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Applying a Standard of Reasonableness in Disclosure: Comments on Decision of 22 March 2012 – INSULATION BLOCKS

Introduction
Disclosure of a design occurs where it is made available to the public following an event which could have reasonably become known in the normal course of business to the sector-specific EU business circles concerned. Just what is reasonable is a question of degree that has to be assessed on a case by case basis. It is a common sense approach. However, the party contesting disclosure can bring objective evidence to show what is considered unreasonable in a particular business circle. Such evidence will be given serious consideration by the Board and can be crucial in the proceedings as was demonstrated by a recent decision of the Third Board of Appeal..

Facts
A Polish company, Termo Organika Sp. Z.o.o., sought and obtained the following Community design registration (‘RCD’) for ‘insulation blocks’:

That registration was subsequently the subject of an invalidation request, based on the claim that the contested RCD was (1) part of a complex product and was not visible during normal use (Article 4(2)(a) CDR); (2) was not new and lacked individual character because of prior designs and (3) had a shape and pattern dictated solely by their technical function.

Contested decision
The Invalidity Division upheld the invalidation application. It did so essentially on the basis of lack of individual character, rejecting the other claims. The central pillar of the invalidity applicant’s claim of lack of individual character under Article 25(1)(b) CDR of the challenged RCD was the existence of the following prior Turkish utility model application that served as a prior right to a German utility model application:

The contested decision found that both the German utility model application and the Turkish priority document were available to the public by means of an inspection of files at the German Patent and Trademark Office (the ‘GPTO’). The Invalidity Division found that the freedom of the designer in relation to the product was limited and that the informed user would pay more attention to features that were not limited by technical constraints, such as the design pattern. Both the pattern of the designs compared and their shape were judged to be similar to a very high degree. Thus, the prior design formed an obstacle to the individual character of the challenged RCD and was held to be invalid on this ground.

Appeal
The holder of the challenged RCD took issue with both the finding that the German and Turkish utility models in question had been disclosed and the conclusion that the later design lacked individual character. It therefore appealed to the Board of Appeal.

As a first remark, the Board noted that it was able to entertain a cross-claim by the invalidity applicant, challenging the findings on the applicability of Article 4(2) CDR. Article 8(3) BoA-RP allows the defendant to an appeal to ‘seek a decision annulling or altering the contested decision on a point not raised in the appeal’.

The Board also held that it was appropriate for it to exercise its discretion under Article 63(2) CDR to admit new evidence on appeal in this case. The Board was swayed in this regard by the fact that there is no time-limit for bringing an invalidity action, that the evidence supplemented evidence already provided and seemed, prima facie, likely to be relevant to the outcome of the case and, lastly, that it included court judgments that were not available at the time of the proceedings before the invalidity Division.

The issue of whether the German utility model, claiming priority from a Turkish utility model, had been ‘made available to the public’ and thus disclosed in the sense of Article 7 CDR, was answered in the negative by the Board. In this case, the German utility model in question had been registered before the priority date of the challenged RCD. However, it was not published until after the RCD’s priority date. The question to be answered was thus whether the presence of a document in a file kept by the GPTO (and only available by means of public inspection) could reasonably have become known in the normal course of business to the circles specialized in the sector concerned.

The Board recognized that, in theory at least, utility models that are filed but not yet registered at the GPTO may be searched subject to ‘a certain amount of time and effort on the part of the searcher’ (paragraph 40 of the decision). Utility models that are pending publication are listed in the search hall of the GPTO in Munich and the Technical Information Centre in Berlin, setting out merely the application numbers and the IPC class. Further database enquiries would just give bibliographic and status details. The only way to visualize the actual drawings would be to ask for a physical inspection of the individual file (paragraph 40 of the decision).  

On a practical level, the Board noted that the RCD holder had produced letters from four different design search companies, showing that ‘it is not a matter routine in the ordinary course of business of the circles specialized and operating in the economic sector in question to conduct a search for registered, but not yet published utility models by inspecting the files of [the] corresponding national office’ (paragraph 41 of the decision). The possibility of inspection cannot, therefore, ‘reasonably be considered to have [led] the design to have become known in the normal course of business to the circles specialized in the sector concerned and therefore prove the disclosure of a prior design in the meaning of Article 7 CDR’ (paragraph 44 of the decision).

Having concluded that there was no disclosure, the Board did not need to rule on technical functions or individual character. On the other hand, the issue of the visibility in normal use was subject to additional facts, evidence and arguments, which the Board found it appropriate to remit to the Invalidity Division for further assessment.    

Conclusion

If information on a design can only be obtained by placing an unreasonable burden on interested circles, it cannot be considered to have been disclosed. The proactive approach of the appellant in this case enabled the Board to see clearly how requiring interested persons to go to a national office and make a physical inspection of the files would be overly onerous. Explaining the mechanics of what would have needed to have been done to obtain the information was crucial. Importantly, independent evidence was brought forward to attest to normal business practices, rather than relying on bald assertions.

Whether the same result would have been produced in other national contexts depends on the practices of those national offices. In particular, the question that may still needs to be answered at some point is whether it would be unreasonable to expect interested circles to request online inspection of files of designs that have been registered but not yet published (assuming that such inspection is admitted as a matter of national law).

Finally, the case decided by the Board also shows a willingness by the Board to be practical in the exercise of its discretion to admit supplementary or additional evidence by transposing trade mark practice to a design context. Similarly, the rules on cross-appeal (Article 8(3) BoA-RP) apply to trade marks and designs alike.

Knowledge circle “Designs”