Austrian Supreme Court dismisses infringement action on design rights
Supreme Court decisions on the infringement of design rights are rare in Austria. In a recent case, the holder of a registered design setting out a grave light with a heart-shaped feature on its front sued a competitor for marketing an allegedly infringing product.
The action was dismissed by the court of 2nd instance. The plaintiff appealed - without success. At the outset, the Austrian Supreme Court stated that it is the design as shown in the registered design - not the marketed product - that must be compared to the allegedly infringing product.
In so doing, the court observed that the design at issue was registered in black and white such that differences in the colours must be neglected in the comparison. However, the court noted that the allegedly infringing lights come with a pronounced heart-shaped feature set against a background in different colours. In a black-and-white view these colours give rise to shadings in the background, which are apt do distinguish the grave lights in suit from the registered design having a uniform background.
The Austrian Supreme Court found that the designs in comparison create a different overall impression on the informed user. The plaintiff's appeal was finally dismissed.
The present decision highlights two important aspects of design law that have been critical in cases throughout Europe. First, it is the design as registered that matters, whereas the product marketed by the right holder must not influence the courts in solving the infringement issue. Second, the way the design is registered determines its scope of protection. While designs in black-and-white protect against use of the design in any colour, it must be remembered that a different arrangement of the colours in the infringing product may give rise to different shadings which are to be considered in the overall comparison.
DI Johannes Strobl