"Exclusive right" does not cover the right to infringe till one's own design is invalidated, advises AG

Earlier this year, Class 99 mentioned a reference from the Alicante Commercial Court to the Court of Justice for a preliminary ruling on a point of registered Community design infringement in Case C‑488/10 Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL. This morning the Advocate General's Opinion was published in a selection of EU official languages, but not English.

The reference turns upon Article 19(1) of Regulation 6/2002, which states:

Rights conferred by the Community design 

1. A registered Community design shall confer on its holder the exclusive right to use it and to
prevent any third party not having his consent from using it. The aforementioned use shall cover,
in particular, the making, offering, putting on the market, importing, exporting or using of a
product in which the design is incorporated or to which it is applied, or stocking such a product
for those purposes.

The referring court asked:

"1. In proceedings for infringement of the exclusive right conferred by a registered Community design, does the right to prevent the use thereof by third parties provided for in Article 19(1) of Council Regulation ...6/2002 ... extend to any third party who uses another design that does not produce on informed users a different overall impression or, on the contrary, is a third party who uses a subsequent Community design registered in his name excluded until such time as that design is declared invalid?

2. Is the answer to the first question unconnected with the intention of the third party or does it depend on his conduct, a decisive point being whether the third party applied for and registered the later Community design after receiving an extra-judicial demand from the proprietor of the earlier Community design calling on him to cease marketing the product on the ground that it infringes rights deriving from that earlier design?"

So does a later registered owner of a Community design, by virtue of his exclusive right to use it under Article 19(1), have an enforceable entitlement to carry on using it even in the face of infringement proceedings brought the the holder of an earlier right which does not produce on informed users a different overall impression?  According to Google Translate, the Advocate General thought not:

"The right to prohibit the use by others of a registered design by virtue of Article 19(1) ... can also be invoked against a third party who uses his own registered design later. It is not necessary for that purpose to first obtain a declaration of nullity of that design.  

In this context, both for the third party that the registration of the design of the latter has taken place or not in response to a notice, by which he was asked to stop marketing of its product, are irrelevant".

If the court agrees with the Advocate General's Opinion -- which happens in around 80% of references for preliminary rulings -- this will be good news for plaintiffs in Community design infringement proceedings since they won't need to knock out the defendant's later registration before bringing an infringement suit.