Saving Grace: court delivers cutting verdict in design right infringement case

Denmark

In Grace Manufacturing Inc v Herstal A/S (Case V-4-12, April 23 2013), the Maritime and Commercial Court has considered an alleged violation of design rights for two competing herb and spice grinders.

Grace Manufacturing Inc was the owner of EU Design Registration 00125027-001 for a cutting blade, and the manufacturer of a herb and spice grinder of which the blade formed an integral part. Grace supplied products in Denmark through its wholesale dealer Hamonoya. Herstal A/S produced a herb and spice grinder with cutting blades, which Grace argued violated its design rights.

The court found that the cutting blade could be considered a component part of a complex product, in line with Article 4(1) of the Community Designs Regulation (6/2002). The court found that, as Article 10 of the regulation was phrased in accordance with Article 4 thereof, assessment of whether a violation exists must correspond to assessment of whether a design is eligible for protection - the visibility criterion for complex products is therefore also relevant in connection with the assessment of violation.

With regard to the latter point, the court found that the directions for use of the Herstal herb grinder explained that, when cleaning the grinder, before the knives and the container could be cleaned, the bottom had to be unscrewed. The individual parts, including the cutting blades, were shown separately. As the product was a complex kitchen utensil that would be used in connection with food processing, specifically the chopping of herbs and spices, the court argued that cleaning of the product would undoubtedly form part of the product's normal use (as under Article 4(2)(a) of the regulation), during which time the cutting blades would be visible. The court noted that it is not a requirement for violation that the component part be visible at all times.

In establishing the extent of protection, the court focused on the design registration. When the cutting blade in dispute was compared to the drawings in Design Registration 00125027-001, the designs appeared identical to an informed user. This was also the case when the two products were physically inspected. The court further argued that the fact that the designs are identical could not be because the designer was limited to such a degree when developing the contested cutting blade that it was impossible to design a cutting blade that was not identical to the registered cutting blade.

The court therefore found that Herstal had violated Grace's design right under Article 10 of the regulation, and thus was not entitled to use the design without Grace's consent (Article 19(1)). Furthermore, the court found that Herstal's sales and marketing of its herb grinder violated Section 1 of the Act on Marketing Practice.

The court ordered Herstal to pay Dkr30,000 as compensation and damages, and Dkr13,300 as costs.

Mads Marstrand-Jørgensen, MAQS Law Firm, Copenhagen

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