Case No. IP-2018-000201

Thane 26.On 17 March 2004 the Landgericht in Frankfurt am Main gave judgment in Thane International Group’s Application, Case 3/12, O 5/04; reported in translation at [2006] ECDR 71. Apparently art.110(a)(5) came too late to have any bearing on the court’s decision and is not mentioned. 27.The claimant in Thane made abdominal muscle trainers under licence from a US manufacturer. The US manufacturer had advertised and sold the trainers in the US since May 2002. The trainers were not available in Europe until they were sold by the claimant in October 2002. The defendant sold a similar and rival product in Germany. The claimant sought to restrain the marketing of the defendant’s product, relying on a UCD. The defendant argued that there was no valid UCD since the design had been prior published in the USA. 28.The court considered whether at the relevant date the design for which protection was claimed had been made available to the public. It ruled that the main part of art.7(1), i.e. the presumption, has no territorial limitation; it did not matter whether the use of the design in trade had occurred within the Community or outside it. The court also found that the events of advertising and sale in the US of the trainers embodying the design had become known to the relevant circles in the Community. Importantly, the court decided that the design was first made available to the public within the Community, under art.11, in October 2002. As of October 2002 the design was not novel because of the US disclosure which had become sufficiently known to the relevant circles in the Community, and was accordingly not protected as a UCD, 29.By inference, the view of the Landgericht was: (1)for a design to be made available to the public in the Community within the meaning of art.11, the relevant event of disclosure must occur within the Community; (2)since UCD protection does not exist until art.11 is satisfied, novelty is to be assessed as of the date of UCD protection coming into being; (3)a design lacks novelty within the meaning of art.5(1)(a) if an event, within the meaning of art.7(1), has happened anywhere in the world, provided that the event could reasonably have become known to the relevant circles in the Community. Gebäckpresse II 30.Thane was followed by Case I ZR 126/06 Gebäckpresse II, a judgment of the German Federal Supreme Court dated 9 October 2008. I was provided with an agreed translation. 31.The claimant was a Hong Kong company which had developed an electric pastry press, a device for pressing out shapes to make bakery products. The claimant applied for a registered design in China which was granted and published in May 2002. It was either agreed or found as a fact by a lower court that the publication of the design in China could reasonably have become known to the relevant circles in the Community. Between June and October 2002 the claimant’s pastry press was sold in the UK. In November 2003 the defendant marketed a similar pastry press in Germany, leading to the litigation. 32.The Federal Supreme Court held that the publication of the registered design in China did not give rise to UCD protection because that publication had not made the design available to the public in the Community according to art.11 of the Design Regulation. That requires an act of disclosure within the territory of the Community, so it was irrelevant how well the disclosure in China was known to the relevant circles in the Community. To the extent that there was any ambiguity about the meaning of art.11 in this regard, the ambiguity was removed by the enactment of the second sentence of art.101(a)(5). The court held that although the sentence was contained in an Act of Accession of new Member States, it has application in all Member States. It was intended to clarify art.11 to make it clear that the act of disclosure of a design must take place within the geographical confines of the Community in order for the design to attain UCD protection. 33.Although not spelt out, the court appears to have assumed that the novelty of a UCD cannot be assessed unless and until the UCD comes into existence. On the court’s construction of art.11, that was in June 2002 when the claimant’s press was first sold in the UK. The court distinguished ‘making available to the public’ under art.11 from ‘making available to the public’ under art. 7. The latter provision does not specify disclosure within the Community. In June 2002 the design lacked novelty because the publication of the claimant’s design right in China would by then have been known to the relevant circles in the Community. 34.Thus, the three principles of law which I have inferred from the judgment in Thane were expressly or by inference approved by the Federal Supreme Court in Gebäckpresse. The court stated that a reference to the CJEU was not necessary because art.110(a)(5) had rendered any referable point of law in relation to art.11 acte clair.