Swedish intellectual property courts believe that a change of action cannot be made

By Sanna Wolk and Christopher Tehrani

New indicative ruling by the Swedish Intellectual Property Court (Patent and Market Court of Appeal, PMÖD) regarding change of action (case PMÖ 2043-22, PMÖ 2043-22 on July 14, 2022). The case also dealt with an interim penalty order. In both parts, the plaintiff's petition was dismissed, but the PMÖD has allowed the decision to be appealed to the Supreme Court.

Within the EU there are two different forms of protection for designs. Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (EU-FGF) states that a design may be protected as an unregistered Community design if it is made available to the public (Article 1(2)(a)) and that a design may be protected if it is registered and obtains a registered Community design (Article 1(2)(b)). The basic protection requirements, that a design must be new and distinctive, are essentially the same for the two forms of protection (Articles 4 to 6).

The background to the case was that the plaintiff made claims for, inter alia, a ban on fines and compensation for infringement of the plaintiff's registered Community designs. The plaintiff subsequently amended his action to include allegations of infringement in certain ways in the company's unregistered Community designs. Both the PMÖD and the lower court held that the amendment was inadmissible and that the action in this part should therefore be dismissed as inadmissible.

Rules on change of action are contained in Chapter 13, Section 3, third paragraph of the Code of Civil Procedure.

In the case, the question was whether a change of action constituted a permissible or an impermissible change, i.e. whether the change affected the identity of the thing. In case law, the identity of the case has often been determined on the basis of the legal sequence claimed by the plaintiff in the case. In this context, the concept of legal succession does not refer solely to the performance expressed in the plaintiff's claim. The legal consequences relate to the claim made by the plaintiff in the trial. The nature of the claim is clear from the plaintiff's claim and the facts relied on in the context of the action.

The plaintiff originally relied only on the registered design in the case but adjusted the design to include the unregistered design. The case shows that the infringement periods between the unregistered design and the registered design differed but did also partly coincide. This meant that the plaintiff's change in the pleadings as to the company's action was adjusted in relation to (i) the exclusive rights asserted; (ii) the infringement measures alleged, and (iii) the periods of time during which infringement would have occurred.

In view of this, PMÖD argued that there could be no adjustment of the same legal consequences on alternative grounds.

In the case, PMÖD argued that the plaintiff's claim of infringement of unregistered Community designs could not be regarded as the same as the claim of infringement of registered Community designs. In the meantime, PMÖD considered that the new fact that the unregistered Community designs had also been infringed constituted an unlawful amendment of the action under Chapter 13, Section 3, third paragraph of the Code of Civil Procedure.

The PMÖD has allowed the decision to be appealed to the Supreme Court.