Intellectual Property Court of Portugal [2022]: Barata & Ramilo, S.A. v Fabulous Cipher, Lda., Vila Nova Carneiro, S.A. and Cofemel – Sociedade de Vestuário, S.A.
This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 2: Emerging Issues in Industrial Designs
Intellectual Property Court of Portugal [2022]: Barata & Ramilo, S.A. v Fabulous Cipher, Lda., Vila Nova Carneiro, S.A. and Cofemel – Sociedade de Vestuário, S.A.
Date of judgment: March 29, 2022
Issuing authority: Intellectual Property Court of Portugal
Level of the issuing authority: First Instance (National competence)
Type of procedure: Judicial (Civin( �br> Subject matter: Industrial Designs; Copyright and Related Rights (Neighboring Rights); Competition; Enforcement of Community designs; Unfair competition (trade dress)
Plaintiff: Barata & Ramilo, S.A.
Defendants: Fabulous Cipher, Lda., Vila Nova Carneiro, S.A. and Cofemel – Sociedade de Vestuário, S.A.
Keywords: Enforcement, Community designs, Copyright, Infringement, Unfair competition, Trade dress
Basic facts: The plaintiff is a market leader in the distribution and sale of fashion accessories such as costume jewelry, bags, leather goods and footwear. It operates, by itself or through franchisees, a network of 634 establishments worldwide, of which 126 are in Portugal, where the first shop was opened in 1994 in the northern city of Porto. On September 25, 2015, the plaintiff opened a new PARFOIS store at the Mar Shopping mall in the northern city of Matosinhos, with a new image concept known as the “V6 concept”, commissioned from the Spanish company Tribeka Estudio Y Diseño, S.L. and finalized between July and August 2015. The V6 concept was subsequently implemented in 12 other stores in Portugal, plus a number of other stores in Spain, Italy, France, Saudi Arabia, Hungary, Poland and Estonia.
The plaintiff is a market leader in the distribution and sale of fashion accessories such as costume jewelry, bags, leather goods and footwear. It operates, by itself or through franchisees, a network of 634 establishments worldwide, of which 126 are in Portugal, where the first shop was opened in 1994 in the northern city of Porto. On September 25, 2015, the plaintiff opened a new PARFOIS store at the Mar Shopping mall in the northern city of Matosinhos, with a new image concept known as the “V6 concept”, commissioned from the Spanish company Tribeka Estudio Y Diseño, S.L. and finalized between July and August 2015. The V6 concept was subsequently implemented in 12 other stores in Portugal, plus a number of other stores in Spain, Italy, France, Saudi Arabia, Hungary, Poland and Estonia.
The first store of the new accessories business under the VILANOVA brand was opened to the public by defendant Fabulous Cipher, Lda. on March 11, 2016, at the 8a Avenida shopping center in the northern town of São João da Madeira. The design concept makes use of predominantly light colors, especially in large areas such as the floor and walls; the wallpaper is light and textured; the shelves designed by the RAAD architecture studio are bottomless and minimalist; the lighting is a light gray spot track type that can be directed to illuminate areas where products are placed; and other decorative and exhibition elements purchased by catalog from suppliers of this type of material are used. In the subsequent seven months, the defendant opened another eleven VILANOVA accessories stores in several cities, mainly in the north of the country (some of which are pictured below).
On the eve of the opening of VILANOVA’s first shop, on March 10, 2016, the plaintiff applied for registration of Community designs No. 3023381-0001, 3023381-0004 and 3023381-0006, which are registered in its name with the European Union Intellectual Property Office (EUIPO) since that date for “ornamentation and decoration of [commercial] stores” in class 32.00 of the Locarno Classification.
On June 22, 2016, the defendant filed with the EUIPO for the declaration of invalidity of the plaintiff’s aforesaid Community designs.
In September 2016, the plaintiff filed an action before the Intellectual Property Court, claiming infringement of the said Community designs and of its copyright in the new V6 concept of the PARFOIS stores, as well as unfair competition on the part of the defendants.
On September 25, 2017, the court decided to stay the proceedings until the final decision was issued on the requests for invalidity of the Community designs pending before the EUIPO.
By decisions of October 6 and 27, 2017, the EUIPO rejected the requests for invalidity of the Community designs in question. The defendant filed appeals against the EUIPO decisions rejecting its requests for invalidity of the designs, but the appeals were dismissed by the EUIPO Boards of Appeal through decisions of March 26 and July 23, 2019, following which the proceedings resumed before the Intellectual Property Court and judgment was rendered afterthe final hearing.
Held: The court dismissed all claims regarding infringement of the plaintiff’s copyright and Community designs No. 3023381-0001, 3023381-0004 and 3023381-0006, as well as unfair competition practice, finding that there was no risk of confusion between the plaintiff’s and the defendants’ shops.
Relevant holdings in relation to emerging issues in industrial designs: In reaching its decision, the Court ruled on a number of issues relating to the distinctive criteria for design and copyright protection, including the following:
1. The assessment of “overall impression” for infringement purposes is the same as for validity purposes;
2. Similarities in the features that are expected to be commonplace in the relevant type of commercial space are disregarded in the assessment; and
3. The burden of proof to establish copyright protection in PARFOIS’s new store image, or in the allegedly infringing reproduction, lay on the plaintiff and was not satisfied in this case.
Relevant legislation:
Articles 3(a), 4(1), 5(2), 19(1) and 27(1)(a) of Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs
Articles 1, 175(1), 175(2), 193(1), 193(2) and 311(1)(a) of the Portuguese Industrial Property Code (Decree-Law No. 110/2018 of December 10, 2018)
Articles 1(1), 2(1)(i), 11, 14(1), 14(2), 19(1), 27(1), 27(2), 40(b), 44, 56, 67(1) and 68(2)(i) of the Portuguese Code of Copyright and Related Rights (Decree-Law No. 63/85 of March 14, 1985)