BATH COLLECTION SL, as plaintiff, filed a statement of claim against BATHFORTE SL AND OTHERS, defendant, in which the main actions for claiming registration of the industrial design and infringement of the same, and subsidiary actions for unfair competition, were deducted.

The First Instance Judgment partially upheld the claim, but did not accept the claim for damages. In order to make those rulings, the judgment was based on the fact that the defendant acted in bad faith in obtaining registration of the design. But it could not accept the claim for damages because it could not be considered that there was damage due to infringement during the time that the registration of the design was in the name of BATHFORTE SL. The judgment was based on the rejection of the claim for damages because article 53 LDI requires that the infringed design be registered in favour of the person bringing the action, which cannot be seen in this case. Furthermore, according to the Judgment, art. 18 LDI supports this solution, since no damage has been caused.

On appeal, the plaintiff challenged the judgement, exclusively with regard to the rejection of the claim for compensation, in order to request that the claim be accepted. The judgment handed down by the Provincial Court upheld the claim for compensation brought by BATH COLLECTIOM SL, overturning the lower court’s judgment on this point.

The grounds of the appeal judgement are as follows: “As has been pointed out, the judgement considers that there can be no infringement of the industrial design that would give rise to the compensation provided for in art. 53.1. b LDI, because the registration was in favour of BATHFORTE SL and Miguel and Teodoro appeared as creators, and not BATH COLLECTION SL, despite the fact that it was the latter that was entitled to the registration, art. 14.1 LDI, and that said ownership of the registration would constitute a presupposition of the infringement, and with it, the right to compensation. However, in contrast to this reasoning, which strengthens the position of the party who has not legitimately obtained the registration of the design, since it did not have the right to it in origin, from the very moment of its application, which, furthermore, gives it an apparent and vitiated cover for the use it may have made of the design, to the detriment of the party who was actually entitled to its ownership, it must be understood that this position cannot be protected. Thus, the use of the design made during the time that the registered ownership lasted, later revoked by the action claiming that registration, must be considered illegitimate. This is the spirit of STS no. 177/2012 of 4 April, despite referring to another type of industrial property rights, but whose principle is applicable here”.

SAP of Madrid of 17 January 2022.