Puma vs. … what is that thing?
24 Jun
For a few years we have had Community Registered Designs alongside trade marks. They are quick to register and (unlike trade marks) you don’t have to declare the extent of your protection (or pay a sliding charge based upon the breadth of your wishes).
The downside is that the test is that an infringer must use a design which “does not give a different overall impression”.. and what does that mean? There has been a feeling that the protection is narrow, certainly narrower than that under a trade mark. There have not been too many cases before the courts, but help is at hand:
It is possible to challenge the registration of a Community Design on the basis that there is already a design in use which does not give a different overall impression – the same test the courts use, so by looking at those cases you can get some idea of how broadly the term is deemed to be. Puma were successful in cancelling protection for this design
on the basis of these designs:
I think it is the right outcome in my gut, and underlines that a design can actually protect you against the use of similar designs, not just identical ones. I always advise my clients to think about registering designs – they may only last up to 25 years, but they are a great fall-back right.
