Design litigation reaches the Supreme Court

"This was the first time in eleven years that the Supreme Court granted a leave to appeal for a design case"
Dec 2014
Bengt Wulf
Engineering industry



Infringement of adesign registration for chimney cap

Our client, the Swedish metalsmith Bengt Wulf, designed a chimney cap and upon application he was granted a design registration in 2005. A few years later he used the design registration as basis for a cease and desist letter directed at a competitor (JLM) for infringement. As a counteraction the competitor sued trying to invalidate the design registration. We represented Wulf in the case regarding the validity of the design registration.

Did the design met the requirement of distinctiveness?

The core issue of the case was whether Wulf’s design met the requirement of distinctiveness and novelty. That is, if the knowledgeable user’s overall impression of the product differs from prior art.

The case was granted leave to appeal to the Supreme Court but was settled out of court

The first instance, The District Court, said no, Wulf’s chimney cap didn’t differ enough from prior art and the registration should be invalidated based on lack of novelty. We appealed to the Court of appeal but they did not grant Wulf leave to appeal. So we appealed that decision to The Supreme Court and they agreed with us – the Court of appeal was forced to try the case.

Once the Court of Appeal did try the case on the merits they changed the district court´s outcome, and we were successful. The court stated that our client’s design registration was valid, and that the invalidation case was dismissed. The court stated that the functionality of the chimney cap was possible to achieve with alternative designs, and that the design therefore was not solely based on a technical solution of the product. The court also stated that the design does not lack novelty and distinctiveness.

That decision was appealed by our counterpart and, after more than a year of contemplating, the Supreme Court actually granted a leave to appeal. This was the first time in eleven years that the Supreme Court would handle a design case, and we started to prepare the procedure in the Supreme Court.

However, during the preparations of the procedure, the parties reached an extrajudicial settlement and the appeal was withdrawn.


Magnus Henning

Attorney at Law
Authorised Patent Attorney (SE)

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