July to September 2020
This blog covers invalidity decisions issued by the EUIPO during the third quarter of 2020, from 1 July 2020 to 30 September 2020. Our previous blog covering the decisions issued during the second quarter of 2020 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 85 invalidity decisions issued between 1 July 2020 and 30 September 2020. 41 invalidity actions (48%) were successful, meaning that the contested registered Community design was invalidated by the Invalidity Division. 44 invalidity actions (51%) were unsuccessful, meaning that the application for a declaration of invalidity was rejected and the RCD was maintained as registered.
Some of the invalidity decisions issued during the period of July to September 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.
1 . Henkel AG & Co. KGaA (Applicant) vs. Reckitt Benckiser Finish B.V. (RCD Owner) Invalidity No. 107943
This invalidity decision concerns registered Community design no. , which was filed on 20 September 2018 and is in the class of “Capsules containing washing products”.
The EUIPO’s Invalidity Division rejected the application for a declaration of invalidity because the “form, configuration and overall appearance of the contested design is too far removed from the form and configuration of the prior design”.
The invalidity applicant is a German chemical and consumer goods company that sells dishwasher detergent under the brand name of Persil. The owner of the contested registered Community design is a British multinational that sells dishwasher detergent under the brand name of Finish. The invalidity applicant argued that the contested RCD lacks individual character over one of its own registered designs, RCD no. 003619717-0010, which was published before the filing date of the contested RCD. In an invalidity action, the onus is on the invalidity applicant to prove disclosure of the earlier design(s). Publication of an earlier registered Community design meets the disclosure requirements for an earlier design and so no further arguments are needed. This is one reason why registered Community designs are a very good option for prior art when filing an invalidity action.
An important initial step in assessing whether or not a registered Community design has individual character is to define the freedom of the designer. The greater the designer’s freedom in developing the design, the less likely it is that minor differences between the contested design and a prior design will be sufficient to produce a different overall impression, and vice versa. In this case, the invalidity applicant argued that the designer was only limited by the volume of the washing agent needed and by the size of the packaging, which would have to fit into a washing machine or dishwasher. In reply, the RCD owner argued that the designer is also constricted by limitations of the method of making transparent films, and that the compartments of a capsule had to be shaped such that the washing agent could be sealed inside them. The Invalidity Division took a broad view and decided that “the designer is not obliged to maintain a particular overall shape for the capsule, or a particular shape or arrangement for the compartments within the capsule” but “the size, the separation of the agents and their volume do limit, to a certain extent, the designer’s freedom”.
The choice of the prior design in this case raised a couple of interesting points. The circular outer shape of the prior design is disclaimed and the prior design is a black and white line drawing, whereas outer shape of the contested design is not disclaimed and the contested design has colour. It is established case law that features of a registered Community design that are disclaimed are disregarded for the purposes of comparing the designs (14/06/2011, T 68/10, Watches, EU:T:2011:269, § 59-64). Therefore, the Invalidity Division stated that the designs will be assessed by disregarding the overall circular shape of the capsule and the colour of the compartments.
The Invalidity Division held that the contested design “corresponds in the centrally placed sphere and in the way in which the other four compartments are placed around the central one”. However, the Invalidity Division also decided that the contested design and the prior design differ in a number of significant ways. The two designs have differently shaped compartments and a different number of compartments, and the overall profile of the compartments are different, with the contested design having a more compact discus shape. In view of these differences, the “informed user is able to clearly distinguish between the two designs, without needing to examine them in detail” and the Invalidity Division rejected the application for invalidity.
2. Huang Xinyan (Applicant) vs. Cao Yang (RCD Owner) Invalidity No. 110986
This invalidity decision concerns registered Community design no. , which was filed on 20 November 2018 and is in the class of “Writing pens”.
The EUIPO’s Invalidity Division declared that the contested registered Community design is invalid because the contested design does not produce a different overall impression from that of the prior design.
The invalidity applicant alleged that a pen having a very similar design to the pen shown in the contested registered Community design was sold on Amazon.de over one year before the contested RCD was filed, and therefore that the contested RCD lacked novelty and individual character. The RCD holder did not reply to the invalidity action.
The onus to prove disclosure of an alleged earlier design is on the invalidity applicant. In this case, the alleged earlier design is shown in an Amazon product listing supported by its Amazon Standard Identification Number (ASIN). It is established case law that evidence of disclosure originating from an e-commerce platform such as Amazon may have evidential value if a unique code identifying the relevant product can be linked to the particular design (27/02/2018, T 166/15, Cases for mobile phones, EU:C:2018:100, § 59-63). An ASIN is a unique code identifying a product for sale on Amazon. In addition, there were reviews of the product posted by customers before the filing date of the contested registered Community design application. In view of this, the Invalidity Division stated that it “has no doubt that the event of disclosure of the earlier design took place”.
The Invalidity Division first considered the novelty of the contested design. The Invalidity Division noted that there are differences between the contested design and the prior design: the design and arrangement of the metallic parts are different; the colour of the pens are slightly different; the top and bottom details are slightly different; and the contested design includes an additional ruler. Therefore, the Invalidity Division found the contested design to be novel.
The Invalidity Division then reviewed the individual character of the contested design. The Invalidity Division considered that the designer had many possibilities for designing the overall appearance of the pen and so the designer’s degree of freedom was not limited. The Invalidity Division found that the designs are very similar and given that the designer had a broad degree of freedom, the minor differences between the two designs are not sufficient to give the contested design individual character. Therefore, the contested registered Community design was declared invalid.
3. Sorin Sirbu (Applicant) vs. Wang Yunwei (RCD Owner) Invalidity No. 109941
This invalidity decision concerns registered Community design no. , which was filed on 26 July 2019 and is in the class of “Scooter [foot-propelled]”.
The EUIPO’s Invalidity Division rejected the application for a declaration of invalidity because there are a number of differences between the contested design and prior design that are “not minor”.
The invalidity applicant is the owner of an electric scooter company called E-TWOW. The invalidity applicant argued that the contested registered Community design is identical and lacks individual character over one of their own registered Community designs, RCD no. 002687988-0001. Given that the prior design is a registered community design application, publication of the prior design by the EUIPO is sufficient to constitute disclosure under the Community Design Regulations. As with the case above, using an earlier published registered Community design application for prior art is always a good idea.
The invalidity applicant alleged that the contested design lacks novelty over the prior design. However, the Invalidity Division were not persuaded by these arguments. The two designs were considered to have some features in common, such as having the overall shape of a scooter “where a vertical steering rod is connected to horizontally positioned handlebars and a footboard”. But, the Invalidity Division noted a large number of differences between the two designs. For example: “the tyre patterns and the wheel discs are different in ornamentation, size and colour”; “the shape of the back mudguard is slightly different”; “the shape, grip patterns and decorative elements of the handles are different in both designs”; and “the control mechanism and the lamp placed on the handlebars in both designs are different in shape and composition”. In view of these differences, the Invalidity Division decided that the contested design is novel over the prior design.
The Invalidity Division then went on to review individual character. Does the contested design produce a different overall impression on the informed user compared to the prior design? When considering the designer’s freedom, the Invalidity Division noted that “the designer’s degree of freedom is restricted only insofar as a scooter must have wheels, handlebars and a footboard connected to a steering rod. It should also have a braking system”. As a result, “only minor differences between the prior and the contested designs will be insufficient to produce different overall impressions on the informed user”.
The Invalidity Division found that although the two designs share the common features of a scooter, there are many differences in the design of these common features. The Invalidity Division specifically pointed out “the differences in the shape, grip and decorative elements of the handles, the control mechanism, the connecting element between the footboard and the steering rod, as well as the shape and additional red decorative elements on the footboard”. These differences were not considered minor. As a result, the Invalidity Division found that the contested design produces a different overall impression compared to the prior design, and consequently that the contested design has individual character. The application for a declaration of invalidity was therefore rejected.
This blog covers invalidity decisions issued by the EUIPO during the third quarter of 2020, from 1 July 2020 to 30 September 2020. Our next blog, which will cover invalidity decisions issued during the fourth quarter of 2020, will be published in January 2021.
If you would like to discuss how registered designs can help to stop third party knockoffs, how to invalidate a design registration that is being used against you, 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.