Recent case law on designs Dr. Jur. Théophile M. Margellos Chairperson of the First & Third Boards of Appeal 11th Liaison Meeting on Designs, 19-20 November 2012
Recent case law on designs Statistics
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
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
Recent case law on designs Case C-488/10 P Published: 7 May 2008 Products: ‘Beacons’ Published: 13 December 2005 Products: ‘Road signs’ RCD No 000 421 649-0001 Filing date: 26 October 2005 Holder: Celaya Emparanza y Galdós Internacional SA (Cegasa) RCD No 000 915 426-0001 Filing date: 11 April 2008 Holder: Proyectos Integrales de Balizamiento SL (PROIN)
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 000421649‑0001. PROIN opposed the infringement proceedings arguing that Cegasa lacks locus standito 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.
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?
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’.
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.
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.
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.
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
Recent case law on designs ‘Personnageassis’(Sitting figure) Registered on 7 November 2000 For distinguish ‘clothing’ and other goods in classes 25, 28 and 32 CD No 000426895-0002 Application for declaration of invalidity (18 February 2008) CD No 1312651 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 –)’
Recent case law on designs ‘Personnageassis’(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 2010 Decision annulled (creates different overall impression Appeals 28 February 2011 Invalidity applicant/OHIM CJEUJudgment of 18 October 2012, C-101/11P and C-102/11 P Appeals dismissed
Recent case law on designs ‘Personnageassis’(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.
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  ECR I-10053, paragraph 52, and Case , C-281/10 P PepsiCo V GrupoPromer Mon Graphic  ECR I-0000, paragraph 66)
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).
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)
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).
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
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.
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)
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)
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)
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)
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.
R 1323/2008-3BoA Decision of 14 October 2009 ‘Personnageassis’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.
R 1323/2008-3BoA Decision of 14 October 2009 ‘Personnageassis’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.
Case T-513/09 Judgment of 16 December 2010 ‘Personnageassis’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 thefeelings 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
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
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 000 593 959-0001 Filing date: 25 September 2006 Products: ‘Radiators for heating’ Invalidity application No ICD 5312 German design No 5 contained within multiple registration No 40 110 481.8 Published: 10 September 2002
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).
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), whichis 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.
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.
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’
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’
Recent case law on designs BoA case law
Discrepancy between the designs applied for and the document evidencing the priority
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) 001699927-0001 001699927-0002 Products: Lens for LED (light-emitting diode)
BoA, 6 June 2011 R 222/2011-3, Lens for LED (light-emitting diode) In the application, priority of the Japanese application No 2009-025528 (see below) filed on 30/10/09 was claimed in respect of 001699927-0001
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. Article4(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;
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 001 699 927-0001) and 2.5 (Longitudinal section along the center line of the left side view No 001 699 927-0002 below: 1.4 2.5
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).
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.
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.
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
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.
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.
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.
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 001 699 927-0001 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.