jeudi, décembre 16, 2010

Denmark: Court rejects design registration violation claim

Court rejects design registration violation claim

Contributed by Norsker & Co


Facts

In a recent Maritime and Commercial Court case, Duravit AG sued B&N Developing ApS claiming that B&N's design of a toilet violated Duravit's design named 'Starck 3'. Starck 3 was registered as a European design on April 8 2003.(1) Duravit claimed that:

  • B&N's marketing of the toilet design should be prohibited;
  • B&N should destroy its stock of the design; and
  • B&N should pay Dkr500,000 to Duravit.

For reasons which do not appear either in the judgment or elsewhere, Duravit relied only on the protection that it had according to the registered design, and did not claim protection under either the Copyright Act or the Marketing Act. Additionally, Duravit had not obtained expert opinions to support its case.

Decision

The court found for B&N with the following remarks:

"Duravit's rights to the design of the Starck 3 toilet are protected by a European design registration. Such as the matter has been opened and presented and pleaded, the Court only may decide if the BEN Studio-toilet produced by B&N implies a violation of Duravit's design registration. This decision depends on whether the design of the BEN Studio-toilet gives the informed user another total impression than the design of the design registered Starck 3-toilet., cfr. The Act on Design § 9.

In comparing the two toilets the three characteristics pointed out by Duravit reappear in the two designs. Both toilets thus have a raised rear edge, a clearly marked band around the outside of the bowl and square mounting holes in the sides. The design of the band and the mounting holes, and to a certain extent the design of the raised rear edge, have not been bound by claims as regards function but have in a high degree been subject to designer's freedom. When establishing the informed user's total impression of the two toilets it must, apart from the overall design lines, be considered that the Starck 3-toilet is much longer than the BEN Studio-toilet which [among other things] has the effect that on the Starck 3-toilet there is a distinct space between the rear edge and the seat, that the Starck 3-toilet has a less sharp band around the outside of the bowl, less significant and different designed cuts for the mounting holes and more rounded edges which together with the length gives the toilet a narrower and more elegant impression than the BEN Studio-toilet. On this background and based on the physical inspection of the toilets in question at the trial, the Maritime and Commercial Court finds that the informed user's total impression of the two designs differ sufficiently from each other such that no violation of Duravit's registered design exists."

Following this decision, Duravit was ordered to pay Dkr50,000 in costs to B&N.

Comment

The court's remark "such as the matter has been opened and presented and pleaded" indicates that the court might well have reached another decision if Duravit had claimed protection under either the Marketing Act or the Copyright Act, especially if this had been supported by statements from an expert witness.

For further information on this topic please contact Mads Marstrand-Jørgensen at Norsker & Co by telephone (+45 33 43 31 00), fax (+45 33 13 38 38) or email (mmj@norsker.dk).

Endnotes

(1) European Design 000019237-0003.