October to December 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 validity of an RCD is interpreted.
This blog covers invalidity decisions issued by the EUIPO during the fourth quarter of 2019, from 1 October 2019 to 31 December 2019. Our previous blog covering the third quarter of 2019 can be found here.
There were 57 invalidity decisions issued between 1 October 2019 to 31 December 2019. 36 invalidity actions (63%) were successful, meaning that the contested registered Community design was invalidated by the Invalidity Division. 21 invalidity actions (37%) 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 October to December 2019 are highlighted below.
A valid registered Community design must be novel and have individual character. An RCD is deemed to lack novelty over a prior design if their features differ only in immaterial details. An RCD is deemed to lack individual character over a prior design if the two designs produce the same overall impression on the informed user.
Rubik’s Brand Limited (Applicant)
East Sheen Industrial Co., Ltd. (RCD Owner)
Invalidity No. 10583
This invalidity decision concerns registered Community design no. 002778811-0001, which was filed on 24 September 2015 and is in the class of “play cubes”.
The EUIPO’s Invalidity Division declared that the registered Community design is invalid because it does not have individual character over a prior trade mark registration.
The invalidity applicant is the owner of various IP rights associated with the famous Rubik’s Cube. In this case, it was argued that the contested registered Community design is the same or is at least very similar to the Rubik’s Cube Mini, which has been published in a European trade mark registration owned by the applicant. It is established case law that a published trade mark showing a product is a disclosure of an earlier design. The Invalidity Division agreed with the applicant that the contested RCD is very similar to the design shown in the applicant’s trade mark publication and it was therefore held that the contested RCD lacks individual character.
The Invalidity Division takes any relevant case law into account. This decision was therefore based on a previous Board of Appeal hearing involving the same two parties but concerning a different registered Community design. The Invalidity Division stated that “The case-law is relevant despite the fact that the product… is different”.
Also of note is that in assessing individual character, the Invalidity Division asserted that toy designers have an almost unlimited degree of freedom. Under European design law, the more freedom that a designer is deemed to have had, the less likely it is that small differences between the designs under comparison will be sufficient to produce different overall impressions on the informed user.
eDirekte 24 OÜ (Applicant)
Boatsauna OÜ (RCD Owner)
Invalidity No. 106059
This invalidity decision concerns registered Community design no. 005942737-0001, which was filed on 21 December 2018 and is in the class of “Saunas”.
The EUIPO’s Invalidity Division rejected the application for a declaration of invalidity.
The invalidity applicant argued that the contested registered Community design was identical to an earlier filed RCD. Under the Community Design Regulations, two designs are deemed to be identical if their features differ only in immaterial details. It is important to note that the invalidity applicant did not invoke a lack of individual character as a ground for invalidity.
The Invalidity Division explained that “examination, however, will not be extended to grounds not relied on in the application. Where an applicant exclusively challenges, for instance, either the novelty or the individual character of a Community design, the Invalidity Division will examine the invoked ground only”. Consequently, the Invalidity Division could not examine individual character and could only assess novelty of the contested RCD.
Novelty is assessed solely on the basis of the features disclosed in the contested design and so “if the contested Community design is reproduced only in black and white (or monochrome), the colours found in the earlier designs will not be taken into consideration”. The Invalidity Division concluded that the contested design differs from the prior designs materially due to, for example, differences in the design of the door. The Invalidity Division explained that the contested design has a glazed door with a wide wooden frame, a circular handle and a relatively large lock on the left-hand side, but that, in contrast, the prior designs all show a glass door without a wooden frame and with a metal handle and hinges fixed to the glass. The Invalidity Division therefore found that the contested registered Community design was novel.
When filing an invalidity action against a registered Community design, it is important to consider all of the possible grounds for invalidity that may apply. In this case, the invalidity applicant may have been successful in invalidating the contested RCD if a lack of individual character was invoked as a ground for invalidity.
Mediashop GmbH (Applicant)
Shenzhen Walikexun Information Technology Co., Ltd. (RCD Owner)
Invalidity No. 107040
This invalidity decision concerns registered Community design no. 005138757-0001, which was filed on 30 March 2018 and is in the class of “Air conditioners”.
The EUIPO’s Invalidity Division rejected the application for a declaration of invalidity.
This decision turned on whether or not there was sufficient evidence to prove that the prior designs submitted by the invalidity applicant had been disclosed prior to the filing date of the contested registered Community design.
It is established case law that “The onus is on the invalidity applicant to prove the disclosure of the earlier designs”. In this invalidity action, two prior designs were submitted, D1 and D2. Case also law tells us that “the disclosure of an earlier design cannot be proved by means of probabilities or suppositions, but must be based on solid and objective evidence that proves that the earlier design was made available to the public”.
D1 is a registered Community design claiming a priority date of 26 December 2017 from a US design patent. D1 claimed a priority date of 26 December 2017 but was published on 12 June 2018, which is after the filing date of the contested RCD. A priority date is not a date of disclosure and no evidence was submitted regarding the publication of D1 in the US. Therefore, the Invalidity Division decided that “there is no evidence that D1 was disclosed before the filing date of the contested RCD”.
D2 is a product called ‘ARCTIC AIR’ that had allegedly been sold in the US from 2017 and offered to the invalidity applicant for marketing in Europe in October 2017. To try to prove the disclosure of D2, the invalidity applicant submitted a photograph of D2, emails discussing D2, and an affidavit from an employee claiming that D2 had been made available for sale on invalidity applicant’s website on 5 March 2018. However, on review, the Invalidity Division found that the photograph was undated, the emails were a private disclosure, and the affidavit was not enough because “affidavits drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence” and the only supporting evidence is insufficient. As a result, the Invalidity Division held that “the evidence is insufficient to prove that the claimed prior designs were made available to the public” and the application for a declaration of invalidity was rejected.
When applying to invalidate a registered Community design it is important to make sure that sufficient evidence is submitted to prove that an alleged prior design was disclosed before the filing date of the contested RCD.
Honda Motor Co., Ltd. and Honda Motor Europe Limited (Applicants)
Shanghai Enki Intelligent Electric Co., Ltd. (RCD Owner)
Invalidity No 107200
This invalidity decision concerns registered Community design no 003495795-0001, which was filed on 2 December 2016. The RCD is in the class of “Robotic lawnmowers”.
The EUIPO’s Invalidity Division declared that the contested registered Community design is invalid because it lacks individual character over an earlier RCD filed by the invalidity applicants.
The invalidity applicants argued that the contested registered Community design and the prior design produce the same overall impression because the two designs have a number of characteristics in common, including the overall shape of the body cover, “small-diameter front wheels and large-diameter rear wheels”, “an elongated U-shaped panel in the centre of the top part of the body cover, divided into five sections”, and “two bulging areas in the rear half of the overall length of the body cover, which look as if they cover the rear wheels”.
The Invalidity Division agreed that “the contested RCD is very similar to the prior design and the differences lie in minor details of these parts”, asserting that such differences were either “not striking” or “are less relevant for the assessment of individual character because these are the more common technical parts”. Consequently, the Invalidity Division found that the contested RCD lacks individual character over the prior design.
In this case, the invalidity applicants submitted one of their own prior registered Community designs as evidence in support of their application for a declaration of invalidity. This tactic is recommended because a registered Community design has an almost indisputable date of disclosure and it typically includes a number of images showing different views of the prior design, which allows different features of the prior design to be seen.
Lego Juris A/S (Applicant) vs.
Shantou Pengrui Electronic Technology Co., Ltd. (RCD Owner)
Invalidity No. 107359
This invalidity decision concerns registered Community design no 005658044-0001, which was filed on 25 September 2018 and is in the class of “Toy figures”.
The EUIPO’s Invalidity Division declared that the contested registered Community design is invalid because it does not have individual character over prior disclosures submitted by the invalidity applicant.
The invalidity applicant submitted that the contested registered Community design was essentially a reproduction of a Lego figurine that had been on the market since the late 1970s. The invalidity applicant 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.
The Invalidity Division agreed with the invalidity applicant that the prior design and the contested registered Community design are essentially identical and have the following features in common: “the overall proportions and sturdiness”; “the cylindrical-shaped head with rounded edges”; “the trapezoidal torso with a flat front and back”; “the arm and hand shapes”; and the “short legs with a small gap between them”. The Invalidity Division also pointed out other similar features such as the cylindrical holes in the back of the legs and the holes in the feet. As a result, the Invalidity Division concluded that although there are some minor differences between the contested RCD and the prior design, the contested RCD lacks individual character because it does not produce a different overall impression compared to that of the prior design.
This is another victory for Lego and another decision in which the registered Community design owner has failed to reply to an application for a declaration of invalidity. RCD owners should almost always seek to reply to observations made by an invalidity applicant. If a reply is not submitted then the RCD owner is increasing the risk that their registered Community design will be held to be invalid.
This blog covers invalidity decisions issued by the EUIPO during the fourth quarter of 2019, from 1 October 2019 to 31 December 2019. Invalidity decisions are a valuable source of information on how the validity of a registered Community design is interpreted by the EUIPO. Our next blog, which will cover invalidity decisions issued during the first quarter of 2020, will be published in April 2020.
If you would like to discuss how registered designs can help to stop third party knockoffs, how to invalidate a 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.