Design protection : a case illustrating the risks of premature disclosure
X International SA (“X SA”), active in the production and sale of luxury goods—particularly jewelry featuring mobile stones set between two transparent walls—discovered in February 2005 that the company Y Bijoux SA (“Y SA”) was selling similar jewelry at a much lower price.
Believing it was the victim of an infringement of its designs registered with WIPO in 1998 and 1999, X SA filed a lawsuit before the Geneva Court of Justice.
During the proceedings, the jeweler responsible for the contested jewelry, Z Joaillerie Sàrl (“Z Sàrl”), intervened and sought a declaration of invalidity of the disputed registrations, arguing a lack of novelty and originality—two essential criteria for design protection under Art. 2 para. 1 of the Swiss Design Act (LDes).
The Geneva Court found that X SA had already disclosed its design in a 1996 catalogue before seeking protection. It therefore held that the designs were neither new nor original. The design registrations were thus declared invalid at first instance.
Dissatisfied, X SA brought the matter before the Federal Supreme Court.
Taking a more nuanced approach, the federal judges found that X SA’s jewelry indeed showed significant differences compared to those featured in the 1996 catalogue. Thus, the jewelry was considered new under the LDes.
However, according to the Federal Supreme Court, originality in a design lies in the overall impression left on the target audience—in other words, the short-term image that remains in the mind of a potential buyer. The Court emphasized that originality is not measured solely by the number of differing details, but by the overall visual impact of the key distinctive elements.
Therefore, despite the technical differences highlighted by X SA, the Court considered that the differences between the new designs and those previously disclosed in the 1996 catalogue were secondary. As a result, the design did not differ sufficiently, in terms of overall impression, from the models shown in the catalogue.
Paradoxically, although X SA appeared to be protected by its registration, it was its own prior communication that ultimately worked against it.
This decision underscores the importance of adopting a rigorous legal strategy and confirms that in the highly competitive and nuanced luxury sector, legal protection depends more on a pragmatic approach than on the often-imagined technicalities.
Article written by Me Victor Häusermann