Training days for Intia on IP- Patents and trademarks & Tradition has no form: the protection of a design does not depend on the type of product to which it is incorporated

 Within the training work carried out by AB ASESORES, assistance to public organizations and companies is framed so that they can carry out the most appropriate procedures in relation to their Industrial Property. A complete knowledge of the legal framework is essential, not only for the realization of records, but for the definition of an adequate strategy that is compatible with the legal possibilities of protection.

In this context, on September 8, a training session was held for the staff of the Navarran public company INTIA on Trademarks and their relationship with Denominations of Origin and Protected Geographical Indications, in which they delved into the singularities of collective trademarks and guarantee as fundamental tools in the reinforcement or consolidation of the protection of quality or geographical names within the agri-food sector.

These are fundamental issues that are also affected by different laws that make this matter particularly complex, with the disparities between the national Guarantee Marks and the European Union Certification Marks being of particular relevance. For all this, it was a day of maximum interest, which resulted in a large participation of the attendees.

From AB ASESORES, thank INTIA for their trust, as well as the work they do. We also take the opportunity to congratulate the company for having recently celebrated its 10th anniversary since its founding. May it be for many more years and may all the challenges set be met.

The mere application of the typical Aragonese ‘cachirulo’ pattern to a different garment does not add singular character to the design.

Although still mitigated by the restrictions of the pandemic, the recent celebration of the Pilar festivities has given the people of Zaragoza a new opportunity to take to the streets wearing the cachirulo, a characteristic scarf with colored checkered prints, popularly red and black. .

This garment, whose origin dates back to farm clothing and is currently a symbol of Aragonese folklore, has been the object of analysis in sentence 608/2021 of September 16, 2021, by which the Supreme Court has declared two null records of industrial designs consisting of the incorporation of the cachirulo print to a tubular garment:

Original Buff S.A. filed a nullity claim under article 65 of Law 20/2003, on the Legal Protection of Industrial Design (LDI) in relation to articles 13 and 7 of the LDI regarding the singular character, considering that the registered designs produced the The same overall impression as that produced by the typical Aragonese scarf and that the same product was previously marketed by the applicant.

The owner of the contested designs argued that the novelty of his designs lay in applying the traditional pattern to a specific shape, in this case an elastic neck warmer, which made the whole design novel.

The claim was dismissed both in the first and second instance, understanding then that the tubular shape generated a new combination of colors, shape and texture and that the plaintiff's products presented differentiating elements in the stamping with respect to the new designs, since these they do not require the garment to be knotted. Thus, the courts considered that, when applying a pattern to a garment whose form or mode of use is different from that already disclosed, the general impression is different.

The plaintiff filed an appeal challenging the application of the jurisprudential criterion that states that the assessment of the general impression of a design must be made taking into account the mode of use of the product represented by said design. In other words, the appellant asked whether the comparison should be made between the designs per se or between the products to which they are incorporated.

Now the Supreme Court has upheld the appeal, understanding that the mere application of an already disclosed pattern, such as the cachirulo, to a garment other than the handkerchief, does not in itself add a singular character to the design as long as it does not cause a different overall impression on the informed user.

Thus, the High Court recognizes that article 7.1 of the LDI does not subordinate the novelty and uniqueness of a design to the products to which it can be incorporated. It could be said that this ruling rules out the application to designs of a kind of specialty principle typical of trademark registrations that would limit their protection to a specific sector.

In support of its arguments, the High Court expressly mentions the judgment of the Court of Justice of the EU of September 21, 2017 (C-361/15 and C-405 / 15P, Easy Sanitary Solutions v Group Nivelles / EUIPO), in which the CJEU confirmed that the indication of the product of the design registration does not limit the scope of its protection since, in its own words, the opposite would lead to an “absurd result”, by allowing the holder of a subsequent registration, obtained despite the prior disclosure of an identical design intended to be incorporated into a different product, prohibiting the use of the same design even for the product that was the subject of the prior disclosure.

In sum, the outcome of this case confirms that the design registration does not protect the idea of ​​applying a drawing (in this case, a print) already disclosed to a different garment, but rather the design itself as an expression of the formal innovation of the appearance of a product or its ornamentation.