20/05/2022
This blog covers an invalidity decision issued by the EUIPO’s Invalidity Division.
Registered Community designs (RCDs) protect the shape and appearance of new products across the whole of the EU. Decisions by the EUIPO’s Invalidity Division help us to understand how the scope and the validity of an RCD may be interpreted.
Zhejiang Dongrui Industrial and Trading Co., Ltd (Invalidity Applicant) vs. Piotr Niemyjski, Paweł Okrasiński and Ewa Niemyjska (RCD Owners) Invalidity No. ICD 117 092
This invalidity decision concerns registered Community design no. 008590400-0004 (the contested design). The contested design has a filing date of 25 June 2021 and is in the class of “tool sheds”.
Summary
The invalidity applicant is a Chinese manufacturer of tool sheds. The registered Community design is jointly owned by two individuals. The invalidity applicant argued that the contested design lacks novelty under Article 5 CDR because it is identical to a tool shed that has been sold on Amazon.de since 26 April 2017.
The EUIPO’s Invalidity Division declared that the contested design is invalid because it does lack novelty over the design shown in the Amazon product listing.
Novelty
A design lacks novelty under Article 5 CDR if the design is the same as a previously disclosed design, or if it differs from a previously disclosed design only in immaterial details.
The Invalidity Division adopts a three step approach when assessing the novelty of a contested design in view of a prior design:
- Determine whether or not the prior design has been sufficiently disclosed;
- Compare the features of the contested design with the features of the prior design to determine which features are the same and which features are different; and
- Decide, in view of the comparison, whether the two designs are the same or differ by only immaterial details, or whether the two designs are different.
Disclosure under Article 7 CDR
The onus is on the invalidity applicant to prove that a prior design has been disclosed. In this case, the prior design relied on by the invalidity applicant is an Amazon.de product listing. In support of their invalidity action, the invalidity applicant submitted print outs of the Amazon.de product listing, showing that it was assigned an Amazon Standard Identification Number (ASIN) of B07 1KC 132N indicating that the product has been on sale on Amazon.de since 26 April 2017. The invalidity applicant also supplied printouts of customer reviews with photographs from 2019, a copy of a pro-forma invoice from 2018, which included an image of the prior design, and a copy of a page from their own 2016-2017 catalogue showing a very similar design.
The RCD owner did not comment on the invalidity applicant’s facts, evidence and arguments.
It is established case law before the General Court that “evidence of disclosure of a product in online retail shops has sufficient probative value (27/02/2018, T 166/15, Sacs pour ordinateurs portables, EU:T:2018:100, § 78)”.
Consequently, the Invalidity Division decided that “the design of the tool shed as disclosed on the Amazon.de retail portal is deemed to have been made available to the public on the given internet website and this is sufficient proof of disclosure within the meaning of Article 7(1) CDR”. Therefore, the prior design could be used as prior art.
Comparison Between the Contested Design and the Prior Design
As shown in Figure 3 above, both the contested design and the prior design are very similar. Both designs are sheds with the same overall shape and colour scheme, and both designs have a mono-pitch roof sloping from front to back, with a two-winged door. Both designs also have white detailing around the doors and at the roof edges, and a pair of rectangular white vents above the door.
Consequently, the Invalidity Division decided that the contested design is identical to the prior design.
Decision
The Invalidity Division agreed with the invalidity applicant that the prior design lacks novelty over the prior design. Therefore, it was decided that “the application is upheld and the contested design is declared invalid”.
Comments
This seems to be a straightforward case of invalidating a registered Community design that is the same as the design of a product already being sold online.
This situation is becoming more common as online sellers become more aware of registered design law and how useful registered designs can be in taking down products from online marketplaces such as Amazon. Unfortunately, since the EUIPO does not examine registered designs for novelty and individual character during the application process, it is possible to accidentally register designs that have already been disclosed to the public.
This blog covers an invalidity decision issued by the EUIPO’s Invalidity Division. If you would like to discuss how registered designs can help to take down 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.
