's view, not notice differences in individual design elements. Instead, it is crucial that the new design's overall impression differs from existing designs' overall impressions. Here, the court held that Leser's design would be perceived as distinctive by the relevant public.

The court then rejected the defendant's argument that the casket's design features are dictated by technical necessity, in particular that the convex lid/concave bottom shape is required to stack the caskets efficiently and safely. The court held, in line with pertinent doctrine and its own case law relating to Article 2(c) of the Swiss Trademark Act, that the doctrine of technical necessity only applies:

• if there are no design alternatives;
  
  
• if there are alternatives, but each design has its own advantages; or
  
  
• if the available design alternatives require a more complicated or more expensive method of manufacturing.

The court argued that the primary purpose of a casket for jewellery is the storage of jewellery and, moreover, that a variety of designs allow the stacking of such caskets. The shape of Leser's casket's bottom and lid are thus not dictated by technical necessity.

Accordingly, the court dismissed the appeal.

For a discussion of some other Swiss Supreme Court decisions concerning designs and technical necessity (in the context of three-dimensional trademarks), see Supreme Court reverses Smarties shape mark decision, LEGO shape mark cancellation action blocked by Supreme Court and Lego Case remanded to determine nature of blocks' shape.

Matthias U Studer, Walder Wyss & Partners, Zurich