2 Cecilia Wikström Chair: Théophile Margellos Dr. Catherine JeneweinFormer Legal Secretary to Judge Azizi, General Court, Court of Justice of the European Union; Patent Lawyer, European Patent OfficeProf. Charles GielenNautaDutilh N.V.University of GroningenDr. iur. Henning HartwigBardehle PagenbergCecilia Wikström Chair: Théophile MargellosMember of European Parliament ChairpersonOHIM Boards of Appeal
3 Prior Art in Community Design Law The Concept of ReciprocityDr. Henning HartwigPartner, Bardehle Pagenberg
4 Article 6 (1) CDRA design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public (…) before the date of filing the application for registration or, if a priority is claimed, the date of priority.
5 Article 6 (2) CDRIn assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.
6 Article 6 (2) does not indicate “prior art” or “existing design corpus” (cf. Recital 14 CDR) Interaction between “individual character” and “degree of freedom of the designer”What is the response of the European Courts?
7 General Court“(…) the greater the designer’s freedom in developing the challenged design, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Conversely, the more the designer’s freedom in developing the challenged design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user.”
8 General Court“Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs which do not have significant differences produce the same overall impression on an informed user.”Kwang v Honda at 
9 General Court“As appears from the representations of engines produced by the intervener during the proceedings before OHIM and the General Court, there are designs for internal combustion engines in varying shapes and configurations which differ considerably from those used in the challenged design. Internal combustion engines exist in a wide variety of shapes and combinations of components, as the informed user of such an engine, who has some knowledge of the relevant industrial sector, is aware. Kwang v Honda at 
10 General Court“Since the positioning and shape of the components of an internal combustion engine are not limited by any particular technical necessity, the designer’s degree of creativity with respect to such internal combustion engines is not limited. It follows that the Board of Appeal has not committed an error in holding that the designers of internal combustion engines enjoy a high degree of freedom in the development of designs relating to those internal combustion engines including the challenged design.” Kwang v Honda at 
11 “Degree of freedom of the designer” to be completed by the “existing design corpus” or “prior art” Interaction between “degree of freedom of the designer” and finding “different overall impression”“Same overall impression” (+) if designs do not have “significant differences“ (in case of high degree)
12 Some open questions What is the meaning of “significant differences“? What is the test in case of a low degree of freedom?Is the existing design corpus limited to the indication ofproduct of the challenged Community design?Is the existing design corpus limited in time (only disclosureprior to the application date)?
13 Article 10 (1) CDRThe scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.
14 Article 10 (2) CDRIn assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
15 Is it likely that the General Court and/or Court of Justice will confirm the reciprocity test also in view of Article 10?Court of Justice in “Grupo Promer”: No mentionGeneral Court in “Grupo Promer”: No mention
16 German Federal Supreme Court “A great concentration of designs and, thus, only little freedom of the designer will lead to a narrow scope of protection of the design so that minor differences in appearance may produce a different overall impression on the informed user. In contrast, a low concentration of designs and, therefore, a great freedom of the designer will lead to a broad scope of protection of the design so that even major differences in appearance may not produce a different overall impression on the informed user.”Pram I at 
17 Austrian Supreme Court “By applying consistent terminology for both the scope of protection and the individual character, the Regulation gives rise to parallel criteria: A high degree of individual character allows a large scope of protection whereas a low degree of individual character only permits a limited scope of protection. If the informed user is willing to confirm individual character in case of minor differences between the prior and the Community design, he must likewise confirm non-infringement in case of such differences between the asserted and the accused design.” Sprayer
18 Concept of Reciprocity? (+) Interaction between prior art and validity of a Community design(+) Interaction between prior art and scope of protection of aCommunity design(+) Interaction between prior art and infringement of a Communitydesign(?) Interaction between validity, scope of protection and infringementof a Community design?