Date: 20 July 2020
Top of the chops: in dismissing an appeal against a EUIPO Board of Appeal decision, the EU General Court has confirmed that a registered Community design representing a wood-splitting tool was devoid of individual character.
The court found that the owner of the contested design was not justified in claiming that, when assessing individual character, the Board had unfairly extended the protection of an earlier design of a wood-splitting tool by taking account of that earlier design in a closed position even though it had been registered in an open position. The Board had not erred in its assessment of whether the proprietor’s registered design was similar to an earlier registered design; the contested design would have produced, to an informed user, an impression of déjà vu with regard to the earlier design and, therefore, the contested design was invalid.
The design at issue:
The earlier design:
The decision serves as a reminder that whether a design fulfils the requirement for individual character is very much in the eye of the beholder. The crucial question is whether the overall impression that the design produces on the informed user differs from the overall impression that an earlier design produced in that person. In other words, there should be no feeling of déjà vu.
Small differences that do not alter the overall impression should be disregarded, even if they are not insignificant details; the important thing is to look for differences that are sufficiently pronounced so that they alter the overall impression. The exercise has to be a synthetic one; as merely listing differences and similarities will not suffice, as Bergslagernas found to their cost.
The comparison is also limited to aspects that are actually protected. As the EUIPO noted, the perception of the informed user and, therefore, the extent of the protection of the design, does not depend on how often a user is faced with the type of product concerned in real life.
Indeed, the informed user of a design is already a person with a particular interest in the design of a given product. The court has already held that this is in contrast to the 'average consumer' applicable in trade mark matters, for whom the experience of coming face-to-face with a certain product (such as a fashion accessory) might play a role in that consumer’s level of attention. Given the fact that the level of attention of an informed user of a design is already high, it is not surprising that the mere fact of being faced with a particular design would not make such a person more or less attentive (see, to that effect, Joined Cases T-22/13 and T-23/13 Senz Technologies v OHMI, EU:T:2015:310).
Our full article on this case has been published in the: Journal of Intellectual Property Law and Practice
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