January to March 2020
This blog covers invalidity decisions issued by the EUIPO during the first quarter of 2020, from 1 January 2020 to 31 March 2020. Our previous blog covering the decisions issued during the fourth quarter of 2019 can be found here.
Registered Community designs (RCDs) protect the shape and appearance of new products across the whole of the EU. Since national court decisions on RCDs are rare, decisions by the EUIPO’s Invalidity Division help us to understand how the validity of an RCD is interpreted.
There were 53 invalidity decisions issued between 1 January 2020 and 31 March 2020. 25 invalidity actions (47%) were successful, meaning that the contested registered Community design was invalidated by the Invalidity Division. 28 invalidity actions (53%) 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 January to March 2020 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.
Sourceable Limited (Applicant)
Made.com Design Limited (RCD Owner)
Invalidity No. 105820
This invalidity decision concerns registered Community design no. 004383495-0005, which was filed on 3 October 2017 and is in the class of “Chairs”.
The EUIPO’s Invalidity Division rejected the application for a declaration of invalidity because there are a number of significant differences between the contested design and the prior art.
The registered Community design owner is a well-known UK company that designs and sells homeware and furniture online. The invalidity applicant argued that the contested RCD lacked individual character over a number of previous chairs manufactured by various companies.
As usual, the first issues in this case concerned disclosure of the alleged earlier designs. In invalidity proceedings before the EUIPO, the onus is on the invalidity applicant to prove that the alleged earlier design had been made available to the public before the filing date of the contested registered Community design. If the invalidity applicant cannot convince the Invalidity Division that a particular design was sufficiently disclosed then the design cannot be used as prior art. In this case, the evidence in support of the earlier designs consisted of screenshots of websites, and individual pages from a catalogue. The Invalidity Division concluded that two of the three alleged earlier designs had been sufficiently disclosed, but that the evidence submitted by the invalidity applicant does not sufficiently prove the date of disclosure of the third design because the relevant screenshots were undated.
After dealing with disclosure, the Invalidity Division then went on to consider whether or not the contested registered Community design had a different overall impression compared to the two prior art designs. The Invalidity Division noted there are several differences between the contested RCD and the two prior art designs. For example, the first prior art design (the top design in Figure 1) includes a decorative pattern covering the pillow, the back rest and arm rests, whereas in the contested RCD the decorative pattern covers only the pillow. The backrest of the first prior art design is significantly higher and has a different shape compared to the backrest of the contested RCD. The second prior art design (the bottom design in Figure 1) lacks the decorative pattern of the pillow of the contested RCD. The backrest of the second prior art design is higher and the top line of the backrest has a different shape compared to the contested RCD.
The differences between the contested registered Community design and the two prior art designs were considered to be so numerous and so significant that they result in the contested RCD creating a different overall impression compared to the prior designs. Accordingly, the Invalidity Division held that the contested registered Community design has individual character and therefore rejected the invalidity action.
Peter Dertsakyan (Applicant)
Xuanxing Chen (RCD Owner)
Invalidity No. 105579
This invalidity decision concerns registered Community design no. 005615283-0001, which was filed on 21 August 2018 and is in the class of “Sanitary items for pets”.
The EUIPO’s Invalidity Division declared that the contested registered Community design is invalid because the difference in colour over the earlier design is not sufficient to produce a different overall impression on informed users.
The invalidity applicant argued that the contested registered Community design is a copy of a product advertised under a project called “Bristly” on the crowd funding platform Kickstarter. The Bristly project was published by the invalidity applicant in June 2018 and consequently the invalidity applicant was able to submit a large amount of evidence in support of their invalidity claim, including evidence that the Kickstarter campaign, a related Facebook page and a relevant YouTube video had been accessed by a number of users from Europe. The RCD owner responded by asserting that the Bristly project could not have become known in the normal course of business to the relevant specialised circles in the EU, but did not submit any substantial evidence backing up their claim. Consequently, the Invalidity Division decided that the Bristly project had been sufficiently disclosed prior to the filing date of the contested RCD.
The Invalidity Division then considered novelty. A registered Community design lacks novelty over a prior design if the features of the two designs differ only in immaterial details. The Invalidity Division noted that the contested RCD and the prior Bristly design are very similar. For example, both designs T-shaped; both designs have a relatively flat flange element with rounded edges and semi-circular arched transitions towards the column element in the centre; the column element extends centrically and perpendicularly in relation to the flange element; and the column element tapers from its upper end towards the stand element. However, the two designs differ in their colour. The contested RCD is blue, whereas the prior design is green. Since this colour difference is not a simple change in the shade of the same colour, the Invalidity Division concluded that the contested RCD is novel over the prior design.
The Invalidity Division then went on to look at the individual character of the contested registered Community design, stating that “Although informed users would be able to perceive the differences between the designs in question due to their difference in colour, this does not change the very similar overall impression produced by the design elements that are included in both designs”. The Invalidity Division also took the view that “From the evidence submitted by the parties, it can be concluded that the same product and products of this kind are offered in different colours on the market” and “The parties did not provide arguments to view a particular colour as a particularly significant feature”. As a result, the Invalidity Division decided that the differences between the contested RCD and the earlier design do not cause the contested RCD to produce a different overall impression on informed users compared to the overall impressions produced by the earlier design. The Invalidity Division concluded that the contested RCD does not have individual character and is therefore invalid.
Lumio, LLC (Applicant)
Qian Peng (RCD Owner)
Invalidity No. 107541
This invalidity decision concerns registered Community design no. 002969220-0001, which was filed on 2 February 2016 and is in the class of “LED lamps”.
The EUIPO’s Invalidity Division declared that the contested registered Community design is invalid because it does not have individual character over a product manufactured by the invalidity applicant.
The invalidity applicant is the company behind the ‘Lumio Book Lamp’, which is a product having the shape and appearance of a book that opens into a lamp formed from concertinaed pages of the book. The prior art submitted by the invalidity applicant consisted of various internet articles from 2013 and 2014 about the development of ‘Lumio Lamp’, along with an Australian designs yearbook from 2015. The Invalidity Division noted that “disclosures derived from the internet form part of the prior art. Information disclosed on the internet or in online databases is considered to be publicly available as of the date the information was posted”.
The Invalidity Division agreed with the invalidity applicant that the contested registered Community design and the prior design have a number of features in common, such as: the shape and appearance of a hard back book when closed; the wood covers which show the grain of the wood; a laser cut wood spine; and when opened they turn into an array of white pages creating a lampshade, which is partially transparent to the light emitted from within. However, the Invalidity Division did note some differences: the colour of the book cover is different; and the spine of the book differs in its colour and ornamentation. Despite these differences, the Invalidity Division concluded that “The minor differences and possible differences between the designs are considerably less striking than the overall impression created by their common features. This conclusion is reinforced by the quite considerable design freedom and the fact that the shape of the design was arbitrary”. The contested RCD was therefore declared invalid due to lacking individual character.
This blog covers invalidity decisions issued by the EUIPO during the first quarter of 2020, from 1 January 2020 to 31 March 2020. Our next blog, which will cover invalidity decisions issued during the second quarter of 2020, will be published in July 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.