CASE NO.: R 1456/2006-3
PARTIES: Imperial International Limited v Handle Cookware Limited
DESIGN: RCD 123013-0001
An earlier stage of this action was decided at R 1456/2006-3 reported in a previous issue of Design Features. The design was for a saucepan handle, the rest of the pan being shown in dashed lines. The Invalidation Division concluded that the design lacked novelty as differing from the prior art only in immaterial details. The proprietor argued that “The design at issue is a pan handle. Therefore, the intended user would be a pan manufacturer.”
The Board held (self-evidently) that ‘immaterial differences’ are those differences which do not matter.” According to the Board, the reference person for judging these is not the “informed user” but the tribunal, so the identity of the informed user did not matter. They held the three identified differences to be immaterial on the following bases:
- The first was “minimal, difficult to appreciate objectively”
- The second was “hardly visible without actually measuring the angles”
- The third was “not really a property of the handle but results from how it is secured to the saucepan.” (i.e. akin to a “method or principle of construction” objection)
The design was accordingly invalid for lack of novelty.
CASE NO.: R 1411/2007-3
PARTIES: COVERPLA S.A v Heinz-Glas GmbH
DESIGN: RCD 29178-0002
The design was cancelled on the basis of lack of novelty over a prior use, evidenced by (a) an engineering drawing made by the opponent, (b) a delivery note and (c) a “declaration sur l’honneur” from their UK customer proving that they had accepted delivery, all some months prior to the filing date.
The proprietor questioned the veracity of some of the evidence, said that the deponent was not impartial and therefore discounted their evidence, claimed that the opponent was acting in bad faith, had not proved copyright ownership and was engaged in infringement.
The Board held that the declaration was admissible evidence under CDR Art 65(1)(f), and that the three documents together proved prior disclosure. The prior art was identical except that it possessed a small trade mark on the base of the bottle, which was an immaterial detail. The design therefore lacked novelty.
The issues of bad faith and ownership of copyright were irrelevant, and the issue of infringement was not one for OHIM but for the relevant Community Design Court: CDR Art 81.
CASE NO.: R 1516/2007-3
PARTIES: NORMANPLAST (Société en nom collectif, represented by TOTAL) v CASTROL LIMITED DESIGN: RCD 000360748-0001
The design was cancelled for lack of individual character over a Hong Kong registered design. The first instance held that the design freedom was wide, being limited only by the need to contain liquid and to pour it out. The proprietor contested the proof that the design would have become known to the circles operating in the EU as required by CDR Art 7(1), and argued that the design created a different overall impression.
The Board held that the issue of knowledge to the relevant EU circles is an exception to the general rule that publication anywhere forms part of the state of the art. Thus, once publication is proved (as here) the burden of proof shifts to the proprietor to show that it would not have become known to the relevant circles in the EU. In the absence of such proof, the Hong Kong design was a relevant disclosure.
As regards individual character, the Board took the view that the relevant product was a container particularly for lubricants such as motor oil. The informed user was therefore not the end user of oil products, nor the designer of containers, but a professional in the distribution of “these products” (presumably lubricants rather than containers, so the informed user would therefore be a buyer and user of containers) who knew about the lubricant market, the different commercial brands and the different container forms.
Design freedom was constrained by the need to make containers approximately parallelopiped in shape with integral handle for reasons of space and ease of filling.
In making the comparison, the fact that both were containers was irrelevant - that was a feature of the products, not the designs. Differences in the base, not normally visible, are of low importance as are purely functional features. Overall, the dimensions and handle shape were different enough to create a different overall impression and confer validity.
CASE NO.: R 211/2007-3
PARTIES: Burberry Limited v. Jimmy Meykranz
DESIGN: RCD 253273-0001
The opponent filed invalidity proceedings against the applicant alleging that their RCD lacked novelty and individual character on the grounds that it was identical to a handbag manufactured by the opponent, which had been accessible to the public before the filing date of the RCD and evoked the same overall impression in the informed user as many of the opponent’s products which use the registered trademark “Burberry Check” pattern.
The opponent provided, as evidence, copies of the relevant registered trademarks covering the pattern, and some of their catalogues showing handbags with the pattern, in addition to a press cutting showing a picture including a Burberry patterned handbag. The Invalidity Division (ID) upheld the design on the grounds that, although the registered trademarks proved the availability of the “Burberry Check” pattern before the RCD application date, the remaining documents failed to prove a conclusive date of disclosure. Further, it was held that, since the registered trademarks did not relate to handbags, rather a two-dimensional material pattern, they were not identical to the RCD, and thus failed to evoke an overall impression identical to the three-dimensional nature of a handbag.
The opponent appealed this decision providing as evidence a witness statement from their IP Counsel, brochures and catalogues of their products, copies of invoices for a selection of those products and a copy of an excerpt from the UK TM register. The opponents argued that it would be possible to interpret the decision of the ID as allowing the possibility of creating a new design every time a differently formed product was used. Furthermore, the opponent stated that the interpretation of “identity” includes the position whereby the relevant portions of the design are identical or whereby the design is identical except for inessential or common details. They argued that the fact that the trademark pattern lacked the contour features of a handbag was irrelevant because the originally submitted evidence proved that this pattern had been used for a handbag before the RCD application date. The opponent further submitted that the check pattern constituted an essential feature of the RCD handbag in comparison with the simple contours of its design, which have no influence on the design itself, thus deeming the use of the Burberry pattern on handbags as constituting an identical pattern design since it differed from the RCD in inessential features. In terms of handbag design, the opponent argued that the form of a handbag was limited insomuch as a handle or strap were normally necessary and therefore. Since the RCD handbag had a simple rectangular form and handle, the average consumer, aware that handbags exist with many different forms, colours, sizes etc., would convey the overall impression on the basis of the decoration, which fully covers the RCD handbag.
The Appeal Board held that the appeal was persuasive and the opponent had proven that the RCD lacked individual character. On the basis of a submitted “Burberry Check” CTM, it was also held that a two-dimensional pattern design evokes the same overall impression when superimposed on a three-dimensional object, regardless as to the nature of the 3D object. Also, the remaining evidence proved that the RCD was almost identical to many of the products in the opponent’s catalogues, thus evoking the same overall impression in the informed user. The Appeal Board revoked the decision of the ID and declared the RCD invalid and apportioned the costs of both proceedings against the applicant. They also pointed out that, since the applicant neither participated in the invalidity proceedings nor the appeal proceedings, there was no reason to doubt the evidence submitted by the opponent.
This rather remarkable decision will reassure brand owners – ignoring the (admittedly conventional) shape of the bag in favour of the striking pattern is a surprising and bold step by the Board.
MP3 Player Recorder
CASE NO.: R 0552/2008-3
PARTIES: Harron v THD Acoustics
DESIGN: RCD 282660-0001
In this case, the Board of Appeal was asked to decide whether an electronic reader lacked novelty over an earlier product which had been commercialised in Europe before the registration date of the Community Design. The owner of the Community Design alleged that the applicant for invalidity had not proven that its earlier design had been made known to the public before its application was filed. The owner of the Community Design also alleged that an equivalent design was filed at the Chinese Office by a Mao XuePing, on its behalf. The owner therefore alleged that the fact that the applicant for invalidity’s design was identical to that filed by Mao XuePing raised questions as to the good faith of the applicant for invalidity. Conversely, however, the applicant for invalidity alleged that Mao XuePing was, in fact, employed by it, and that she would have had access to the design details of the MB920. Accordingly, far from it being the applicant for invalidity whose good faith was in question, it was in fact the good faith of the owner.
The Board of Appeal found that the owner of the Community Design acknowledged that its Design was identical to the MB920 product of the applicant for invalidity. However, the owner disputed that the applicant had proven that the publication of its earlier design would reasonably have been known to the commercial sectors within the Community. This argument was dismissed. The applicant for invalidity had proven imports into Denmark, which automatically meant that the relevant public was deemed to know of the product.
The question was then raised as to whether there had been abusive conduct on the part of the applicant for invalidity. As the owner of the Community Design had made these allegations, it must prove them. The Board of Appeal rejected this allegation. It found that no proof had been advanced to show that the applicant for invalidity had not created the MB920.
With regard to the links between Mao XuePing and the applicant for invalidity, the Board of Appeal found that no proof had been filed to support the theory according to which the plans of the owner’s model would have been shown under an obligation of confidentiality. Additionally, no proof had been filed to show the link between Mao XuePing and the company which would have enabled her to obtain the registration of the Chinese design.
In the circumstances, the owner of the design had not shown that the applicant for invalidity had acted in a manner which questioned its honesty. Accordingly, the invalidation of the design was upheld.
This case raises a number of potentially interesting points about, for example, the question of designs which are disclosed to third parties under a presumption of confidentiality. The suggestion from the Board of Appeal in this case is, as is frequently the case, that substantial evidence must be filed to prove such an allegation. It is clear that the party who alleges must prove, and accordingly evidence of concrete links (contracts of employment, notes of meetings between parties, etc) will have to be filed in order to be able to rely on such an allegation.
CASE NO.: R 690/2007-3
PARTIES: Lindner Recyclingtech v Franssons Verkstäder
DESIGN: RCD 53778-0001
This case concerned chaff cutters (metal cylinders which shred material such as paper). The opponent alleged that the product was not visible in normal use, was wholly dictated by technical function, and lacked individual character. At first instance, the design was upheld as valid.
On appeal, OHIM’s Third Board of Appeal found that the design was not wholly invisible in use – it was held not to be necessary that the part is always visible, and as this part was sometimes visible it was not invalid on that ground alone.
It also involved individual character, because the pictures of the prior art lacked a cylinder – the Board were not prepared to speculate as to whether that would be present in use.
However, they invalidated the design on the basis that it is dictated by technical function. The Board chose not to follow the Opinion of the Advocate General in the Philips ECJ case, nor that of the UK Court of Appeal in Landor & Hawa v Azure or the Spanish Court in Silverlit Toys in adopting the “multiplicity-of-forms” test, but instead adopted the test of designer’s intention, formerly applied in the UK following the House of Lords decision in Amp v Utilux. To quote:
“That provision [i.e. CDR 8(1)] denies protection to features of a product’s appearance that are ‘solely dictated by its technical function’. Those words do not, on their natural meaning, imply that the feature in question must be the only means by which the product’s technical function can be achieved. On the contrary, they imply that the need to achieve the product’s technical function was the only relevant factor when the feature in question was selected.”
The Board rejected the applicant’s affidavit evidence that the design was produced “mainly for aesthetic reasons” as “scarcely credible”.
This decision, arguably the most important Board of Appeal decision to date, radically departs from the first instance position, UK and Spanish case law, and many commentaries on the new EU design law (though there is support for the decision in French and Netherlands case law), making a strong statement that some aesthetic element is required for design protection. It remains to be seen whether the European Court of Justice will follow that line, or its own earlier Advocate-General’s Opinion. In the meantime, as OHIM does not examine for functionality, applicants should not immediately assume the worst – unless their design is within the tiny minority which are the subject of applications to cancel.
CASE NO.: R 1258/2008-3
PARTIES: JPD Distribution v Andrzej Gawin
DESIGN: RCD 000512074-0001
In this case, the applicant had filed an application containing four different views showing, respectively, a first sofa, a second sofa, a chair and a group containing all three (depicted here). Rather than raising a “lack of unity” objection, the Office appear to have assumed that he intended to file to protect only a set of furniture all together, changed the indication of product to “set of stuffed furniture” and registered the design.
In invalidation proceedings, the opponent filed evidence showing the public availability of each of the three items of furniture – but the Invalidity Division upheld the design since they said that the “set” was not disclosed.
The Board of Appeal held that they had been wrong to do so. The design was, properly, for three separate items and each was invalid.
CASE NO.: R 1409/2006-3 and R 1408/2006-3
PARTIES: Línea Hogar Deco v. Venilia S.A.
DESIGN: RCD 378 757-0001
and 378 757-0002
The designs in these cases were for adhesive lining paper depicting a repeating pattern of flowers and a repeating pattern of fruits, respectively, filed on 27 July 2005 and registered under RCD nos. 378 757-0001 and 378 757-0002.
Línea Hogar challenged validity, asserting that the designs lacked novelty and individual character because they had been commercialised by the registrant, Venilia, since 2001. In support, Línea Hogar filed a copy of a catalogue dated “2005 – 2006” and declarations from three of its employees confirming that the designs had been on the market since 2001. It also filed a copy of an interim judgment in which a judge had referred to an apparent admission by the registrant that it had commercialised the designs since prior to the filing of the applications.
Línea Hogar’s challenges failed at first instance. The Cancellation Division found no evidence that the catalogue had been published and distributed prior to the filing of the design. The interim judgment referred to did not make a finding on when the designs were alleged to have been made public, and the Cancellation Division gave little weight to the declarations, as they were made by employees of a party with an interest in the cases. Línea Hogar appealed.
Arguments of the parties
Línea Hogar argued that its proof had been adequate and added, moreover, a further two declarations from unrelated Spanish companies confirming that the challenged designs had been sold since 2001 and had been exhibited at the Valenzia Home Textiles Show in January 2002, 2003 and 2004, and in the Expocadena Show at Seville in April 2004.
A remarkably interventionist Board of Appeal gave both parties multiple opportunities to improve their respective cases. It invited Línea Hogar to file evidence to support the new claims that the designs had been exhibited in Valencia and Seville, but Línea Hogar offered nothing further. The Board then turned to Venilia, asking it to confirm or deny that it had commercialised the designs since 2001. Venilia failed to respond. The Board then turned back to Línea Hogar, pointing out that its declarations did not comply with the formal requirements under Article 65 (1) (f) of the Regulation, and giving it two months to put them right. Again, Línea Hogar was silent.
Against this backdrop, the Board’s decision to uphold the Cancellation Division’s decisions is no surprise. It shared the first-instance view that the “2005 – 2006” catalogue was not proved to have been circulated prior to the filing date, 27 July 2005. It could have been distributed later in the year, and in the absence of indications to the contrary, the Board gave Venilia the benefit of the doubt. As regards the judicial comment cited, this was an interim opinion given after only a summary review of the facts, and could not be given the same weight as a full opinion. Finally, although the Board was clearly attracted to the evidence in the declarations, it declined to take them into account since they did not comply with the formal requirement that they be given under oath or otherwise made in accordance with equivalent national requirements.
CASE NO.: R 120/2009-3
PARTIES: DOPAT S.A. v. J. E. Samper Rives
DESIGN: RCD 794870 – 0003
The holder, Jesús Enrique Samper Rives, applied on 24 September 2007 for Community Design protection in respect of the design of an athletic shoe incorporating a letter “H” on decorative bands down the sides and across the top front of the shoes. The RCD was granted under no. 794870 – 0003.
DOPAT S.A. applied to invalidate the RCD on the grounds of a likelihood of confusion with its earlier CTM registration no. 3783073 for a stylised letter “H”. The action succeeded and the RCD was declared invalid. The holder appealed.
A third company related to the RCD holder, Thomsen Vertriebs GmbH, then applied to cancel DOPAT S.A.’s CTM on grounds of bad faith. The holder therefore petitioned the Board of Appeal to suspend the appeal proceeding relating to RCD no. 794870 – 0003 until the outcome of the cancellation action against the prior CTM was known.
The Board of Appeal noted that it had the power under Article 60 (1) of the Community Design Regulation to suspend appeal proceedings whenever the circumstances justified it.
As the invalidation of RCD no. 794870 – 0003 was based on an earlier CTM whose own validity was being challenged, the Board considered it appropriate to suspend the proceedings in this case pending the outcome of the CTM invalidation action. The appeal was therefore suspended.
CASE NO.: R 608/2008-3
PARTIES: Plantillas Rosmar v. D’Calderoni, Belso Shoes and Roots Universal
DESIGN: RCD 666938– 0007
The joint holders, Belso Shoes S.L., and Roots Universal S.L., applied on 8 February 2007 for Community Design protection in respect of the design of a sandal with crossed straps and a geometrical pattern on the bottom of the sole. The RCD was granted under no. 666938– 0007.
Plantillas Rosmar S.L. challenged the validity of the RCD, asserting that the design lacked novelty and individual character because it was in conflict with Plantillas’ earlier RCD no. 105986-0001, published on 24 February 2004, for the design of a sandal sole.
The Cancellation Division dismissed the application for invalidity. It considered that the earlier design did not destroy novelty in the later one because it represented a different product (a sole as opposed to a sandal), and because the details of the two designs differed. Moreover, as a complete sandal rather than a sole, the later design created a different overall impression on the informed user. The applicant for invalidity, Plantillas, appealed.
On appeal, Plantillas argued that it was possible for a design for part of a product to prevent a later design for the whole of a product from being novel, but that the Division had wrongly failed to recognise this. It asserted, moreover, that the differences in detail as perceived by the Division were the effects of an optical illusion.
The Board of Appeal dismissed the appeal. It found that the designs in question were manifestly different: one was clearly a sandal, while the other was merely a sole. The presence of the straps gave the later design a different overall look that conferred novelty. Moreover, the design of the totality of a sandal created on the informed user a different overall impression than the earlier design for a sole. It was necessary to compare the designs as a whole, not their individual components, to determine their overall impression, and when this was done it was clear that the overall impressions created were different.
The Board noted that Plantillas had referred in its original application to conflict between the designs under Article 25(1)(d) of the Community Design Regulation. Such conflict could include a situation where a later designer copied an earlier design but added an element or designated a different type of product in order to create novelty or avoid a finding that the designs created the same overall impression.
The Board noted that such a ground could form a basis for invalidity, but in this case although Plantillas had referred to it in its original application for a declaration of invalidity, it had not pursued that ground in submissions. Consequently, the Board did not consider it.