Recent case law related to designs Théophile M. Margellos

1. Recent case law related to designs Théophile M. Margellos Chairperson of the Third Board of Appeal

2. Metal rappers Recent case law on designs Filed on 17 July 2003 For ‘metal plates for games’ Claim of priority of Spanish design filed on 8 July 2003 CD No 74463-0001 Filed on 9 September 2003 For ‘promotional items for games’ Claim of priority of Spanish design filed on 23 July 2003 Application for declaration of invalidity (February 2004) CD No 53186-0001

3. Metal rappers Recent case law on designs Case law • Invalidity Division’s (ID) decision of 20 June 2005 (ICD 172): same overall impression • BoA’s decision of 27 October 2006 (R 1001/2005-3): different overall impression • General Court’s judgment of 18 March 2010 (T-9/07): same overall impression • Court’s judgment of 20 October 2011 (C-281/10P): holder’s appeal dismissed

4. Metal rappers Recent case law on designs Article 25(1)(d) CDR (as amended by Council Regulation (EC) No 1891/2006 of 18 December 2006, OJ EU L 386/14 of 29 December 2006) (Article 11(1)(a) of Directive 98/71/EC) ‘1. A Community design may be declared invalid only in the following cases: … (d) if the Community design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date.’ (i) by a registered Community design or an application for such a design, or (ii) by a registered design right of a Member State, or by an application for such a right, or …’

5. Metal rappers Recent case law on designs Article 25(1)(d) CDR • It appears designed to protect the position of an owner who files for a CD right or a national design right without making it available to the public and a third party then files a similar design prior to publication of the earlier application. • As the earlier application has not been published at the date the later application was filed, it does not form part of the ‘prior art’ for the purposes of assessing the validity of the later CD

6. Metal rappers Recent case law on designs Notion of ‘conflict’ with a prior design Not defined in the legislation • ID: A conflict arises where the CD produces on the informed user the same overall impression as the prior design • BoA: Definition confirmed – addition: A conflict would also exist if the two designs were identical with the meaning of Article 5 CDR.

7. Metal rappers GC’s judgment in case T-9/07 Article 25(1)(d) R 6/2002 Notion of conflict • For the purposes of the interpretation of Article 25(1)(d) of Regulation No 6/2002, it must be recalled that, in accordance with Article 10 of Regulation No 6/2002 in the case of a Community design, and Article 9 of Directive 98/71 in the case of a design registered in a Member State, the scope of the protection conferred by a design is to include any design which does not produce on the informed user a different overall impression and that, in assessing the scope of that protection, the degree of freedom of the designer in developing his design is to be taken into consideration.

8. Metal rappers GC’s judgment in case T-9/07 Article 25(1)(d) R 6/2002 Notion of conflict • Consequently, Article 25(1)(d) of Regulation No 6/2002 must be interpreted as meaning that a Community design is in conflict with a prior design when, taking into consideration the freedom of the designer in developing the Community design, that design does not produce on the informed user a different overall impression from that produced by the prior design relied on. The Board of Appeal was therefore correct to adopt such an interpretation. • That interpretation of Article 25(1)(d) of Regulation No 6/2002 is the only one which can ensure that the rights of the proprietor of a prior design that is referred to in that provision is protected against any infringement of the design resulting from the coexistence of a subsequent Community design that produces the same overall impression on the informed user.

9. Metal rappers GC’s judgment in case T-9/07 Definition of the product in which the design is intended to be incorporated or to which it is intended to be applied • Necessary for determining the informed user (informed user of what?) GC: In order to ascertain the product in which the contested design is intended to be incorporated or to which it is intended to be applied • the relevant indication in the application for registration of that design should be taken into account, but also, where necessary • the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function. Taking into account the design itself may enable the product to be placed within a broader category of goods indicated at the time of registration and, therefore, to determine the informed user and the degree of freedom of the designer in developing his design.

10. Metal rappers GC’s judgment in case T-9/07 Definition of the product • ID: had taken into consideration the category for which the contested design was registered: ‘promotional items’ • BoA: found that the products in question belonged, within the broad category of promotional items for games, to the particular category of game pieces, known as ‘pogs’; rappers, or ‘tazos’ • GC: Confirmed Boards’ finding: • An examination of the design shows that it belongs to a specific category of those promotional items • Submitted evidence shows that the design was intended to be incorporated in those specific promotional items for games

11. Metal rappers GC’s judgment in case T-9/07 The informed user • The expression ‘informed user’ appears three times in the Regulation (Recital 14, Articles 6 and 10) • It is therefore a legal construct of importance • Not defined in the Regulation

12. Metal rappers GC’s judgment in case T-9/07 The informed user • ID and BoA decisions: the informed user is the informed user of the product; a user which is familiar with the product that is subject of the design • Not ‘a person skilled in the art’, or a designer or an expert in the field • Nor is it a casual observer or an occasional user

13. Metal rappers GC’s judgment in case T-9/07 The informed user • GC: • Is neither a manufacturer nor a seller of the products • Is a particular observant user who has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design or, as the case may be, on the date of priority claimed.

14. Metal rappers Case C-281/10P The informed user Court: As the Advocate General correctly observed in points 43 and 44 of his Opinion, that concept must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral 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 average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.

15. Metal rappers Case C-281/10P The informed user Level of attention As regards the informed user’s level of attention, it should be noted that, although the informed user is not the well-informed and reasonably observant and circumspect average consumer who normally perceives a design as a whole and does not proceed to analyse its various details (see, by analogy, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraphs 25 and 26), he is also not an expert or specialist capable of observing in detail the minimal differences that may exist between the designs in conflict. Thus, the qualifier ‘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.

16. Metal rappers Case C-281/10P The informed user Who the informed user is will differ from product to product; the informed user of a product could be a number of different persons. BoA: • It could be a child in the approximate age range of 5 to 10 years, since the products are promotional items intended for young children. • Alternatively the informed user could be a marketing manager in a company that makes biscuits or potato snacks, since these are the typical products which are promoted by giving away small flat disks known in Spanish as tazos and in English as ‘rappers’ or ‘pogs’.

17. Metal rappers Case T-9/07 The informed user GC: The Board of Appeal was correct to find that the informed user could be a child in the approximate age range of 5 to 10 or a marketing manager in a company that makes goods which are promoted by giving away ‘pogs’, ‘rappers’ or ‘tazos’. In the present case, since the products to which the contested design is intended to be applied are ‘pogs’, ‘rappers’ or ‘tazos’, the informed user must be regarded as having some awareness of the state of the prior art thereof. In addition, since the game pieces are intended more specifically for children, the informed user may, as the Board of Appeal stated in the contested decision, be a child in the approximate age range of 5 to 10, which neither OHIM nor the intervener disputes. However, since the goods are also promotional items, in the present case the informed user could also be a marketing manager in a company that uses that type of goods in order to promote its own products.

18. Metal rappers Case T-9/07, para. 77 The informed user’s level of attention The imperfect recollection principle? GC: ‘As regards the similarities between the designs at issue, first, the Board of Appeal noted, at paragraph 22 of the contested decision, that both designs consisted of small discs that are almost flat. However, since, on the date of priority claimed for the contested design, that was a feature common to the designs for the goods of the type of product at issue, as noted by the Board of Appeal at paragraphs 18 and 20 of the contested decision, that similarity would not be remembered by the informed user in the overall impression of the designs at issue.’ • Indirect method of comparison based on an imperfect recollection.

19. Metal rappers Case T-9/07 • CTM’s: the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind • CD’s: ‘the similarity would not be remembered by the informed user in the overall impression of the designs’ (T-9/07 ‘metal rappers’) The informed user’s level of attention The imperfect recollection principle?

20. Metal rappers Case T-9/07 The informed user’s level of attention The imperfect recollection principle? • T-9/07 ‘metal rappers’ was appealed to the ECJ. The Advocate General stated on this point in his opinion of 12/5/11: • …the use of the words ‘would not be remembered’ – albeit a little infelicitous, perhaps – does not necessarily imply the idea that the comparison between the designs must be made on the basis of the ‘memory’ with which they leave the public. Reading those words in the context of the judgment actually demonstrates that, on the contrary, the GC’s reasoning is based on identifying those aspects capable of attracting the informed user’s attention. Moreover, some language versions of the judgment actually contain, alongside or in place of the idea of ‘remembering’, the concept of ‘perceiving’ the similarities.

21. Metal rappers Case C-281/10P, paras 53-58 The informed user’s level of attention The imperfect recollection principle? • The Court stated on this point: • …it is true that the very nature of the informed user as defined above (a child in the approximate age range of 5 to 10 or a marketing manager in a company that makes goods which are promoted by giving away ‘pogs’, ‘rappers’ or ‘tazos’) means that, when possible, he will make a direct comparison between the designs at issue. • 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 devices which the designs at issue represent.

22. Metal rappers Case C-281/10P, paras 53-58 The informed user’s level of attention The imperfect recollection principle? • ‘That is true all the more so since, in the absence of any precise indications to that effect in the context of the CDR, the EU legislature cannot be regarded as having intended to limit the assessment of potential designs to a direct comparison.’ • ‘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 designs in conflict without starting from the premise that an informed user would in all likelihood make a direct comparison of those designs’”

23. Metal rappers Case C-281/10P, paras 53-58 The informed user’s level of attention The imperfect recollection principle? • ‘It follows that, even if the General Court’s formulation that ‘that similarity would not be remembered by the informed user in the overall impression of the designs at issue’ might indicate, when taken out of context, that the GC based its reasoning on an indirect method of comparison based on an imperfect recollection, it does not reveal any error on the GC’s part.

24. Metal rappers Case C-281/10P, paras 53-58 The informed user’s level of attention The imperfect recollection principle? • The GC also in T-513/09 ‘personnage assis’ mentioned, inter alia, that certain differences in the designs would be ‘kept in the memory’ of the informed user (‘que el usuario informado conserva en su memoria’ and ‘impresión que conservará en su memoria’) (para. 22). • This case has also been appealed to the ECJ.

25. Metal rappers Case C-281/10P, paras 53-58 The informed user’s level of attention The imperfect recollection principle? • So what does this mean? • Should we always make a comparison based on ‘imperfect recollection’? or • If not, should we sometimes, but not always, make a comparison based on ‘imperfect recollection’? If so, in what situations? or • Should a comparison based on ‘imperfect recollection’ be avoided?

26. Metal rappers Overall impression • ID: The two opposing designs have all the basic features in common, i.e. both items are round in shape with an outer edge surrounding a central area. They differ only by minor deviations in the profile of the central area giving rise to small variations in the surface patterns. They produce the same overall impression on the informed user. Therefore, the CD is in conflict with the prior design.

27. Metal rappers Overall impression BoA: • The contested CD has two additional concentric circles when compared with the respondent’s CD. The true significance of these additional concentric circles only becomes apparent when the disk is viewed in profile. They are intended to show that the raised area is not flat but slopes upward in the direction of the centre. • The difference in the contours of the raised area in the centre of the disks can hardly be dismissed as insignificant. It changes the appearance of the disks in a manner that will not go unnoticed by an observant user. Given the limited freedom of the designer in developing the design, that difference in the profile of the two designs is sufficient to mean that they produce a different overall impression on the informed user.

28. Metal rappers Case T-9/07 Overall impression GC: • The designs at issue both had a concentric circle very close to the edge • Both contain a concentric circle approximately one third of the way from the edge to the center • The designs at issue are similar in that the rounded edge of the disc is raised in relation to the intermediate area of the disc between the edge and the raised central area. • The respective dimensions of the raised central part and the intermediate area of the disc, between the edge and the raised central part, are similar in the designs at issue.

29. Metal rappers Case T-9/07 Overall impression GC: • In the absence of any specific constraint imposed on the designer, the similarities noted in paragraphs 79 to 81 above relate to elements in respect of which the designer was free to develop the contested design. It follows that those similarities will attract the informed user’s attention, all the more so because the upper surfaces are, in the present case, the most visible surfaces for that user.

30. Metal rappers Case T-9/07 GC: As regards the differences between the designs at issue • when viewed from above, the contested design has two additional circles compared with the prior design • In profile, the two designs differ in that the contested design is more curved. • However, it must be found that since the degree of curvature is slight, and the discs are thin, that curvature will not be easily perceived by the informed user, in particular when viewed from above, and this is borne out by the goods actually marketed In the light of the similarities, it must be held that the differences observed by the Board of Appeal are insufficient for the contested design to produce a different overall impression on the informed user from that produced by the prior design. BoA’s decision was adopted in breach of Article 25(1)(d) and it was annuled

31. Informed userPromotional items Case T-68/10 For watches • It is a promotional item • In relation to such items the concept of informed user includes firstly, a professional who acquires them in order to distribute them to the final user and secondly, those final users (consumers) themselves • In any event, the fact that one of the two groups of informed users mentioned above perceives the designs at issue as producing the same overall impression is sufficient for a finding that the contested design lacks individual character. CD No 325949-0002 Earlier watch design

32. R 1701/2010-3 Decision of 12 July 2011 Toy vehiclesInformed user Earlier design CD No 664925-003 §16 It is apparent from Recital 14 in the preamble to the CDR that, when assessing whether a design has individual character, account should be taken of the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs (see judgment of 22 June 2010, T-153/08, ‘Communications equipment’, para. 43) §19 In the case at hand, the product in question is a toy vehicle and therefore the informed user could be a child between the approximate age range of 4 to 9 or an adult who buys the toy vehicle for a child. However, it makes little difference whether the informed user is a child between the approximate age range of 4 to 9 or an adult; the important point is that both those categories of person are familiar with the product at the level indicated in the previous paragraph above (see, by analogy, judgments of 18 March 2010, T-9/07, ‘Metal rappers’, para. 65)

33. CD No 573993-004 Application for declaration of invalidity R 1703/2010-3 Decision of 12 July 2011 Toy vehicles International registration published on 30 June 2000 Registered and published on 26 September 2006 for ‘toy vehicle’

34. R 1703/2010-3 Decision of 12 July 2011, para. 36 Overall impression of the conflicting designs The Board agrees with the contested decision that the contested CD and the prior designs differ in particular because: • the CD includes a trailer absent in the prior designs. The Board notes that they differ also in the following features: • In the prior design the parallel black lines on the side of the toy vehicle are followed by the type number ‘R3-42T’, which does not appear in the CD • The lifting tool of the CD is pointing downwards, whereas the lifting tool of the prior design is pointing upwards

35. R 1703/2010-3 Decision of 12 July 2011, para. 37 Overall impression of the conflicting designs For the rest, in the view of the Board, the contested CD and the prior designs are identical, this including, inter alia, the following elements: • The shape of the main body; • the motor at the back; • the cabin; • the wheels; • the lifting arm; • the lifting tool; • part of the black stripes at the side; • the colour of the main body (yellow); • the colour of the cabin (black); • the colour of the wheels (yellow and red); • the colour of the lifting tool (red).

36. R 1703/2010-3 Decision of 12 July 2011, paras 41-43 Overall impression of the conflicting designs • The only relevant difference between the designs at issue concerns the fact that the contested CD also contains a trailer, which is not present in the previous design • The trailer is a feature that the respondent added to the earlier version of the toy vehicle. Even though the trailer has thus become an element of the design of the toy vehicle, it is a relatively marginal one, in the sense that the toy vehicle – with or without the trailer – produces on the informed user the same overall impression. The informed user will perceive the trailer for what it clearly is: an accessory. The accessory character of the trailer is well demonstrated by the fact that it is not a fixed element but one that can be easily separated from the main product. The trailer is, in fact, an optional accessory i.e. something that anybody playing with the toy may decide to use or not and it may hardly be recognised as ‘a significant part of the design • Therefore, the Board takes the view that the contested design inevitably creates the same overall impression on informed users as the prior designs, since it reproduces all the essential characteristics of the latter

37. R 1703/2010-3 Decision of 12 July 2011, paras 44,45 Overall impression of the conflicting designs • Further, the overall impression produced by a design on the informed user must necessarily be determined also in the light of the manner in which the product at issue is used (see judgments of 22 June 2010, T-153/08, ‘Communications equipment’, para. 66 and of 14 June 2011, T-68/10, ‘Watches’, para. 78). The Board notes that the person using the product would usually be a child at play and that the truck and the trailer in the contested design can easily be separated from each other and used as two separate toys, or they could even be sold separately. This factor also decreases the importance that can be given to the additional component for the evaluation of the overall impression • The same applies to the fact that the lifting tool of the CD is pointing downwards, whereas the lifting tool of the prior design is pointing upwards. As importance must also be given to the manner in which the product at issue is used and it seems more than probable that the lifting tool of the toy vehicle can be ‘clipped-on’ either way, that is pointing downwards, or pointing upwards, this factor can only be qualified as immaterial

38. R 1703/2010-3 Decision of 12 July 2011 Overall impressionWhat is being compared? Several decisions help to identify what aspects of the CD are to be considered when making the comparison with the prior design.

39. Case T-68/10 Overall impressionWhat is being compared? It is necessary to determine which elements are actually protected by the contested design and, as a consequence, are relevant in the context of the comparison of that design with the earlier design • Dotted lines identity elements which are not part of the view in which they are used • The attachment clip, the hands of the watch and the rectangular element affixed to the watch face do not form part of the protected elements of the contested design

40. Overall impressionWhat is being compared? Article 4(2) CDR: A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character: a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and  b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character. Article 3  CDR: For the purposes of this Regulation: […] b) 'product' means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs; c) 'complex product' means a product which is composed of multiple components which can be replaced permitting disassembly and re‑assembly of the product.

41. Overall impressionWhat is being compared? • Complex products Multiple components • Visible once it has been incorporated • During normal use (user) • Visible features fulfil in themselves the requirements as to novelty and individual character

42. R 1337/2006-3 Decision of 8 October 2007 Overall impressionWhat is being compared? RCD No 163 290-0001Invalidity application(Honda Motor Co. Ltd.)

43. R 1337/2006-3 Decision of 8 October 2007 Overall impressionWhat is being compared? RCD No 163 290-0001Invalidity application(Honda Motor Co. Ltd.) Product: Internal combustion engine Article 4 RCD Article 5 RCD (lack of novelty) Article 6 RCD (lack of individual character)

44. R 1337/2006-3 Decision of 8 October 2007 Overall impressionWhat is being compared? • Only parts of the design that are visible during normal use of the complex product (lawnmower) are taken into consideration • The parts of the engine that are not visible once it is mounted on the equipment are to be excluded from the comparison of the overall impression produced by the designs at issue • Are visible; the upper side, the front and lateral sides

45. R 1337/2006-3 Decision of 8 October 2007 Overall impressionWhat is being compared? The informed user • The informed user is identified by the indication of the products in the application in which the design is to be incorporated • The informed user is, as a general rule, someone who buys a lawnmower for normal use • He becomes ‘informed’ on the subject by browsing through catalogues of lawn mowers; visiting specialized stores, downloading information from the internet, etc.

46. R 1337/2006-3 Decision of 8 October 2007 Overall impressionWhat is being compared? • The informed user of a lawnmower is more likely to be impressed by the overall aspect of the upper part of the engine than the dozens of details that, no doubt, characterize mechanical devices • The conflicting designs show an identical arrangement of the components – the filter cover, the fuel tank, the vent and the muffler cover • The vent has a very similar protruding design and the same round shape in addition to narrow apertures

47. R 1337/2006-3 Decision of 8 October 2007 Overall impressionWhat is being compared? • The tank has a very similar crescent-like design, too, and is identically placed at the rear side of the engine • The air filter casing is located on the left side and has a similar, oblong, shape • The high degree of freedom that designers enjoy when designing internal-combustion engines for lawnmowers reinforces, therefore, the conclusion that the Challenged Design produces on the informed user the same overall impression

48. Overall impressionWhat is being compared? GC’s judgment of 9 September 2011 in T-10/08

49. Case T-10/08 Judgment of 9 September 2011 Holder’s arguments : • It challenges the Board of Appeal’s assessment that the parts of the challenged design remaining visible during normal use of the complex product, once the engine is mounted on the lawnmower, are principally the upper side of the motor, then the front and lateral sides, whereas the rear side is less visible and the underside is not visible at all. • It takes the view that the rear side and underside of the engine must not be neglected.

50. Case T-10/08 Judgment of 9 September 2011 • The applicant has accepted that : • The challenged design constituted an internal combustion engine which could be incorporated into a lawnmower. Therefore, it must be considered that the challenged design constitutes a component part of that complex product • It is common ground that internal combustion engines are generally used for lawnmowers. • The incorporation of the challenged design into a lawnmower may therefore serve as a basis for determining: • First, whether the challenged design remains visible during normal use of the complex product, in particular, a lawnmower, by the end user. • Second, whether the overall impression produced on an informed user by the visible features differ from that produced by another design which was made available to the public before 2 April 2004.