Date: 14 May 2018
By Hugh Dunlop
Case T-174/16 Wessel-Werk v EUIPO & Wolf
We report on a design battle between two competing manufacturers and suppliers of vacuum cleaner accessories in Germany. The dispute initiated in the EUIPO over a simple design for a “thread lifter” element of a vacuum cleaner nozzle and was elevated to the Court of First Instance of the CJEU when the registration was revoked by the Office.
We select this case to illustrate the limits of scope for registration of product parts that are largely (but not necessarily “solely”) dictated by function.
On 18 May 2007 Wessel-Werk GmbH, registered a Community Design for a “Suction nozzle for vacuum cleaner”. The design was published on 18 May 2007.
Registered Community Design No. 725932-0004
On 15 November 2013, Wolf PVG GmbH applied for annulment of the design, on grounds, inter alia that it lacked novelty vis-à-vis earlier Community design No. 493945-0002.
Prior Registered Community Design No. 725932-0004
By decision of 19 June 2014, the Cancellation Division dismissed all the grounds for invalidity and Wessel-Werk appealed to the EUIPO Board of Appeal. Two years later (18 February 2016), the Third Board of Appeal of EUIPO upheld the appeal and declared the Design to be void.
Decision of the Board of Appeal of the EUIPO
The informed user was a person who uses vacuum cleaners, and not a designer or technical expert. That person is aware that these products usually have a thread lifter.
The degree of design freedom of the designer of the thread lifter is somewhat limited. The dimensions must suit the nozzle and it must be made of a material suitable for picking up threads and fibers and give sufficient traction.
There were no restrictions on colour, but difference between the brown color of the registered design and the red color of the older design did not create a different overall impression to the informed user.
CFI dismisses appeal
Wessel-Werk appealed with the EUIPO as defendant and Wolf as an intervener. The Court of First Instance dismissed the appeal and upheld the annulment of the registration.
The term “informed” implies that the user, without being a creator or a technical expert, knows various designs that exist in the economic sector concerned, that he has some knowledge of the elements that these designs usually have, and that he uses these products with considerable attention. The peculiarity of a design derives from an overall impression of the difference or a lack of déjà vu from the point of view of the informed user in relation to anything that has gone before.
The informed user:
In assessing the overall impression that a design has on the informed user, it is necessary to consider the way in which the product represented by the design is used.
The informed user would have considered that the thread lifter covered by the design was part of a vacuum cleaner. He did not isolate the thread lifter. He attributed only minor significance to it.
By decision of 14 March 2017 the CFI found that there was no different overall impression. According to the Court, the Board had conducted that assessment without error and the annulment should be upheld.