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Registered Community Design Invalidity Decisions at the EUIPO


30th Oct 2019

July to September 2019

Registered Community designs (RCDs) protect the shape and appearance of new products across the whole of the EU. However, RCDs only came into effect on 1 April 2003, which means that the body of case law concerning aspects of RCDs such as individual character is still developing. Since national court decisions on RCDs are rare, decisions by the EUIPO’s Invalidity Division provide a valuable source of information on how the scope of protection and the validity of an RCD is interpreted.

This is the first blog in a new regular series summarising some of the new case law concerning registered Community designs. This blog covers invalidity decisions issued by the EUIPO during the third quarter of 2019, from 1 July 2019 to 30 September 2019.

Summary

There were 93 invalidity decisions issued by the EUIPO’s Invalidity Division between 1 July 2019 to 30 September 2019. 61 invalidity actions (66%) were successful, meaning that the contested registered Community design was invalidated by the Invalidity Division. 32 invalidity actions (34%) were unsuccessful, meaning that the application for a declaration of invalidity was rejected and the RCD was maintained as granted.

Some of the invalidity decisions issued during the period of July to September 2019 are highlighted below.

1. Lego Juris A/S (Applicant) vs.

Filip i S-ka “Dromader” Spółka Jawna (RCD Owner)

Invadility No. 106320

The EUIPO’s Invalidity Division declared that registered Community design no. 002435081-0001 is declared invalid because it lacks individual character over prior disclosures submitted by the invalidity applicant.

The contested registered Community design was filed on 28 March 2014. The registration is in the class of “Building bricks” and it was filed with the following representations:

The invalidity applicant, Lego, argued that the contested registered Community design lacks individual character over earlier figurines manufactured by Lego. Lego also argued that the contested RCD was in conflict with some of their earlier registered EU trade marks showing figurines typically associated with the Lego brand.

A valid registered Community design must have individual character. An RCD has individual character if the overall impression that the design produces on the informed user differs from the overall impression produced on the informed user by any design that has been made available to the public before the date of filing of the application or, if priority is claimed, the date of priority.

The contested registered Community design is shown below (right) in comparison with a prior design (left) submitted by the invalidity applicant, Lego.

The contested registered Community design and the prior design are not identical and they do differ in some ways. The heads and torsos of the figurines have slightly different shapes and relative dimensions. The prior design has a connecting element at the hip which is absent in the RCD, and the feet of the designs have different profiles.

However, the EUIPO’s Invalidity Division agreed with the invalidity applicant that the registered Community design and the prior design have many similar elements:

  • Both designs have a square head with rounded corners.
  • The head of both designs has a circular protrusion at the top.
  • The shape of the arms, including the bend for the elbow, is the same for both designs.
  • The hands of both designs have exactly the same arch shape.
  • There is a similar amount of space between the legs of both designs.

The Invalidity Division considered that the “minor differences between the designs are considerably less striking than the overall impression created by their common features”. Taking into account the considerable design freedom afforded to toy designers, the Invalidity Division concluded that the contested registered Community design does not produce a different overall impression from that of the prior design.

The Invalidity Decision therefore found that the design in the contested registered Community design lacks individual character over the prior design submitted by Lego. As a result, the RCD was declared invalid.

As mentioned in our blog on invalidating a registered Community design, the losing party normally bears the costs and fees of the other party. However, in this case the Invalidity Division decided that the RCD owner demonstrated “a wish to terminate the protection of the contested RCD prior to the invalidity application being filed” because the invalidity action was filed after the first renewal period had expired and the RCD owner did not pay the first renewal fee. Consequently, the Invalidity Division exercised its discretion and ordered that each party bears its own costs.

This is another victory for Lego, albeit a rather straightforward and uncontested one. Lego is known to be very protective of its famous plastic brick toys. Indeed, in the last two years Lego has been involved in 6 successful EUIPO invalidity actions against competitors.

2.Wheel Trade Dariusz Wichliński (Applicant) vs.

DIZING (RCD Owner)

Invalidity No. 106150

This invalidity decision concerns registered Community design no. 005879517-0001, which was filed on 11 December 2018 and is in the class of “Vehicle wheel rims”.

The EUIPO’s Invalidity Division declared that the registered Community design is invalid because it does not have individual character over prior disclosures submitted by the invalidity applicant.

This invalidity applicant argued that the wheel rim design had been disclosed previously in posts made by the RCD owner on the social media websites Facebook and Instagram. These social media posts refer to a motor show held in Essen, Germany in December 2017, a year before the filing date of the contested RCD. The Invalidity Division held that the social media posts verified that not only had the wheel rim designs been disclosed on the internet, but that they been disclosed to the public at the motor show in Essen. As a result, the Invalidity Decision agreed with the invalidity applicant and concluded that the RCD is not new because it is identical to the earlier disclosure.

This is another decision in which the prior disclosure of an RCD owner has been used against them. It is always best practice to apply for a registered Community design before the design is disclosed. This decision is also an indication that social media websites can be a valuable and valid source of prior art for invalidity actions.

3. Nino Robotics (Applicant) vs.

Airwheel Europe S.A. (RCD Owner)

Invalidity No 103619

This invalidity decision concerns registered Community design no. 004370914-0001, which was filed on 25 September 2018 with a claim to priority from a Chinse registered design application filed on 20 July 2017. The RCD is in the class of “Wheelchairs”.

The EUIPO’s Invalidity Division rejected the application for a declaration of invalidity. The Invalidity Division found that the RCD did not lack novelty or individual character over the prior design submitted by the invalidity applicant.

The invalidity applicant explained that they had entered into discussions with Airwheel Europe S.A. to create an ‘all-terrain’ version of their existing wheelchair. Discussions suddenly stopped and, shortly afterwards, Airwheel Europe S.A. filed the contested registered Community design. The invalidity applicant alleged that the contested design lacks novelty or individual character over the prior design. However, the Invalidity Division disagreed with the applicant and pointed to differences in the design of the footrest, holders and steering mechanisms. As a result, the contested design was held to be new and to have individual character in view of the prior design.

This decision by the Invalidity Division is not surprising given that there are many differences between the contested design and the prior design. However, this case is an important reminder to apply for IP protection before entering into a negotiation with a collaborator or a competitor. When relying on the goodwill of a third party, there is always a risk of encountering future problems in the event of a misunderstanding or a breakdown in the negotiations.

4. Songmics International GmbH (Applicant) vs.

Shenzhen Youke Commerce & Trading Co., Ltd (RCD Owner)

Invalidity No. 10327

This invalidity decision concerns registered Community design no. 004495422-0001, which was filed on 25 September 2018 and is in the class of “Office chairs”.

The EUIPO’s Invalidity Division declared that the registered Community design is invalid because it is not new over the prior design submitted by the invalidity applicant.

The invalidity applicant argued that the design shown in the registered Community design is not new because it was disclosed to the public in 2016 on Amazon.de. In response, the RCD owner argued that internet evidence is not reliable because websites can change their content. The invalidity applicant countered this assertion by arguing that the evidence shows an Amazon Standard Identification Number, which was generated when the item was first made available for sale on Amazon, and that this number is sufficient and reliable evidence of the date of disclosure. The Invalidity Decision agreed with the invalidity applicant in this respect and concluded that the RCD is not new because it is identical to the prior design.

This decision reinforces the fact that product listings on Amazon can be used as prior art in an invalidity action before the EUIPO.

5.TBL Licensing LLC (Applicant) vs.

Vapesol (RCD Owner)

Invalidity No. 11208

This invalidity decision concerns registered Community design no. 003419407-0001, which was filed on 14 October 2016 and is in the class of “Soles for footwear”.

The EUIPO’s Invalidity Division rejected the application for a declaration of invalidity.

The Invalidity Division decided that the registered Community design “clearly departs from the prior design” submitted by the invalidity applicant and that it produces a different overall impression. As a result, it was found that the RCD has individual character. The Invalidity Division commented that “the bottom of the prior design gives the impression of a stone in the centre of the sole, creating ripples towards the front and back. The ripples are evenly spread across the sole. In contrast, in the contested RCD the impression created is of movement towards the centre of the sole”.

This blog covers invalidity decisions issued by the EUIPO during the third quarter of 2019, from 1 July 2019 to 30 September 2019. Invalidity decisions are a valuable source of information on how the scope of protection and the validity of a registered Community design is interpreted by the EUIPO. Our next blog, which will cover invalidity decisions issued during the fourth quarter of 2019, will be published in January 2020.

If you would like to discuss how registered designs can help to stop third party knockoffs, how to invalidate an RCD owner’s design registration, or for more information about registered designs and other forms of intellectual property protection, please contact us

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Ian Whitfield
Associate
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Author
Tom Sharman
Partner
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Would you like to know more? You can talk to Ian Whitfield who will be able to help. Call +44 (0)20 7242 0901

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