Unicity of a Design Requires Consistency of Views
Unicity of a Design Requires Consistency of Views
The EU General Court has recently upheld a EUIPO Board of Appeal decision that a Community design for a rectangular-shaped floor marking was invalid due to insurmountable contradictions or insoluble inconsistencies between the multiple views in which it was depicted.
In the court’s view, the multiple views did not represent a unitary design.
The court held that the Board had not erred in finding that the views filed were not conclusive and presented at least two different designs, meaning that the contested design had been entered in the register in breach of Article 3(a) of the Community Designs Regulation (6/2002/EC) (CDR).
Background
In 2009, Orgatex registered the Community design shown in the views below for “floor markings” (the RCD):
View 1.1 View 1.2
View 1.3 View 1.4
In 2020, Mr Lawrence Longton contested the validity of the RCD pursuant to Article 25(1)(a) CDR read in conjunction with Article 3(a) CDR, and claimed that the design also lacked individual character or novelty on the basis of Article 25(1)(b) CDR, read in conjunction with Articles 4 to 6 CDR.
In 2021, EUIPO’s Cancellation Division found that the RCD was unique and that its views were consistent, and dismissed Mr Longton’s application.
In the view of the Cancellation Division, the subject matter of the protection was clearly identifiable and appeared in a unified and direct manner in the four views represented above, namely view 1.1, representing the top view (upper side), and the other views 1.2, 1.3 and 1.4, representing the bottom views (lower side) of the floor markings. It also found that the RCD had an individual and novel character.
That decision was annulled on appeal by the Third Board of Appeal, which took the view that the views were not consistent and represented at least two different designs.
The Board found that the views 1.1 and 1.2 showed the top view (upper side) and the views 1.3 and 1.4 showed the bottom view (lower side) of the floor markings. The Board declared the RCD invalid on the ground that the views showed at least two different designs because of alleged insoluble inconsistencies between the views and that there was therefore no unitary product within the meaning of Article 3(a) CDR.
Orgatex applied to the General Court to annul the Board’s decision.
Decision
Since case law dictated that the representation of a design for which registration was sought must enable that design to be clearly identified, the court said it was necessary to examine whether the views that constituted the representation as a whole showed the appearance of a single or unitary product; in other words, whether there was “unicity of design”.
The court stated that “inconsistencies or contradictions between the filed views may lead to the conclusion that the representation shows different products, and therefore more than one design. The views relate to more than one design in particular when they constitute different embodiments or versions of the same concept, or when the use of the lines intended to identify the design or the use of the disclaimers of certain features is not consistent throughout the views. There can be no unicity of design if the views constituting the representation as a whole are insolubly inconsistent or insurmountably contradictory, so that the appearance of a single product cannot be determined and, consequently, the representation does not allow a single design to be clearly identified.”
The court noted, as did the Board, that the fact that views 1.1 and 1.2 showed the front face and views 1.3 and 1.4 the rear face, each with a top view and a perspective view, seemed logical and plausible in the light of common experience. This was because in views 1.1 and 1.2, the framing elements of the floor markings had similar dark colours, whereas in views 1.3 and 1.4, the framing elements had lighter colours.
The choice of perspective also led to the assumption that views 1.1 and 1.2 were intended to show the front from two different angles, and views 1.3 and 1.4 the rear from those two different angles.
Applying the hypothesis that views 1.1 and 1.2 showed the front, and views 1.3 and 1.4 showed the rear, the court agreed with the Board that, although the difference in colour of the inner “window” between views 1.1 and 1.2 and between views 1.3 and 1.4 could possibly be explained by the fact that that inner window of the floor markings included a transparent tile that was only visible from a side perspective view, it was impossible to explain the fact that view 1.1 did not show any contour lines between the framing elements, yet those contour lines were clearly visible in view 1.2.
Views 1.1 and 1.2 therefore presented an insoluble inconsistency:
That observation also applied to views 1.3 and 1.4. Whereas in view 1.3 the contour lines were barely visible on the right-hand side, both in the front and rear sections, in view 1.4 they were clearly visible and extended along the entire length of the side frame sections and the inside of the top and bottom frame sections. In view 1.4, the inner window was clearly framed by contour lines.
Views 1.3 and 1.4 therefore also presented an insoluble inconsistency:
The court agreed with the Board that, in the absence of a light source, the difference in shade between views 1.3 and 1.4 could not be explained solely by the difference in perspective between an oblique side view in view 1.3 and a plan view in view 1.4.
Even assuming the lighting were different, the court did not consider it possible to explain the different colour gradation in view 1.3, which changed from a light grey in the lower left to a darker grey in the upper right, and view 1.4, which changed from a light grey throughout the upper part to a darker grey in the lower part.
Moreover, Orgatex had not explained the position of the alleged virtual light source. Views 1.3 and 1.4 therefore presented an insoluble inconsistency.
Accordingly, the court agreed with the Board that the views presented were not conclusive and presented at least two different designs.
Since the contested design had been declared invalid pursuant to Article 25(1)(a) read in conjunction with Article 3(a), the Board had found it was impossible to examine whether the contested design also lacked individual character or novelty on the basis of Article 25(1)(b) CDR read in conjunction with Articles 4 to 6 CDR.
As Ortagex had failed to put forward any arguments capable of calling into question the legality of the Board’s decision, Orgatex’s appeal was dismissed.
Comment
Article 4 CDR expressly authorises the filing of several views of the same design and an applicant is free to choose which illustrations to submit and whether the views submitted are photographs of the actual object, technical drawings or computer-generated representations.
However, as this judgment reminds us, the fact that those views can show the design from different angles and perspectives, including at different scales, means that the applicant needs to exercise caution when choosing representations to ensure that the fundamental elements – the specific types of lines, contours, colours, shape, texture, materials or ornamentation – are shown in a consistent way. It is important to remember that submitting multiple views of a design can lead to discrepancies that could be avoided if a single view would suffice.
Multiple views of the same design have to be consistent to enable the views to be reconciled in the sense of a unitary design and therefore clearly identify one and the same design.
Case: Case T-25/23 Orgatex GmbH & Co KG v EUIPO EU:T:2024:725 (23 October 2024).
