Swedish Supreme Court Rules on the Transfer of Design Registrations
- Sweden
- 12/16/2009
- Roschier, Attorneys Ltd. - Sweden
The Swedish Supreme Court has recently addressed claims of a better right to a design under the Swedish Design Protection Act (1970:485). In the decision rendered on 4 November 2009, the Supreme Court clarified the criteria for the transfer of a design registration in the case of a double assignment of the underlying design right (case T170-08).
To provide some background, the plaintiff Dolomite AB (“Dolomite”) had acquired the design rights to a walking frame from the designers. Four years later, the same designers developed a similar walking frame and sold the design rights to Gate Rehab Development AB (”Gate Rehab”), a competitor of Dolomite. While Dolomite never registered its design rights, Gate Rehab registered the design. After becoming aware of Gate Rehab’s design, Dolomite sued Gate Rehab for a better right to the design on account of its earlier acquisition. As Swedish law provides no protection for the good faith acquisition of a later buyer in the case of intellectual property rights, Dolomite also demanded a transfer of the design registration to its name.
In its decisions the Supreme Court held that a transfer of a design registration due to a better right requires that the original design and the registered design are identical. Only minor differences which cannot be presumed the result of conscious design efforts are exempted from the comparison. The Supreme Court further held that the fact that the designers had agreed with Dolomite not to produce similar designs in the future was not to be given any effect against Gate Rehab as a third party.
