Cancellation of Industrial Designs

Bavarian Designs GmbH is a German SME involved in the design of containers in the food industry.

Given their innovative designs, the SME was hired by La Norteña, one of the leading companies in the industry of dairy products in Argentina, to develop a new design for their milk paperboard containers.

After 3 months, Bavarian Designs delivered La Norteña a new container, the main characteristic of which is the retractable plastic lid that allows consumers to lock the container and keep the milk fresh once opened.

The new design was so innovative that Bavarian Designs decided to: (i) register it as an industrial design in Argentina, due to the fact that this protection is granted quickly (within one week) since the Argentinean Patent Office (INPI) does not conduct substantive examinations during the registration procedure, and (ii) grant La Norteña a non-exclusive licence to use the design in Argentina. They decided to apply for design registration because it was cheaper and faster to obtain than a utility model title, which requires a substantive examination.

One of La Norteña’s direct competitors, La Leche Fresca, started using an identical paperboard container. La Norteña notified La Leche Fresca that this constituted an infringement of the registered design right. As a response, La Leche Fresca threatened to bring an action for the cancellation of the design, arguing that the registered design was not purely ornamental, but rather had a technical function. La Norteña then contacted Bavarian Designs to warn them of the risk.