The General Court has upheld an EUIPO Board of Appeal decision that a design for a wardrobe (shown below on the right) lacked individual character over an earlier design (shown below on the left), rendering the design invalid under Article 6(1)(b) of the Community Design Regulation (6/2002/EC).

 

Background

 

In 2013, the Polish furniture manufacturer Fabryki Mebli “Forte” registered the Community design shown below on the right for “Furniture”:

 

 

Bog-Fran’s earlier design	Contested design (owned by Forte)

 

In 2016, Bog-Fran contested the validity of Forte’s design, claiming that it was not new and that it lacked individual character.

 

The following year, the EUIPO’s Cancellation Division declared Forte’s design invalid on the basis that it did not have the individual character required by Article 6 CDR.  However, that decision was annulled by the Third Board of Appeal, which took the view that that Bog-Fran’s earlier design had not been made available to the public in accordance with Article 7(1) CDR.

 

Bog-Fran applied to the General Court to annul the Board’s decision.

 

First time around, the court found that the Board had erred in finding that Bog-Fran had not demonstrated disclosure of the earlier design within the meaning of Article 7(1), and sent the case back to the Board for a decision on whether the circles specialised in the sector concerned would have knowledge of the events constituting the disclosure at issue (see Case T-159/19 Bog-Fran v EUIPO EU:T:2020:77) (“the annulling judgment”).

 

In 2020, the CJEU ordered that Forte’s appeal against the annulling judgment was not allowed to proceed (see Case C‑183/20 P Fabryki Mebli “Forte” v Bog-Fran EU:C:2020:562).

 

In 2020, the Third Board of Appeal heard the remitted case and dismissed the appeal against the decision of the Cancellation Division, on the grounds that Forte had failed to establish that the events constituting disclosure could not reasonably have become known to the circles specialised in the sector concerned.  The Board concluded that the earlier design had been made available to the public and that the contested design lack individual character (“the contested decision”).  Forte appealed to the General Court to annul the contested decision.

 

Decision

 

The court held that the Board had not erred in observing the force of res judicata attached to the General Court’s previous finding that an earlier, similar design had been disclosed.

 

The Board had also been right to find that it was for the applicant to establish that the circumstances of the case reasonably prevented disclosures of the earlier design from becoming known to the circles specialised in the sector concerned in the normal course of business and that the applicant had failed to do so.

 

The court considered the minor differences between the designs at issue to be immaterial since, as the Board had found, the contested design lacked individual character, insofar as it produced the same overall impression as the earlier design on the informed user.

 

Comment

 

This decision is a useful reminder that, although it might be easy to obtain a registered Community design (the EUIPO only carries out a formalities check and does not check whether a design is new or if it possesses individual character), the validity of this right can be challenged once the design has been registered.  Before any filing, it is therefore advisable to ensure the novelty of the design by checking that there is no earlier design on the market that conveys the same overall impression, and to avoid disclosing the design to a third party before filing (or ensure that the application for design protection is filed within a maximum period of one year from the date the design was first disclosed).

 

Case citation: Case T-1/21 Fabryki Mebli "Forte" v EUIPO EU:T:2022:108 (2 March 2022). 

 

Our full article on this case appears in the Journal of Intellectual Property Law & Practice: please click here for link to abstract.