Design Rights: Beware of the Shades of Grey

In a recent decision regarding several registered Community Designs (RCD) the Austrian Supreme Court had to decide whether allegedly infringing double-walled glasses produce the same overall impression on the informed user as several registered Community Designs showing double-walled glasses.

Once again, the Supreme Court stressed that when assessing the overall impression of the RCD the individual features of the design and their contribution to the overall impression must be evaluated; on the basis of these individual features the overall impression must be compared with the alleged infringing products. As in previous decisions, the Austrian Supreme Court also pointed out that the question of validity follows the same criteria as the question of infringement. Accordingly, a registered Community Design, which has a high degree of individual character, provides for a greater scope of protection, whereas in case of a lower degree of individual character, a lesser scope of protection is provided for.

When assessing whether the alleged infringing products create the same overall impression on the informed user, not a mosaic-like split-up comparison of the details has to be conducted but rather the overall impression of both the RCD and the allegedly infringing products have to be compared. So far, the Supreme Court reiterated its findings in previous decisions regarding scope of protection and validity of RCDs.

The interesting aspect of this decision is that for the first time the Austrian Supreme Court touched on the question to what extent colours of a RCD may influence the overall impression. In the present case, all pictures of the RCDs were filed in grey colour, whereas several RCDs showed glasses which one could see through, other glasses showed a non-transparent grey reproduction. With respect to colours, the Austrian Supreme Court found that colours may influence the overall impression. It is up to the applicant to decide whether he files a design application only in black and white or whether the applicant discloses specific colours as being part of the overall impression of the design application. In case only a black and white reproduction of the design is filed, it is clear that specific colours are not claimed. Accordingly, in such cases generally a different colour would not lead to a different overall impression.

However, in the present case although black and white pictures of the designs were filed, the Supreme Court found that it is still clear that specific glasses reproduce a transparent impression, whereas other glasses consist of a translucent, non-transparent material. According to the Supreme Court, the material is certainly one of the features defining the overall impression.

In the present case, this led to the result that – although the form of the glasses of the RCD and the allegedly infringing glasses were substantially identically – the allegedly infringing glasses produced a different overall impression on the informed user due to its transparency as opposed to the translucent effect disclosed in the RCD.

This means that applicants shall be aware that even in case a design application is filed only in black and white, also the shades of grey may be decisive for the overall impression and thus for the question of infringement or non-infringement.

Dr. Rainer Beetz, LL.M.

01.12.2010