Community Designs: Comments on Invalidity Decisions

(IPRinfo 2/2009)

Ruth Almaraz
Trademark Attorney, Heinonen & Co. Ltd.

A registered Community Design can be requested to be invalidated. So far over 400 cases gave been decided.

Protection for a design EU-wide can be applied for since 1 April 2003. By Spring 2009, nearly 15 000 applications had been filed at OHIM (Office for Harmonization in the Internal Market (Trade Marks and Designs)).

As there is no opposition procedure, a registered Community Design (RCD) can be requested to be invalidated. Having received sufficient evidence, the invalidity division of OHIM renders a decision, which can be contested at the Board of Appeal. Now it is time, after 400 invalidity decisions, to have an overview of the situation.

Under the Community Design Regulation (CDR) “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

The registered Community Design (RCD) protects the appearance of the product, not the product itself. Thus there is nothing to object to in the strategy consisting of protecting a sign or a slogan which is graphically represented since this corresponds to the definition of a design, as it constitutes the appearance of a product such as a “graphical symbol”.

Of course, based on the principle of accumulation of protection as a design and as a trademark, users do understand the differences between filing as a Community Trademark and as a RCD, and they adopt their strategies accordingly. One strategy is parallel or consecutive filing for Community Trademark and RCD protection.

Lack of novelty and lack of individual character
A RCD may be declared invalid only in the cases established under Article 25 CDR. Most decisions given by the Invalidity Division and the Boards of Appeal refer to lack of novelty and lack of individual character. Indeed, requests for invalidity are usually based on these grounds.

Regarding “the lack of novelty”, it is extremely difficult to demonstrate with evidence the prior existence of an identical design which can destroy the novelty of the later RCD. In most cases, the applicant for invalidity is invoking both the lack of novelty and lack of individual character at the same time. OHIM, however, usually makes its decision on the grounds of lack of individual character.

A design shall be considered to have individual character if the overall impression on an informed user differs from that of any design which has been made available to the public. Therefore, it is easier to prove that a certain community design registration has no individual character than to prove that the RCD is not new.

The later RCD should be considered invalid when it has been filed after the filing date of the prior RCD or after the date of priority, if a priority is claimed.

Comparing overall impressions
In determining whether two designs produce the same overall impression on an “informed user”, it is obviously necessary to disregard the elements that are totally banal and common to all products of this kind.

Two designs for cars do not produce the same overall impression simply because they have four wheels, headlamps, red lights at the back, a windscreen and side and rear windows and so forth. The informed user will automatically discard such features when appraising the overall impression of the two designs. He will concentrate on features that are arbitrary or different from the norm.

In assessing individual character, the degree of freedom of the designer in developing the design should be taken into consideration. Depending on the characteristics of the products, the degree of freedom of a designer might be limited. It is, for example, not the same thing to protect an entire car as a small article for decoration.

Allowing the registration of very similar designs with insignificant differences concerning small items would lead to a very low degree of protection for the originality or individual character of the design.

Designers’ creativity is limited by functional features
When referring to big products such as furniture, clothing, packaging, distribution equipment, construction materials and means of transport (vehicles, lifts, etc.), it is compulsory to maintain basic features of designs which cannot be eliminated so that the degree of freedom of the designer becomes more limited.

Nevertheless, small items such as promotional products, articles for decoration, animal foodstuff etc. do not limit so much the degree of freedom of the designer. Consequently, it cannot be alleged that it is enough to add insignificant or small differences in order to produce an original design with individual character.

In some cases, the Invalidity Division has not accepted that small variations of a RCD can constitute a different design with individual character whereas the Boards of Appeal have maintained the registration of such designs. In other cases, the Invalidity Division has accepted small variations of products as constituting enough individual character, but the Boards of Appeal have annulled the registration.

BoA and Invalidity Division apply the Regulation differently
Between April 2004 and end of 2008, the Invalidity Division has given 414 decisions. In 261 decisions the contested RCD has been annulled, which means that only in 153 decisions the contested RCD has not been cancelled, although in many of them the decisions refer to different perspectives of the same design.

During the past 4 years, the Boards of Appeal have given 82 decisions, of which not more than 30 decisions have confirmed the decisions of the Invalidity Division.

Consequently, the Boards of Appeal and the Invalidity Division evidently apply the CD regulation differently. Cancellation decisions are neither consistent nor predictable. The situation should be solved by the judgments given by the Court of First Instance and the European Court of Justice.

At the moment, there are 11 cases pending on invalidity of RCD before the Court of First Instance. However, the Court has not even appointed the first hearing to be held in this issue yet.

Examples of different criteria
It is easier to see the difference in the views by examples.

In the Decision of the Invalidity Division of June 2005 regarding a promotional item for games, it was stated that the two opposing designs had all the basic features in common, i.e. both items were round in shape with an outer edge surrounding a central area and that they differed only by minor deviations in the profile of the central area giving rise to small variations in the surface patterns.

Furthermore, it was stated that the overall impression of the contested RCD on the informed user did not differ from that of the prior design disclosed. Therefore, the CD registered later was considered to be in conflict with the prior design.

This Decision was appealed by the owner of the cancelled RCD. The Boards of Appeal annulled the decision by the Invalidity Division stating (October 2006) that the contested RCD was not in conflict with the prior right owned by the respondent.

The reasons of those different criteria are due to a different degree of knowledge of the products designed. The Decision of the Boards of Appeal is pending to be annulled or confirmed by the Court of First Instance, in Case T-9/07.

A different example of this incoherence is the Decision of the Third Board of Appeal of 25 January 2008 in the case concerning “Animal foodstuffs”, which refers to a decision of the Invalidity Division from 2006.

Lack of novelty-claim rejected in both cases
Both decisions reject the ground for invalidity based on the lack of novelty. Concerning the lack of individual character, they agree that the informed user is familiar with foodstuff products and that there is no limitation on the freedom of the designer in creating these products.

The Invalidity Division, however, decided that the difference in the cross-section of the two products produced a different overall impression on the informed user whereas the Boards of Appeal decided that as the owner of the contested design had not proved that the five-prong design was dictated by technical functions, it followed that the design proprietor could have distanced itself from the earlier product much more than by merely adding a prong to its design.

Another example of the inconsistence is the decision of the Third Board of Appeal of October 2007 stating that the high degree of freedom that designers enjoy when designing internal combustion engines for lawn mowers reinforces the conclusion that the challenged design produces the same overall impression on the informed user because of a similar shape, position and size of the various components of the designed engine. The Decision of the Boards of Appeal is pending to be annulled or confirmed by the Court of First Instance in Case T-10/08.

The Invalidity Division, on the contrary, had stated that the challenged design did not lack individual character because the overall impression of the appearance of the upper part of the engine produced a different impression owing to differences in shape and position.

In conclusion, we have to wait Invalidity Cases concerning RCD to be decided by the Court of First Instance and European Court of Justice. Not until then will lawyers be able to base their applications for invalidity of RCD and appeals on coherent and consistent precedent Judgments.

Cases
Decision of the Invalidity Division of 20.6.2005 concerning Community Design 74463-0001,
Decision of the Boards of Appeal of 27.10.2006, Case R 1001/2005-3, pending at the Court of First Instance T-09/07
Decision of the Invalidity Division of 29.8.2006 concerning Community Design 196167-0003
Decision of the Third Board of Appeal of 25.1.2008, Case R 1391/2006-3
Decision of the Invalidity Division of 17.8.2006 concerning Community Design 163290-0001
Decision of the Third Board of Appeal of 8.10.2007, Case R 1337/2006-3, pending at the Court of First Instance T-10/08

You can search the OHIM decisions on the Case law pages of the Office: http://oami.europa.eu/ows/rw/pages/index.en.do

Legislation
RCD = Registered Community Design

CDR = Community Design Regulation = Council Regulation (EC) nº 6/2002 of 12 December 2001 on Community Designs)

Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs.

You can search for EU legislative acts and case law on Eur-lex web site: http://eur-lex.europa.eu/en/index.htm

Information on Community Design with relevant links on the web site of OHIM (Office for Harmonization in the Internal Market (Trade Marks and Designs)): http://oami.europa.eu/ows/rw/pages/RCD/communityDesign.en.do