Court rules on unregistered EU designs

In a dispute between two jewellery companies, the Maritime and Commercial Court has ruled in favour of the defendant (Case V-6-09, August 17 2010).
Pilgrim A/S produces and markets jewellery, watches and sunglasses in Denmark and abroad. Its goods are designed by its own designers and have become the market leader within their segment. The products are sold in 42 countries.
Dansk Smykkekunst A/S was established in 1971 and deals with the sale of jewellery. In the present case, Pilgrim claimed that Dansk Smykkekunst had imitated one of Pilgrim's necklaces for men. Dansk Smykkekunst denied imitation and informed the Maritime and Commercial Court that it had bought the necklace in China.
The court found that Pilgrim's necklace consisted of already known elements and that no independent creative effort had been made such that the necklace could enjoy copyright protection. However, the court ascertained that Pilgrim's necklace had such an independent character that it was protected as an unregistered EU design.
The court also found that, when seen as a whole, Dansk Smykkekunst's necklace did not differ from Pilgrim's necklace. Consequently, in relation to marketing, there was a risk of confusion. However, Pilgrim had not proven that its necklace had been sold in the Danish market and, as this is a condition under the Marketing Act, the court found that Dansk Smykkekunst had not violated the act.
Further, the court found that, according to the wording of Section 1, the Design Act did not apply to unregistered designs. The court stated as follows:
"The authority for damage and compensation according to the wording of the Design Regulation §89(d) must be found in the legislation in the state where the design violation has taken place - in this case, in Denmark. For the very reason that the court is not satisfied that Dansk Smykkekunst has known or should have known Pilgrim's necklace, the court does not find grounds to award damages and compensation according to the Act on Design. Consequently, the court finds it unnecessary to come to a decision of whether the Act on Design, §37, gives authority to damages for violation of an unregistered design or not. Consequently, the court finds for Dansk Smykkekunst."
Following this, the court ordered Pilgrim to pay Dkr20,000 in costs to Dansk Smykkekunst.
The decision is interesting as it is the first time that a Danish court has expressed an opinion regarding an unregistered EU design in relation to national legislation.
Mads Marstrand-Jørgensen, Norsker & Co, Copenhagen

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