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OHIM
The Trade Marks and Designs Registration Office of the European Union
You are here: Home > About OHIM > OAMI-ONLINE - Newsletter 07 - 2010 - Adding New Features to a Prior Design
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CTM applications on track for record year - Interview
The Interview - Community Trade Mark
Magazine CTM has classes revoked for non-useCountry overview: Slovakia - Community Design
Adding New Features to a Prior DesignCountry overview: Slovakia - E-business
RCD e-certificates on the wayE-Business Roundup - More News
OHIM collaboration with Turkish Patent InstituteStatistical highlights - Case-Law
Luxembourg Case-LawNew Decisions from BoA
Adding New Features to a Prior Design
What would you do if you found your design copied and pasted into a registered Community design (RCD) of somebody else? Certainly, you would run to have the RCD declared invalid. And certainly it would not amuse you to see your claim rejected by the Invalidity Division of OHIM. However, this is what actually happened in the two cases presented below.
In the first case, the owner of the prior design RCD 73952-0001 (see picture below left) submitted an application for a declaration of invalidity against the later RCD 625702-0001 (below right) arguing that the later design is identical to his prior design except for the addition of an element with no esthetical function. In fact, both designs concern a “reducer” – basically a gear box – with an identical body. However, in the later RCD a flange in the form of a disc-shaped element has been attached to the right side of the body.
Whether such an addition can turn an old box into a new design is not an easy question. Indeed, the Invalidity Division rejected the application (in decision ICD 3960) on the ground that the added feature makes a significant impact on the overall impression of the design and thereby establishes the novelty and individual character of the later RCD. However, the decision was overturned in appeal (R 1337/2008-3) because the Boards of Appeal found that the later design “inevitably produces the same overall impression as the prior design on the informed user because it reproduces all the characteristic features of the prior design and does not do anything else than adding another element which is part of the normal use for this type of products.” The case is now pending before the General Court (T 246/10).
The second, recent case concerns RCD 573993-0003 (below right) registered for a toy vehicle with an identically designed body as in the prior International design registration DM/04460 (below left), but the later RCD comprises additional features.
Again, the owner of the prior design applied for a declaration of invalidity of the later RCD and again the Invalidity Division (decision ICD 7036 of 6 July 2010) rejected the claim because the additional features were considered enough to establish the novelty and the individual character of the contested RCD.
So, how may an owner of a prior design fight copy-and-paste cats efficiently? The answer is: by action on infringement, not invalidity. In the moment a product is put on the market including the prior design, an action by the owner before a Community design court for infringement of his/her prior right will do. In contrast, the use of a prior design in a later RCD is not a ground for invalidity as such. Where the prior design was already available to the public before the date of filing of the RCD and where the RCD contains additional features with a significant impact on the overall impression produced by the design on an informed user, an application for a declaration of invalidity of the RCD is likely to fail.