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Recent case law on designs

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1 Recent case law on designs
Dr. Jur. Théophile M. Margellos Chairperson of the First & Third Boards of Appeal 11th Liaison Meeting on Designs, November 2012

2 Recent case law on designs
Statistics

3 Recent case law on designs
Summary CJEU case law Judgment of 16 February 2012 Judgment of 18 October 2012 Judgment of 13 November 2012 BoA case law Discrepancy between design applied for and document evidencing the priority Designer’s degree of freedom in developing the design Informed user Disclosure

4 Recent case law on designs CJEU judgment of 16 February 2012
Case C-488/10 P Reference for a preliminary ruling under Article 267 TFEU concerning interpretation of Article 19(1) of Regulation No 6/2002

5 Recent case law on designs
Case C-488/10 P Published: 7 May 2008 Products: ‘Beacons’ RCD No Filing date: 26 October 2005 Holder: Celaya Emparanza y Galdós Internacional SA (Cegasa) Published: 13 December 2005 Products: ‘Road signs’ RCD No Filing date: 11 April 2008 Holder: Proyectos Integrales de Balizamiento SL (PROIN)

6 Recent case law on designs
Case C-488/10 P The dispute in the main proceedings Cegasa has brought proceedings before the Juzgado de lo Mercantil n° 1 de Alicante alleging infringement of its RCD, claiming that the offering, promoting, advertising, stocking, marketing and distributing of the H‑75 signalling device by PROIN constitute a breach of the rights conferred on it by the Regulation as holder of registered Community design No ‑0001. PROIN opposed the infringement proceedings arguing that Cegasa lacks locus standi to bring proceedings alleging infringement of its RCD because the marker marketed by PROIN is a reproduction of a Community design that is also registered. It thus argued that, until such time as the registration of that design is cancelled, its holder enjoys a right of use under the Regulation, so that the exercise of that right cannot be deemed to be an infringement.

7 Recent case law on designs
Case C-488/10 P The question referred for preliminary ruling In those circumstances, the Juzgado de lo Mercantil n°1 de Alicante decided to stay the proceedings and refer the following question to the Court for a preliminary ruling: In proceedings for infringement of the exclusive right conferred by a registered Community design, does the right to prevent the use thereof by third parties provided for in Article 19(1) of [the] Regulation … extend to any third party who uses another design that does not produce on informed users a different overall impression or, on the contrary, is a third party who uses a later Community design registered in his name excluded until such time as that design is declared invalid?

8 Recent case law on designs
Case C-488/10 P Legal construction and answer CDR does not contain any rule which refers expressly to whether it is possible for the holder of an earlier registered Community design to bring infringement proceedings against the holder of a later registered Community design. It is clear that the wording of Article 19(1) of the Regulation does not make any distinction on the basis of whether the third party is the holder of a registered Community design or not. That provision states that a registered Community design is to confer on its holder the exclusive right to use it and to prevent ‘any third party’ not having his consent from using it. Similarly, Article 10(1) CDR provides that the scope of the protection conferred by a Community design is to include ‘any design which does not produce on the informed user a different overall impression’.

9 Recent case law on designs
Case C-488/10 P Legal construction and answer It is true that the holder of a later registered Community design also enjoys an exclusive right of use of his design. Nevertheless, that right must be construed in the light of the priority principle, under which the earlier registered Community design takes precedence over later registered Community designs. Conclusion CDR does not preclude the holder of a registered Community design from bringing infringement proceedings to prevent the use of a later registered Community design which does not produce on the informed user a different overall impression.

10 Recent case law on designs
Case C-488/10 P Legal construction and answer In that context the Court took also account of the substantive features of the procedure for the registration of Community designs which amounts to an essentially formal, expeditious check, which, as indicated in recital 18 of the preamble to the Regulation, does not require any substantive examination as to compliance with the requirements for protection prior to registration, and which, unlike the registration procedure under CTM Regulation does not provide for any stage during which the holder of an earlier registered design can oppose registration. In those circumstances, only an interpretation of the term ‘any third party’ within the meaning of Article 19(1) of the Regulation as encompassing the third party holder of a later registered Community design is capable of ensuring attainment of the objective of effective protection of registered Community designs pursued by the Regulation, as well as the effectiveness of infringement proceedings.

11 Recent case law on designs
Case C-488/10 P Legal construction and answer Answer: Article 19 (1) CDR must be interpreted as meaning that, in a dispute relating to infringement of the exclusive right conferred by a registered Community design, the right to prevent use by third parties of the design extends to any third party who uses a design tat does not produce on informed users a different overall impression, including the third party holder of a later registered Community design.

12 Recent case law on designs CJEU judgment of 18 October 2012
Cases C-101/11 P & C-102/11 P Appeal – Scope of judicial review – Overall impression – Degree of freedom of the designer – Informed user

13 ‘Personnage assis’ (Sitting figure)
Recent case law on designs ‘Personnage assis’ (Sitting figure) Registered on 7 November 2000 For distinguish ‘clothing’ and other goods in classes 25, 28 and 32 CD No Application for declaration of invalidity (18 February 2008) CD No Filed on 7 November 2005 Registered on 27 December 2005 For ‘T-shirts (ornamentation for –), caps (vizored –) (ornamentation for –), stickers (ornamentation for –), printed matter, including advertising materials (ornamentation for –)’

14 ‘Personnage assis’ (Sitting figure)
Recent case law on designs ‘Personnage assis’ (Sitting figure) Cancellation Division Decision 15 July 2008 Action upheld/design invalidated (Art. 25(1)(e)CDR) Notice of Appeal 16 September 2008 Holder of CD Board of Appeal Decision E-1323/2008-3: 14 October 2009 Invalidity confirmed but on the basis of Art. 25(1)(b), 6(1) CDR (no individual character) Action for annulment 22 December 2009 Holder of CD General Court EU Judgment T-513/09: 16 December Decision annulled (creates different overall impression Appeals 28 February Invalidity applicant/OHIM CJEU Judgment of 18 October 2012, C-101/11P and C-102/11 P Appeals dismissed

15 ‘Personnage assis’ (Sitting figure)
Recent case law on designs ‘Personnage assis’ (Sitting figure) Judgment of 18 October 2012, C-101/11 P and C-102/11 P Question 1: Verify whether the General Court exceeded the limits of its review and substituted its own assessment for that of OHIM. Question 2: Verify whether the GC committed an error in law when comparing the earlier mark and the contested registered design Definition of the informed user Method of comparison Examination limited to a part of the public (children) Facial expression that determines the overall impression of the earlier TM and of the contested CD.

16 Recent case law on designs
Question 1: Scope of the legality review Under Article 61(2) CDR, an action may be brought before the General Court against decisions of the Board of Appeal for infringement of the Treaty, of the Regulation or of any rule of law relating to their application. It follows that the General Court has jurisdiction to conduct a full review of the legality of OHIM’s assessment of the particulars submitted by an applicant (see judgment of 5 July 2011, C-263/09 P, Edwin v OHIM [2011] ECR I-10053, paragraph 52, and Case , C-281/10 P PepsiCo V Grupo Promer Mon Graphic [2011] ECR I-0000, paragraph 66)

17 Recent case law on designs
Question 1: Scope of the legality review Accordingly, the General Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing its application of European Union law, having regard, in particular, to the facts which were submitted to them (paragraph 38).

18 Recent case law on designs
Question 1: Scope of the legality review The GC can carry out a full review of the legality of the decisions of the Board of Appeal, if necessary examining whether these boards have made a correct legal classification of the facts of the dispute or whether their assessment of the facts submitted to them was flawed (paragraph 39)

19 Recent case law on designs
Question 1: Scope of the legality review Where it is called upon to assess the legality of a decision of the Board of Appeal, the GC cannot be bound by an incorrect assessment of the facts by that board, since that assessment is part of the finding whose legality is being disputed before the GC (paragraph 40).

20 Recent case law on designs
Question 1: Scope of the legality review Nevertheless, where OHIM is called upon to perform highly technical assessments, the GC may restrict itself, in terms of the scope of its review of the Board of Appeal’s decision in industrial design matters, to an examination of manifest errors of assessment (paragraph 41). The GC may, therefore, afford OHIM’s Board some latitude

21 Recent case law on designs
Question 1: Scope of the legality review However, in the present case, OHIM has not established that the assessment in question required highly technical assessments that justify the recognition of some latitude, such that the scope of the General Court’s review is limited to manifest errors.

22 Recent case law on designs
Question 2: Alleged error in law Definition of the informed user The CDR does not include a definition of the concept of ‘informed user’ that it applies. However, that concept must be understood as lying somewhere between that of the average consumer, applicable in trademark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks at issue, and the sectorial expert, who is an expert with detailed technical expertise. Thus, the concept of the ‘informed user’ may be understood as referring, not to a user of an average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question (paragraph 53)

23 Recent case law on designs
Question 2: Method of Comparison It is true that the very nature of the informed user, as defined by the Court, means that, 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 of the characteristics of the items which the earlier mark and the contested design represent (paragraph 55)

24 Recent case law on designs
Question 2: Method of Comparison Therefore, the GC 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 (paragraph 55)

25 Recent case law on designs
Question 2: Method of Comparison 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 design to a direct comparison (paragraph 56)

26 Recent case law on designs
Question 2: Method of Comparison It follows that, when comparing the earlier mark and the contested design, the General Court did not err in law by basing its reasoning on the informed user’s imperfect recollection of the overall impression produced by the two silhouettes.

27 ‘Personnage assis’ Informed user
R 1323/ BoA Decision of 14 October 2009 ‘Personnage assis’ Informed user BoA decision: The informed user is a person who usually makes use of the class of product within which the contested Community design is incorporated. However, said person is better informed than an average person concerning said class of goods by reason of the fact that the former has a certain interest in the goods, has visited stores selling said class of goods, or has read publications (magazines, advertising leaflets, information on the Internet, etc.) concerning said class of goods. The informed user of T-shirts and caps is someone who customarily purchases this type of article, that is to say young people, in the main. Stickers target a rather younger public, which collects stickers or uses them to personalise objects such as backpacks, exercise books, etc. The informed user of ‘printed matter, including advertising materials’ may correspond to a variety of profiles: collectors of picture cards, readers of comic books, etc.

28 R 1323/2008-3 BoA Decision of 14 October 2009
‘Personnage assis’ Informed user BoA decision: There is a difference of the expression on the figures’ faces, but it is one that has little adverse effect on the overall impression produced by the two designs on the informed user. In the opinion of the Board, the overall impression is generated more by the way in which a figure and the latter’s general features are represented than by facial expression, which is very variable: the same figure may perfectly easily have a calm expression and, shortly afterwards, an angry expression. It is not the facial expression that will have an impact on the informed user but, as just mentioned, the technical way in which the drawing is depicted and the general appearance of the figure: the single line, the fact that the figure is facing to the right, the rounded drawing, the round, black eyes gazing downwards, the sharply pointed head, and the seated position with one leg bent and the other extended. Despite the differences that exist between the two designs, the Board finds that the subsequent design does not produce, on the informed user, an overall impression that differs from that produced by the design disclosed earlier.

29 ‘Personnage assis’ Overall impression
Case T-513/09 Judgment of 16 December 2010 ‘Personnage assis’ Overall impression The overall impression is to a large extend determined by the figure’s facial expression The figure’s facial expression constitute a fundamental characteristic which will be kept in memory by the informed user That expression, together with the position of the body giving the impression of certain degree of irritation by its leaning out at front will lead the informed user to identify the earlier design invoked in support of the application for invalidity, as of an agitated person, which he will retain in his memory after visualising that design. On the other hand, the global impression created by the contested design is not characterised by the manifestation of a sentiment of any kind, whether in the facial expression or in the position of the body that is inclined backwards The difference in the facial expression will be apparent to the young persons buying T-shirts and caps. It will be more important to children using stickers to personalise objects, who are more disposed to paying greater attention to the feelings expressed by characters on such stickers The facial expression combined with the different position of the body are sufficient for creating a different overall impression on the informed user BoA’s decision annulled

30 Recent case law on designs GC judgment of 13 November 2012
Cases T-83/11 & T-84/11 Invalidity proceedings – Individual character – Informed user – Overall impression

31 Recent case law on designs
Cases T-83/11 & T-84/11 BoA’s decision of 2 November 2010 in Cases R 1451 & 1452/2009-3 RCD No Filing date: 25 September 2006 Products: ‘Radiators for heating’ Invalidity application No ICD 5312 German design No 5 contained within multiple registration No Published: 10 September 2002

32 Recent case law on designs
Cases T-83/11 & 84/11 Cancellation Division’s finding: The designs under comparison are identical owing to the presence in both designs of the same construction details (rectangular pipes, cylindrical collectors, spaces between the pipes), and that the ‘differences [are] so minimal that they can be qualified as immaterial’ (lack of novelty). BoA’s finding: The differences emphasised by the owner relating to (i) the ratio between the frontal size and lateral size of the pipes, (ii) the ratio between the frontal dimension of the pipes and the dimension of the space between one pipe and the next, and (iii) the ratio between collector diameter and pipe depth, even when taken altogether, cannot be considered ‘significant’ enough, in the eyes of an informed user, to change the overall impression produced by the two designs (lack of individual character).

33 Recent case law on designs
Cases T-83/11 & 84/11 GC’s finding: BoA failed to take into consideration the factor of ‘density (saturation) of the sate of art’ (saturation, encombrement de l’état de l’art), which is relevant for the evaluation of the degree of attention of the informed user and the perception by it of the differences between the designs in question.

34 Recent case law on designs
Cases T-83/11 & 84/11 The applicant had brought, before the Cancellation Division as well as before the Boards, the argument according to which the commercial area of radiators with collectors (drains) would be saturated with designs, having as a consequence that the differences in the internal proportions of the designs in question, far from being considered as not significant in comparison with the common points linked to said designs, would be, to the contrary, immediately noticeable by the informed user and would therefore create different overall impressions. The response that the freedom of the designer was not limited by technical or statutory constraints did not reply at all to the question of whether de facto a situation of density would render the informed user more sensitive towards the differences in the internal proportions within these different designs.

35 Recent case law on designs
Cases T-83/11 & 84/11 In the case of the ‘Communication equipment’ the argument of the applicant has been, in substance, that the freedom of the designer would have been limited by, in particular, the concern of being in line with a general trend in the field of design (ruling ‘Communication equipment’, point 52, in fine). The Court has rejected this claim, pointing out that the general trend in the field of design is relevant, at the most, in relation to the aesthetic perception of the design concerned that may therefore possibly influence the commercial success of the product the design is incorporated in (ruling ‘Communication Equipment’, point 58). Reference to judgment of 22 June 2010, T-153/08, ‘Communication Equipment’

36 Recent case law on designs
Cases T-83/11 & 84/11 In doing so, the Court has merely refused that a general trend in the field of design could be considered as a limitation factor for the designer’s freedom, since it is precisely the freedom of the designer which permits him to discover new forms, new trends, or innovate within the frame or an existing trend. In the ruling of the ‘Communication equipment’ the Court did not want to declare that a situation of density in the state of art would have to be considered as lacking of relevance for the appreciation of the individual character of a design. It has, at the most, excluded from the appreciation of the individual character all consideration regarding the aesthetics of an examined design or of the commercial success of the product the design is incorporated in (see in this sense ruling ‘Communication Equipment’, point 58 in fine). Reference to judgment of 22 June 2010, T-153/08, ‘Communication Equipment’

37 Recent case law on designs
BoA case law

38 Discrepancy between the designs applied for and the document evidencing the priority

39 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode)
Applicant applied for the following designs: (filing date 26/04/2010) Products: Lens for LED (light-emitting diode)

40 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode)
In the application, priority of the Japanese application No (see below) filed on 30/10/09 was claimed in respect of

41 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode)
The examiner informed the applicant that the representations were deficient insofar as they did not conform to Article 4(1)(c) CDIR because they contained explanatory text, and wording which were clearly not part of the design. The examiner invited the applicant to remedy the deficiencies by submitting the same views with the additional elements deleted. Article 4(1)(c) CDIR 1. The representation of the design shall consist in a graphic or photographic reproduction of the design, either in black and white or in colour. It shall meet the following requirements: (c) … no explanatory text, wording or symbols, other than the indication "top" or the name or address of the applicant, may be displayed thereon;

42 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode) - FACTS
The applicant re-submitted the representations with the explanatory text deleted and also asked the Office to add the figures 1.4 (Longitudinal section along the center line of the front view of design No ) and 2.5 (Longitudinal section along the center line of the left side view No below: 1.4 2.5

43 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode) - FACTS
The examiner refused the additional views on the ground that the representation could not be amended or changed Only the applicant’s name and address, errors of wording or of copying, or obvious mistakes could be corrected, provided that such a request did not change the representation of the design (Article 12(2) CDIR).

44 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode) - FACTS
Conclusion: The RCD was registered but the additional views (1.4 and 2.4) were not included. The RCD holder unsuccessfully contended that the additional views did not change the design because they were merely cross-sectional views already in the priority application.

45 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode) - FACTS
The judgment of 15 November 2001 in T-128/99 TELEEYE / TELEYE applies mutantis mutandis Facts The trade mark for which registration was sought, as shown in the application form, was the word TELEYE. Subsequently, a request for correction of that mark was made. The claim of priority accompanying the application for the Community trade mark and recorded on the form on which the trade mark application was made, referred to the application for the trade mark TELEEYE filed in the United States on 20 January 1998.

46 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode) - FACTS
The judgment of 15 November 2001 in T-128/99 TELEEYE / TELEYE applies mutantis mutandis Facts The applicant alleged that a typographical error had been made in its application for the Community trade mark and requested that it be corrected to show the mark TELEEYE instead of TELEYE to accord with the trade mark application made in the United States on the basis of which it claimed priority. Correction was refused because it substantially changed the trade mark

47 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode)
Case T-128/99 judgment of 15 November 2001 TELEEYE / TELEYE Court’s findings: The right of priority thus confers upon the applicant for a limited period of time immunity from the effects of any other applications for registration of the same trade mark that may be made by third parties during the priority period.

48 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode)
Case T-128/99 judgment of 15 November 2001 TELEEYE / TELEYE The request for correction is directly linked to the claim of priority in the sense that the correction is intended to make the spelling of that mark coincide with that of the mark applied for earlier, this being clear from a comparison of the two marks as they are shown in the form of application for the Community trade mark and in the trade mark application relied on for the purpose of claiming priority, both of which were filed at the Office, and from the observations submitted to the Office by the applicant. That factor is one which must be taken into account in construing the requirement, mentioned above, that the amendment should not substantially change the trade mark.

49 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode)
Case T-128/99 judgment of 15 November 2001 TELEEYE / TELEYE It follows from the nature of the error in point and the applicant's clear intention to register the same mark as that on which it relies for the purpose of claiming priority, that the correction sought is in no way abusive and does not entail substantial alteration of the trade mark.

50 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode) - BoA
BoA’s findings: The fact that the request for correction was directly linked to a priority claim for the design No showed that there was a clear intention to register the same design as in the priority document That factor must be taken into consideration in construing the requirement that the amendment should not substantially change the representation of the design.

51 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode) - BoA
BoA’s findings: It results from the nature of the error in point and the applicant’s clear intention to register the same design as that on which it relies for the purpose of claiming priority, that the correction sought is in no way abusive and does not entail a substantial alteration of the application for registration of Community design No The examiner had not taken account of the effect the priority claim could have on the analysis of whether there would be a substantial amendment

52 BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode) - BoA
BoA’s findings: However, these considerations did not apply to the correction request in respect of RCD , for which no priority claim had been made. Contested decision annulled in so far as it refused the amendment in respect of the RCD No

53 The designer’s degree of freedom in developing his design

54 The designer’s degree of freedom in developing his design
Article 6(2) CDR: 2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

55 The designer’s degree of freedom in developing his design
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. 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 (judgment of 9 September 2011, T‑10/08 ‘internal combustion engine’, para. 33).

56 The designer’s degree of freedom in developing his design
The designer’s degree of freedom in developing his design is established, 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 (judgments of 9 September 2011, T‑10/08, ‘Internal combustion engine’, para. 32; and of 18 March 2010, T‑9/07, ‘Metal rappers’, para. 67).

57 The designer’s degree of freedom in developing his design
Case R 2194/2010-3 BoA decision of 14 June 2012 ROCKING-CHAIRS RCD No Invalidity application No ICD 7052 Filing date: 20/12/06 Japanese design patent publication JP (D1) Products: rocking-chairs Products: rocking-chairs

58 The designer’s degree of freedom in developing his design
Case R 2194/2010-3 BoA decision of 14 June 2012 ROCKING-CHAIRS In relation to rocking-chairs the freedom of the designer is limited to the extent that they must be functional, i.e. they must at least include a seat with a back rest and be construed in a way that allows the user of the chair to rock. However, as regards the size and shape of the seat, the construction of the chair and the materials used, the designer’s freedom is almost unlimited.

59 The designer’s degree of freedom in developing his design
Case R 2194/2010-3 BoA decision of 14 June 2012 ROCKING-CHAIRS Appellant’s argument: the freedom of the designer is limited in that the two-ring structure is the only known solution to the problem of providing a support structure for a foldable lounge rocking chair. Rejected. Application of the conflicting designs is not limited to foldable rocking-chairs. The functional requirement of a rocking-chair is, in principle, fulfilled by any structure that allows for the user of the chair to rock. This requirement is not only met by a ring structure but by any sort of curved structure, like, for example, skids. Overall, the degree of freedom of the designer of rocking-chairs therefore must be considered as high.

60 The designer’s degree of freedom in developing his design
Case R 2194/2010-3 BoA decision of 14 June 2012 ROCKING-CHAIRS The contested RCD and the prior design show the appearance of a rocking-chair and have the following two features in common: a dark seat in the form of a rectangle long enough to accommodate the entire body; a pair of intertwined rings of lighter colour that are connected at an angle of slightly over 90° and that support the seat.

61 The designer’s degree of freedom in developing his design
Case R 2194/2010-3 BoA decision of 14 June 2012 ROCKING-CHAIRS In the overall impression produced by the designs, the similarities relate to the essential features of a rocking-chair, namely the chair and its supporting structure. Apart from the minor technical constraints, namely that the chair must be construed in a way as to allow its user to rock, they are features in respect of which the designer was free to develop the contested design. The combination of a long rectangular seat with a two-ring structure lends the designs under comparison their characteristic appearance; it is very noticeable in the overall impression and will attract the informed user’s attention.

62 Case R 953/2011-3, RADIATORS FOR HEATING
The designer’s degree of freedom in developing his design Case R 953/2011-3, RADIATORS FOR HEATING BoA decision of 3 April 2012 It is certainly true that, in order to perform its primary function, a radiator for heating must have, at the very least, a set of pipes through which there circulates a liquid that, as it cools down, gives out heat to the surrounding air. However, this restriction does not have any significant impact on the configuration of the pipes themselves and, consequently, on the shape and general appearance of the radiator itself. In particular, the long, vertical and rectangular shape of the radiator and the rectangular cross section of the pipes do not appear necessary for guaranteeing any functional operation of the apparatus. With particular regard to the shape of the pipes, it is possible to envisage a wide variety of cross-sectional configurations The holder did not produce any evidence substantiating its assertion that technical or functional requirements considerably restrict the degree of freedom of the designer of a radiator for heating The Board considers that the degree of freedom of the designer can be defined as relatively wide

63 The designer’s degree of freedom in developing his design
RCD No Radiators for heating German design No 5 contained within multiple registration No Cases R 1451/ & 1452/2009-3, RADIATORS FOR HEATING BoA decision of 2 November 2010 BoA’s finding: According to the owner, in the present case, account has to be taken, for the purposes of assessing individual character, of the reduced degree of freedom of the designer (Article 6(2) CDR). However, the argument is not convincing. A variety of different section configurations can be imagined for, in particular, the radiator pipes, namely the constructive element that most influences the overall appearance of the object, as moreover the same owner demonstrates with the other designs that make up registration No 000 593 959. GC Judgment of 13 November 2012, T-83/11 & T-84/11 BoA was right in finding that the designer’s freedom was not reduced by technical constraints.

64 The designer’s degree of freedom in developing his design
Case R 979/2011-3 BoA decision of 11 June 2012 PORTABLE TRAFFIC WARNING SIGNS RCD No Invalidity application No ICD 7042 Filing date: 20/01/06 Earlier design JP (D1) Products: Portable traffic warning signs Products: Portable traffic warning signs

65 The designer’s degree of freedom in developing his design
Case R 979/2011-3 BoA decision of 11 June 2012 PORTABLE TRAFFIC WARNING SIGNS The appearance as well as most of the technical characteristics of the warning triangle, are determined by Regulation No 27 of the United Nations’ Agreement concerning the Adoption of Uniform Technical Prescriptions for Wheeled Vehicles, Equipment and Parts which can be Fitted and/or be Used on Wheeled Vehicles and the Conditions for Reciprocal Recognition of Approvals Granted on the Basis of these Prescriptions. Since all the Member States of the EU have signed the aforementioned Agreement, including the aforementioned Regulation No 27, also called ‘Uniform Provisions for the Approval of Advance-Warning Triangles’, the subject of the present invalidity proceedings, according to the Agreement, must look practically identical in all the Member States, as defined in Annex 3 of the Agreement: ‘Shape and Dimensions of the Advance-Warning Triangle and of the support’. Any warning triangle, different from the prescribed details will be banned from production and sale by the national authorities.

66 The designer’s degree of freedom in developing his design
Case R 979/2011-3 BoA decision of 11 June 2012 PORTABLE TRAFFIC WARNING SIGNS Conclusion: The aforementioned Provisions leave a very low margin of freedom to ‘design’ this safety product, limited to the surface pattern of the retro-reflecting strip (outer triangle), the edging between the triangles (which can be less than 5 mm in width), the fluorescent coating of the inner triangle and the legs which should provide stability. However, none of these details appear to be clearly visible on the drawings and photographs submitted. There is no recognizable surface pattern on the photos submitted—the edgings are not visible either—and even the back of both designs seems to follow the same technical solution, with only a slight difference in the width of the metallic frame. Under these circumstances it must be concluded that the contested design produces the same overall impression on the informed user as that produced by the earlier design, and that the contested design is not endowed by an individual character as required by Article 4(1) CDR.

67 The designer’s degree of freedom in developing his design
Case R 1137/2010-3, THE SHAPE OF A DOMESTIC CAT BoA decision of 23 September 2011 LOGOS RCD No Invalidity application No ICD 6484 Filing date: 27/03/07 International trade marks Bulletin (in 1970) Products: ‘Logos in Class 32 of the Locarno classification Goods: Sports equipment and clothing

68 The designer’s degree of freedom in developing his design
Case R 1137/2010-3, THE SHAPE OF A DOMESTIC CAT BoA decision of 23 September 2011 LOGOS LOGOS: In the field of logo design, the designer’s degree of freedom is broad; There are logos of all types, based on any theme, and of any colour, form, category, class, type, stylisation or shape; this is a known fact that does not need to be demonstrated. It is therefore evident that the designer of the Community design could have moved a lot further away from the earlier design

69 Informed user

70 CJEU, Judgment of 18 October 2012, Cases C-101/11 P and C-102/11 P
Informed user Definition The CDR does not include a definition of the concept of ‘informed user’ if it applies CJEU, Judgment of 18 October 2012, Cases C-101/11 P and C-102/11 P Personnage assis (sitting figure)

71 CJE, Judgment of 18 October 2012
Informed user CJE, Judgment of 18 October 2012 Definition That concept must be understood as lying somewhere between that of the average consumer, applicable in trademark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks at issue, and the sectorial expert, who is an expert with detailed technical expertise. Thus, the concept of the ‘informed user’ may be understood as referring, not to a user of an average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question (paragraph 53)

72 Profile of the informed user
Case R 171/ – BoA Decision of 23 September The shape of a domestic cat Profile of the informed user Logos may be used in a great number of different ways. As a result, the user of logos may be anyone: an entrepreneur, a manufacturer, a retailer, a bank, a public body, a political party, etc. This user must, however, be 'informed'. In other words, he must be someone who, without being a design expert, has acquired a certain amount of experience in the sector and has consulted documentation relevant to graphic design, logo overviews and the like, in their sector of interest. Given that the earlier design has been disclosed in the sports equipment and clothing sector (among other sectors), the impression produced by the contested logo on the informed user of logos used in this sector should be taken into consideration

73 Invalidity Application no ICD6187
Informed user Case R 171/2011-3, Signalling lights and roof lights for vehicles BoA decision of 25 May 2012 RCD no Filing date: 22 February 2008 Invalidity Application no ICD6187 Earlier RCDs Nos (D1) (D2) D1 D2

74 Roof lights for vehicles
Informed user Case R 171/2011-3 Roof lights for vehicles The overall impression of the design must be appreciated from the point of view of the ‘informed user’. Accordingly, this concept must be determined in the present case, on the basis of the product to which the design is to be applied according to the registration. The ‘user’ is the person who normally ‘uses’ a product, and according to the registration, the products are ‘signalling lights for vehicles’ and ‘roof lights for vehicles’. ‘Informed’ suggests that he is familiar with the basic characteristic elements of lightbars for vehicle roofs and aware of the various designs which exist in the sector, fitted to vehicles with characteristics which require such bars to be fitted (civil or military, local or national police vehicles, ambulances, military or civil firefighting vehicles, civil protection vehicles, doctors’ and other emergency service vehicles, among others).

75 Roof lights for vehicles
Informed user Case R 171/2011-3 Roof lights for vehicles The informed user in relation to whom the individual character of the CD must be measured is the one who purchases this type of product (that is, officers of the police force or other emergency services) with the intention of use, who has become an informed user by means of studying catalogues, visiting manufacturers in the sector or their commercial establishments, obtaining information over the internet, etc.

76 R 969/2011-3 BoA Decision of 27 April 2012
Informed user Overall impression R 969/ BoA Decision of 27 April 2012 Products: ‘Armchairs, loungers’ RCD No Filed on 14 May 2009 Application for declaration of invalidity ICD No 7147 RCD No Registered for ‘armchairs Published on 9 December 2003

77 Informed user Overall impression
R 969/ BoA Decision of 27 April 2012 Designer’s degree of freedom in developing his design The freedom of the designer of armchairs is almost unlimited since armchairs can take any combination of colours, patterns, shapes and materials. The only limitation for the designer consists in that armchairs must be functional, namely the must include at least a seat, a back rest and two armrests.

78 Informed user Overall impression
R 969/ BoA Decision of 27 April 2012 Overall impression Common features: The contested RCD and the prior design share numerous elements which are identical or at least strongly similar which are listed as follows: a rectangular overall structure including square-shaped frames as armrests; the heights of the frames are less than the widths; flat seats; flat vertical backrests; slightly separated juxtaposed rectangular plates on the seats; a board below the plates on each side of the armchairs; the armrests are on the same level as the upper limits of the backs of the armchairs; and the armrests are linked to the upper limits of the backs of the armchairs.

79 Informed user Overall impression
R 969/ BoA Decision of 27 April 2012 Overall impression – Differences Differences The contested RCD’s seat consists of four juxtaposed rectangular plates, while the prior design’s seat consists of three juxtaposed rectangular plates. The contested RCD’s back consists of two juxtaposed rectangular plates, while the prior design’s back consists of a single rectangular plate that covers 2/3 of the armchair’s back, leaving an open space/hole in the back of the chair at lumbar height. The contested RCD contains three cushions which are not present in the previous design

80 Informed user Overall impression
R 969/ BoA Decision of 27 April 2012 Overall impression In the absence of any specific constraint imposed on the designer, except for the rather minor one mentioned, the similarities noted above, all relate to elements in respect of which the designer was free to develop the contested design. All these similarities are very noticeable in the overall impression of the designs and will attract the informed user’s attention.

81 Informed user Overall impression
R 969/ BoA Decision of 27 April 2012 Overall impression The fact that the contested RCD contains, without taking into account the additional cushions, only the slight differences mentioned above, is considerably less striking than the overall impression given by the numerous identical and/or strongly similar elements mentioned. The overall impression of the designs is almost identical and the slight differences are hardly noticeable. The differences mentioned are enough for the contested RCD to survive the strict novelty test under Article 5 CDR but do not assist it in the framework of Article 6 CDR

82 Informed user Overall impression
R 969/ BoA Decision of 27 April 2012 Overall impression The ID’s decision concluded that the overall impression produced on the informed user by the contested RCD differs from the overall impression produced by the prior design, because the RCD includes three cushions absent in the prior design (without mentioning any other notable differences).

83 Informed user Overall impression
R 969/ BoA Decision of 27 April 2012 Overall impression In the opinion of the Board, the fact that the RCD contains three cushions absent in the prior design only has a marginal impact on the overall impression given by the designs. In the case at hand the prior design is easily discernible in the RCD. The cushions are a feature that the respondent added to the earlier version of the armchair. Even though the cushions have thus become an element of the design of the armchair, they are a relatively marginal one, in the sense that the armchair – with or without the cushions – produces on the informed user the same overall impression. There is no indication that the cushions would be a fixed element in the design, on the contrary, they are usually ones that can be easily separated from the main product.

84 Informed user Overall impression
R 969/ BoA Decision of 27 April 2012 Overall impression In fact, they are often even sold and bought separately and as they are elements which often deteriorate with time, the buyer often has the option of replacing them with new ones at, at least in comparison with the actual structure of the armchair, a relatively low cost. These factors decrease the importance that can be given to these components for the evaluation of the overall impression. The informed user will give far more importance to the overall impression of the structures of the armchairs.

85 Informed user Overall impression
R 969/ BoA Decision of 27 April 2012 Overall impression The Board takes the view that the contested design inevitably creates the same overall impression on informed users as the prior design since it reproduces all the essential characteristics of the latter and, in order to differentiate itself, in addition to making only very slight and hardly noticeable variations, simply adds another component – three cushions – which can be usually coupled to this type of product in the course of the latter’s customary usage (see also decisions of 16 March 2010, R 337/2008-3, ‘Reductores’, para. 15 and of 12 July 2011, R 1701/2010-3, ‘Vehicles (Toys)’, para. 28).

86 Informed user Overall impression
R 969/ BoA Decision of 27 April 2012 Overall impression It could even be argued that the informed user will perceive the cushions simply as an accessory, as they are not a fixed element but one that can be easily separated from the main product. The cushions could be seen as an optional accessory – i.e. something that anybody using the chair may decide to use or not – and therefore could hardly be qualified as ‘a significant part of the design’ (see also decisions of 26 March 2010, R 9/2008-3, ‘Footwear’, paras 102 and 103 and of 12 July 2011, R 1701/2010-3, ‘Vehicles (Toys)’, para. 27).

87 Disclosure

88 Disclosure Case R 1482/2010-3 BoA decision of 22 March 2011
INSULATION BLOCKS RCD No Invalidity application No ICD 5353 Filing date: 11 September 2003 German utility Model DE Products: Insulation Blocks Registered on 28 August and published on 20 October for ‘foamed insulating material

89 Decision of 22 March 2012 – R 1482/2009-3 – INSULATION BLOCKS
Disclosure Decision of 22 March 2012 – R 1482/ – INSULATION BLOCKS The invalidity applicant claimed that the design included in the German utility model was made available to the public via inspection of files from the date of registration of D1 and thus the date of registration is the date of disclosure in the meaning of Article 7 CDR; Article 7 CDR states that disclosures which «could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community» are excluded from the state of the art. Issue: Whether the presence of a document in a file kept by the GPTO, the file being available to the public only by means of inspection of files, could reasonably have become known in the normal course of business to the circles specialised in the sector concerned.

90 Decision of 22 March 2012 – R 1482/2009-3 – INSULATION BLOCKS
Disclosure Decision of 22 March 2012 – R 1482/ – INSULATION BLOCKS It would be possible to conduct a search in the register of rights and statuses of proceedings DPINFO on the basis of this data. However, this database merely contains bibliographic data and statuses of proceedings, but not the registration documents as such and, thus, also no drawings. Therefore, the only way that the actual drawings can be seen is by specifically asking for an inspection of each of the files; it is not a matter of routine in the ordinary course of business of the circles specialized and operating in the economic sector in question to conduct a search for registered, but not yet published utility models by inspecting the files of corresponding national office. there is no indication that an inspection of the files of D1 was requested by anyone after it was registered, but before it was published

91 Decision of 22 March 2012 – R 1482/2009-3 – INSULATION BLOCKS
Disclosure Decision of 22 March 2012 – R 1482/ – INSULATION BLOCKS Conclusion: The presence of a document in a file kept by the GPTO, the file being available to the public only by means of inspection of files, cannot reasonably be considered to have become known in the normal course of business to the circles specialised in the sector concerned and therefore, the evidence provided by the respondent cannot be considered to be sufficient to prove the disclosure of a prior design in the meaning of Article 7 CDR.

92 Thank you for your attention!


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