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Design Rights Infringement

INTELLECT has successfully represented OOO Werkel, a large Russian manufacturer and distributor of home wiring accessories and fixtures.

INTELLECT represented OOO Werkel in a suit brought by its German competitor Busch-Jaeger Elektro GmbH in 2018 over an alleged infringement of its design rights. The German firm alleges that Werkel has illegally replicated the patented designs of the cover plates (face-plates) of two of Busch-Jaeger's wall switch and outlet combos.

The suit threatened a massive withdrawal from the market of Werkel's allegedly counterfeit products which would not have sold out by the end of the proceedings and which the client would have had to destroy at its cost, let alone cease and desist their manufacture, marketing, distribution and sale.

INTELLECT's patent attorneys investigated Busch-Jaeger's design patents and found that they protected the designs of entire combos, i.e. the switch-and-outlet assemblies complete with the push-buttons and receptacles, rather than the designs of each of their several components, including the decorative cover or face plates (similar as these were to the defendant's in their elegant austerity, which made the defence substantially more difficult).

Represented by INTELLECT and relying on a judicially commissioned expert evidence, Werkel compellingly demonstrated in court that the plates the client had designed, manufactured and marketed separately from other, unchallenged components — which were essential, if not crucial, for registering the combo design rights as such — were no intentional replicas, and that the similarity was a mere technologically-conditioned coincidence. The court ruled in favour of the defence. The decision was stood by the Court of Appeal and the Court of Cassation.

Our comment:

Introducing the notion of “functional aesthetics” of design elements.

Legal complexity of the case: Apart from tackling an exceptionally contentious issue (the scope of a design patent), the defence had to resort to estoppel against the claimant who had included the design of the push-buttons and receptacles in its patented industrial design descriptions as essential elements, but denied their essentiality in court and insisted on componential severalty for the purposes of legal protection.

Practical significance: The landmark nature of the matter may develop as the case goes up the appeal chain, crystallizing the essentiality and materiality tests for industrial design elements; introducing the notion of "functional aesthetics" of design elements; and consolidating the practice of applying estoppel in cases where the patent holder's claims in court are inconsistent with its claims filed earlier with the patent office.

Intellectual Property, IP Disputes

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