• Judgment of 22 June 2010, T-153/08, Shenzhen Taiden Industrial Co. Ltd v OHIM

The applicant, Shenzhen Taiden Industrial Co. Ltd, is the holder of a Community design registered in 2004 intended to be applied to ‘communications equipment’. In 2005, the intervener, Bosch Security Systems BV, submitted an application at the OHIM for a declaration of invalidity of the contested design on the basis of Article 25(1)(b) of Council Regulation No 6/2002. In the application for a declaration of invalidity, the intervener claimed that the contested design was not new and it lacked individual character within the meaning of Article 4 of Regulation No 6/2002, read in conjunction with Articles 5 and 6 of that regulation. In support of its application for a declaration of invalidity, the intervener relied on an international design registered in 2000, which was made available to the public by its publication in theBulletin of the World Intellectual Property Organisation(WIPO) in 2001 and was to be applied to ‘units for conference systems’. In 2006, the Invalidity Division of OHIM rejected the application for a declaration of invalidity. Bosch Security systems appealed the decision and the Third Board of Appeal of OHIM allowed the appeal and held that the design was new, however, it did not have individual character as it did not produce a different overall impression on the informed user.

Shenzen Taiden formed an application in front of the General Court for the annulment of the above decision, claiming that the design was new and had individual character.

The General Court firstly interpreted the notion of the informed user and stated that the ‘informed’ suggests that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them. Furthermore, the informed user is not able to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product’s technical function from those which are arbitrary.

In relation to the design’s individual character, the General Court held that the contested design lacked individual character as its stylized decoration cannot offset the similarities of the two designs and it is thus not sufficient to confer individual character on the design.

(for the designs’ registered images see the link provided hereafter)

• Judgment of 10 September 2015, T-525/13, H&M Hennes & Mauritz BV & Co. KG v. Office for Harmonisation in the Internal Market (Trade Marks and Designs)

On 30 October 2006, the intervener, Yves Saint Laurent SAS, filed an application for registration of a Community design (‘the contested design’) with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1). The contested design, which is intended to be applied to ‘handbags’ in Class 03-01 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended, is represented according to six views as follows (check the link below to see the images). The contested design was registered under the number 613294-0001 and published in Community Designs Bulletin No 135/2006 of 28 November 2006. On 3 April 2009, the applicant, H&M Hennes & Mauritz BV & Co. KG, filed with OHIM an application for a declaration of invalidity in respect of the contested design, based on Articles 4 to 9 of Regulation No 6/2002 and on Article 25(1)(c) to (f) or (g) of that regulation. In its application for a declaration of invalidity, the applicant confined itself to claiming that the contested design had no individual character within the meaning of Article 6 of that regulation. In support of its application for a declaration of invalidity, the intervener invoked, in order to substantiate the alleged lack of individual character of the contested design, the earlier design reproduced below (check the link below to see the images). By decision of 4 November 2011, the Cancellation Division rejected that application for a declaration of invalidity. On 25 January 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Cancellation Division. By decision of 8 July 2013 (‘the contested decision’), the Third Board of Appeal of OHIM dismissed the appeal. After finding that the documents submitted by the applicant were capable of proving that the handbag which was the subject-matter of the earlier design had been made available to the public, the Board of Appeal examined the individual character of the contested design. It defined the informed user of that design as an informed woman, who was interested, as a possible user, in handbags. According to the Board of Appeal, the two designs at issue had features in common, in particular their upper contours and their handles in the form of straps attached to the body of the bags by a system of rings reinforced by rivets, but the differences as regards the shape, structure and surface finish played a decisive role in the overall impression produced by those goods. In that regard, the Board of Appeal found that the degree of freedom of the designer was high, but that, in the present case, it did not, from the point of view of the informed user, cancel out the significant differences in shape, structure and surface finish which differentiated the two bags. The applicant claims that the Court should annul the contested decision and declare the contested design invalid. As to the OHIM, it contends that the Court should dismiss the action. Finally, the intervener contends that the Court should dismiss the action, confirm the contested decision and declare the contested design valid.

Firstly, the court reminded that the Board of Appeal defined the concept of the informed user, in relation to whom the individual character of the contested design must be assessed, as an informed woman who is interested, as a possible user, in handbags. As regards the level of attention of the informed user, it must be borne in mind, in line with what the Board of Appeal stated, that, according to the case-law, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question. The Board of Appeal found that the informed user in the present case was neither an average purchaser of handbags nor a particularly attentive expert, but someone in between who is familiar with the product in accordance with the level of attention established by the case-law.

Secondly, as regards the degree of freedom of the designer of a design, it is apparent from the case-law that that is determined, inter alia, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned. Therefore, the greater the designer’s freedom in developing a design, the less likely it is that minor differences between the designs at issue will be sufficient to produce different overall impressions on an informed user. Conversely, the more the designer’s freedom in developing a design is restricted, the more likely it is that minor differences between the designs at issue will be sufficient to produce different overall impressions on an informed user. Consequently, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that designs that do not have significant differences produce the same overall impression on an informed user . In the present case, the Board of Appeal correctly found that, in the context of fashion items like handbags, the designer’s degree of freedom was high. The Board of Appeal did not err in stating that the factor relating to the freedom of the designer could not on its own determine the assessment of the individual character of a design, but that it was, however, a factor which had to be taken into consideration in that assessment.

Consequently, it correctly found that that factor was a factor which made it possible to moderate the assessment of the individual character of the contested design, rather than an independent factor which determined how different two designs have to be for one of them to have individual character. Furthermore, the court confirms the Board of Appeal’s assessment inasmuch as it found that the contested design produced an overall impression on the informed user which was different from that produced by the earlier design.Therefore, the court rules that the action must be dismissed in its entirety.

• Judgment of 19 June 2014, C- 345/13, Karen Milen Fashions v. Dunnes stores Dunnes Stores (Limerick) Ltd

KMF is a company incorporated under the law of England and Wales which carries on the business of producing and selling women‘s clothing. Dunnes is a substantial retailing group in Ireland which, among other things, sells women’s clothing. In 2005 KMF designed and placed on sale in Ireland a striped shirt (in a blue and a stone brown version) and a black knit top ( the KMF garments) .Examples of the KMF garments were purchased by representatives of Dunnes from one of KMF s Irish outlets. Dunnes subsequently had copies of the garments manufactured outside Ireland and put them on sale in its Irish stores in late 2006. Asserting itself to be the holder of unregistered Community designs relating to the garments, on 2 January 2007, KMF commenced proceedings in the High Court in which it claimed, inter alia, injunctions restraining Dunnes from using the designs, and damages.The High Court upheld that action. Dunnes brought an appeal against the judgment of the High Court before the Supreme Court.That court states that Dunnes does not dispute that it copied the KMF garments and acknowledges that the unregistered Community designs of which KMF claims to be the holder are new designs. However, it is clear from the order for reference that Dunnes disputes that KMF is the holder of an unregistered Community design for each of the KMF garments on the grounds, first, that the garments do not have individual character within the meaning of Regulation No 6/2002 and, secondly, that that regulation requires KMF to prove, as a matter of fact, that the garments have individual character. It was in those circumstances that the Supreme Court decided to stay the proceedings and to refer two questions to the Court for a preliminary ruling.

Firstly, the referring court asks, in essence, whether Article 6 of Regulation No 6/2002 must be interpreted as meaning that, in order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user by one or more earlier designs, taken individually, or by a combination of features taken in isolation and drawn from a number of earlier designs.

By its second question, the referring court asks, in essence, whether Article 85(2) of Regulation No 6/2002 must be interpreted as meaning that, in order for a Community design court to treat an unregistered Community design as valid, the right holder of that design is required to prove that it has individual character within the meaning of Article 6 of that regulation, or need only indicate what constitutes the individual character of that design.

The court decided that Article 6 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs is to be interpreted as meaning that, in order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually. The court has added that Article 85(2) of Regulation No 6/2002 must be interpreted as meaning that, in order for a Community design court to treat an unregistered Community design as valid, the right holder of that design is not required to prove that it has individual character within the meaning of Article 6 of that regulation, but need only indicate what constitutes the individual character of that design, that is to say, indicates what, in his view, are the element or elements of the design concerned which give it its individual character.

• Judgment of 18 October 2012, Joined cases, C-101/11P AND C-102/11 P Herbert Neuman, Andoni Galdeano del Sel v OHIM (Appeal)

Baena Group is the holder of a Community design lodged and registered in 2005 for ornamentation for T-shirts, caps, stickers and advertising materials. In 2008, Mr Neuman and Mr Galdeano del Sel applied to OHIM for a declaration of invalidity of the contested design, pursuant to Article 25(1)(b) and (e) of Regulation No 6/2002, on the grounds of lack of individual character and secondly that a distinctive community trademark, within the meaning of Article 25(1)(e) of that regulation, was used in that design. OHIM’s decision on the matter was appealed, and the Board of Appeal found that the Cancellation Division had erred in considering that the earlier mark had been used in the contested design. Nevertheless, it found that the contested design did not have individual character, because it did not produce on the informed user, namely young people or children who habitually purchase T-shirts, caps and stickers or users of printed material, an overall impression that differed from that produced by the earlier mark. Thus, the Board of Appeal confirmed the invalidity of the contested design, but on the basis of Article 25(1)(b) of that regulation, read in conjunction with Article 6(1) thereof.

Baena Group brought an action in front of the General Court for the annulment of the decision, claiming that the differences between the earlier mark and the contested design are such that the overall impression produced on the informed user by each of those silhouettes is different. The General Court held that the differences between the two silhouettes ‘were sufficiently significant to create a different overall impression on the informed user, despite similarities concerning other aspects and the significant freedom enjoyed by the designer of silhouettes such as those at issue in the present case’. By their appeals, Mr Neuman and Mr Galdeano del Sel, on the one hand, and the OHIM, on the other sought to set aside the above judgment claiming that the General Court erred in law in the application of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4 to 9 thereof and Article 25(1)(e) of that regulation. 

The Court held that in relation to the comparison between the earlier mark and the contested design, it is true that the very nature of the informed user, as defined by the Court, means that, when possible, he will make a direct comparison between the earlier mark and the contested design. However, it cannot be ruled out that such a comparison may be impracticable or uncommon in the sector concerned, in particular because of specific circumstances or the characteristics of the items which the earlier mark and the contested design represent.

Therefore, the General Court cannot reasonably be criticised as having erred in law on the ground that it assessed the overall impression produced by the earlier mark and the contested design without starting from the premiss that an informed user would in all likelihood make a direct comparison of them (see, to that effect, PepsiCo v Grupo Promer Mon Graphic, paragraph 56).    That is true all the more so since, in the absence of any precise indications to that effect in Regulation No 6/2002, the European Union legislature cannot be regarded as having intended to limit the assessment of designs to a direct comparison.

(for the designs’ registered images see the link provided hereafter)

• Judgment of 21 September 2017, Joined Cases C-362/15 P and C-405/15 P, Easy Sanitary Solutions BV and EUIPO v Group Nivelles NV (Appeals)

In 2004 Easy Sanitary solutions filed an application for registration of a community design with EUIPO under Regulation 6/2002. The design was related to a shower drain.  In 2009, I-Drain the predecessor of Group Nivelles NV filled an application for invalidity of the contested design. In support of that application, I-Drain relied on the ground of invalidity set out in Article 25(1)(b) of the regulation, namely that the design did not fulfil the requirements of Articles 4 to 9 of that regulation. Those requirements include, inter alia, the novelty (within the meaning of Article 5 of that regulation) and individual character (within the meaning of Article 6 of the same regulation) of the design concerned, as assessed at the date on which it was made available to the public, determined in accordance with Article 7 of the same regulation. The Invalidity Division held the design invalid due to lack of novelty, however the Board of Appeal reversed its decision.

Group Nivelles brought an action in front of the General Court for the annulment of the contested decision stating that EUIPO’s Board of Appeal erred when comparing the contested design with earlier designs and that the design lacked novelty. The General Court accepted the action and annulled the contested decision made by the EUIPO Board of Appeals stating that the contested decision was not sufficiently comprehensive.

EUIPO and Easy Sanitary Solutions appealed arguing that, inter alia, the judgment under appeal was not in conjunction with articles 5 and 7 of the Regulation 6/2002 and also that the Court misjudged the law when it held that in the assessment of individual character of the design, within the meaning of Article 6 of the Regulation, the nature of the products relevant to the design had an influence on the likelihood of the relevant informed user knowing the earlier design.

In relation to disclosure and article 7, the Court held that the question of whether there is disclosure to the public is dependent only upon how that disclosure is in fact achieved and not upon the product in which that design is intended to be incorporated or to which it is intended to be applied. The Court continued by explaining that the purpose of the exception in Article 7(1) of that regulation, relating to cases in which certain events, listed in that provision, cannot constitute a disclosure to the public, is to ensure that events that are difficult to verify and that occur in a third country are not capable of constituting such disclosure, and not to make a distinction between various business sectors within the European Union and to exclude the possibility that events that relate to a business sector that cannot reasonably be known to the specialised circles of another sector within the European Union may constitute a disclosure to the public.

In relation to the notions of informed user and individual character, the Court repeated what was ruled in Grupo Promer case in relation to the characteristics of the informed user and added that nothing in Article 7(1) of the Regulation permits the conclusion that it is necessary for an informed user of the product in which the contested design is incorporated to know the earlier design when it is incorporated in a product in an industry sector that differs from the relevant sector for the contested design, or is applied to such a product. In terms of a design’s individual character, the Court concluded that, the sector concerned is relevant for the purpose of assessing the individual character, within the meaning of Article 6 of Regulation No 6/2002, of a design.

(for the designs’ registered images see the link provided hereafter)

• Judgment of 13 June 2017, T-9/2015, Ball Beverage Packaging Europe Ltd v EUIPO

Ball Europe GmbH is the holder of a Community design with respect to ‘beverage cans’. In the context of the application for registration of the contested design with the EUIPO, Ball Europe claimed the priority of two German designs. In 2011, the intervener, Crown Hellas Can SA, filed an application for a declaration of invalidity of the contested design with EUIPO. on the grounds of invalidity under article 25(1)(b) of Regulation No 6/2002 in so far as the contested design was not new for the purposes of Article 5 of that regulation and did not have individual character for the purposes of Article 6 of that regulation.  The Cancellation Division rejected the application for a declaration of invalidity of the contested design on the ground that the latter had the required novelty and individual character. The decision was appealed and the Third Board of Appeal of EUIPO annulled the decision of the Cancellation Division and declared the contested design invalid on the ground that it had no individual character within the meaning of Article 6 of Regulation No 6/2002. It did not rule on the novelty of that design. Moreover, in the context of the assessment of the individual character of the contested design, the Board of Appeal concluded that the differences between the contested design and the earlier designs were insignificant and had no impact on the overall impression of the informed user who, in the present case, had been defined as persons who, in the drinks industry, are responsible for bottling.

The applicant, Ball Beverage Packaging Europe, raised a plea in law, the alleging an infringement of the combined provisions of Article 25(1)(b) and Article 6 of Regulation 6/2002. While assessing the individual character of the contested design, the General Court held that the individual character of a design results from an overall impression of difference or lack of ‘déjà vu’, from the point of view of an informed user, in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions.

As regards the informed user’s level of attention, the General Court repeated the characteristics of the user described in the PepsiCo v Grupo Promer and added that in the present case, and in relation to the notion of overall impression, the relevant comparison is that not between the three cans, which are admittedly of differing sizes (that is to say, capacities), represented in the contested design, but that between those three cans and the cans represented in the earlier designs. Moreover, it should be noted that that comparison is between the overall impression produced by the three cans represented in the contested design and the overall impression produced by the cans represented in the earlier designs and not between isolated characteristics. It should moreover be noted that neither the actual dimensions nor the capacity could be deduced from the representation of the cans in the contested design, as is furthermore correctly stated by the Board of Appeal in paragraph 37 of the contested decision. Moreover, the Court clarified that the bottler, who is the informed user in the present case, takes into account the size,of a can in the course of his activity, that fact does not affect, in the present case, the comparison of overall impressions produced by the designs being compared, in light of the fact that all the cans present similar characteristics. That article also shows that the size and shape of a can are of particular importance for an informed user.

(for the designs’ registered images see the link provided hereafter)

• Judgment of the Court of 3 October 2014, T-39/13, Cezar Przedsiębiorstwo Produkcyjne Dariusz Bogdan Niewiński v OHIM

On 1 September 2003, the applicant — Cezar Przedsiębiorstwo Produkcyjne Dariusz Bogdan Niewiński — submitted an application for registration of a Community design to the Office for Harmonisation in the Internal Market, intended to be applied in ‘skirting boards’.  On 11 September 2007, the intervener — Poli-Eco Tworzywa Sztuczne sp. z o.o. — filed an application with OHIM for a declaration of invalidity with regard to the design in question. The ground relied on in support of that application was that set out in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4, 5 and 6 of that regulation. By decision of 31 May 2010, the Cancellation Division of OHIM upheld the application for a declaration of invalidity, on the ground that the contested design was not new in relation to an earlier design owned by the intervener. On the Appeal that followed, the Third Board of Appeals dismissed the appeal and held that the contested design was part of a complex product as defined in Article 3(c) of Regulation No 6/2002 and that the only visible part of that design during normal use was the flat surface of its base part. Since the flat surface of the contested design was the same as the flat surface of Design D1, the Board of Appeal concluded that the two designs were identical and that, consequently, the contested design was not new.

Cedar applied at the General Court asking the annulment of the above decision alleging respectively infringement of Article 25(1)(b) of Regulation No 6/2002; infringement of Article 63(1) of that regulation; and infringement of Article 62 of that regulation.

The General Court held that indeed the design was a component of a complex product and explained that from the outset that it is essential to determine whether the contested design constitutes a component part of a complex product because, under Article 4(2)(a) and (b) of Regulation No 6/2002, in the case of component parts of complex products, the only features that need be taken into account in a comparison of the designs in question are those that are visible during normal use.

In assessing the visible features during normal use of the product, the General Court held that under Article 4(2)(a) of Regulation No 6/2002, a design which constitutes a component part of a complex product is not to be considered to be new or to have individual character unless that component part, once it has been incorporated into the complex product, remains visible during normal use of the latter. It follows that it would be impossible to protect the use of the design as an attachment to the back part of a skirting board and, in consequence, that use cannot be taken into account in the present case. Thus, the visibility of the contested design’s features must be assessed solely in the context of its use as an insert to cover a recess in a skirting board or wall.

Regarding the design’s novelty and individual character, the Court held that since a design constituting a component part of a complex product which is not visible during normal use of that complex product cannot be protected under Article 4(2)(a) of Regulation No 6/2002, it must be held, by analogy, that the novelty and individual character of a Community design cannot be assessed by comparing that design with an earlier design which, as a component part of a complex product, is not visible during normal use of that product. Therefore, the criterion of visibility as set out in recital 12 to Regulation No 6/2002 and recalled in paragraph 40 above applies to the earlier design. OHIM also acknowledged at the hearing that the same criteria had to be applied to both the designs at issue.

(for the designs’ registered images see the link provided hereafter)

• Judgment of 9 September 2014, T-494/12, Biscuits Poult SAS v OHIM

In 25 March 2009, the applicant Biscuits Poult SAS, filed an application for registration of a Community design with the OHIM intended to be applied to ‘cookies’. In 2010, the intervener, the Banketbakkerij Merba BV applied to OHIM for a declaration that the contested design was invalid pursuant to Article 25(1)(b) of Regulation No 6/2002. In its application for a declaration of invalidity, the intervener alleged that the contested design was not new and had no individual character and that its appearance was dictated by its technical function within the meaning of Articles 5, 6 and 8 of Regulation No 6/2002. The Cancellation Division of OHIM dismissed the application for a declaration that the contested design was invalid and the Board of Appeal of OHIM declared the contested design invalid pursuant to Article 25(1)(b) of Regulation No 6/2002 on the ground that it lacked individual character within the meaning of Article 6 of that regulation.

With its application to the General Court Biscuits Poult SAS claimed that the Court should annul the decision of the Board of Appeal on the grounds that the design has individual character and it is not a complex product and therefore the inside filling is not a component of the product.

The General Court held that a cookie such as the one portrayed in the contested design is not a complex product within the meaning of Article 3(c) of Regulation No 6/2002 because it is not composed of multiple components which can be replaced permitting disassembly and re-assembly. Consequently, the characteristics of the contested design which may be protected must be determined by reference to the rules referred to in paragraphs 18 to 20 above, which, in respect of products which are not components which may be assembled in a complex product within the meaning of Article 3(c) of Regulation No 6/2002, do not refer to the concept of ‘normal use’, but rather to the appearance of the product within the meaning of Article 3(a) thereof.

The Court continued that the irregular, rough surface on the outside of the cookie, its golden colour, round shape and the presence of chocolate chips are characteristics which are common to the conflicting designs and decisive for the overall impression produced on an informed user, so that the contested design cannot be regarded as having individual character. The smoother surface of the contested design as compared to the earlier designs above, together with the differences relating to the number, specific dimensions and somewhat prominent presence of the chocolate chips on each of those designs and on the contested design do not confer individual character on the latter. In fact, given the designer’s considerable freedom, those differences are not liable to produce a different overall impression on an informed user, in such a way as to benefit the contested design.

((for the designs’ registered images see the link provided hereafter)