RCDs: are they always examined by a court in Warsaw?

Maj 8, 2019

Disputes regarding infringement of community designs have to be examined by the Court for the EU Trademarks and Community Designs in Warsaw (XXII Division of the Regional Court in Warsaw). When a right to a community design is infringed, the claimant must bring an action to that court irrespective of the place where the infringement has been committed and the seat of the parties.

The principle of intellectual property law is the cumulative nature of protection, which means that in many cases there is more than one regime of protection. In the case of industrial designs, it is usually copyright protection (as a work) and protection resulting from the Act on Combating Unfair Competition (protection against a so-called slavish imitation). Each of the indicated regimes offers a different scope of protection, adjusted to the ratio legis of regulation. It is the right holder who decides on the grounds on which the dispute will be resolved.

Having the right to a community design, the right holder may sue the infringer for example only on the basis of copyright law in a common court, determined in accordance with general jurisdiction, without raising claims related to designs. Most often, however, in case of a community design infringement all other alternative legal bases are also included in the statement of claims. It may turn out to be a strategic mistake. A loss of claims related to a design infringement may deprive the right holder of an objective assessment of other regimes. It is not uncommon that a defeat in the field of designs somehow radiates to the other legal grounds, which are also dismissed, or at least the judge’s attitude to the circumstances related to the design infringement has a significant impact on the alternative claims. Therefore, in some matters it is reasonable to separate the legal bases and bring an action based only on one available regime and reserve the right to sue again on the basis on alternative legal basis before another court.

However, choosing only one of the legal bases in a matter allowing more legal regimes is not always understood by the court. In one of the cases initiated before the Regional Court in Gdańsk a lawsuit was based only on the Act on Combating Unfair Competition, although the right holder owned a community design . The court ruled that irrespective of the legal basis of the claim, all disputes in which a community design appears belong to the exclusive jurisdiction of the Court for EU Trade Marks and Community Designs in Warsaw and issued a decision to refer the case to that court.

The Appeals Court in Gdańsk found such decision wrong. The court emphasized that the intention of the legislator is to provide cumulative protection to industrial designs that can be supplemented by various legal regimes. One of them may be regulations concerning combating unfair competition. The purpose of this regulation is primarily to protect the public interest by eliminating actions that violate the mechanisms of fair competition. It is, therefore, a protection that should be treated separately from the protection granted by an industrial design and which cannot be replaced by it. Therefore, if the plaintiff bases his claim solely on the provisions of combating unfair competition, it is his right to do so, and the fact of owning a community design cannot allow the court examining the matter to refer it to the Court for the EU Trade Marks and Designs.

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