The Trade Marks and Designs Registration Office of the European Union
In its judgment of 13/11/2012, the General Court of the European Union annulled two Decisions of the Third Board of Appeal of the OHIM, which had declared the invalidity of the Community Design Registrations (‘RCD’) No 000593959-001 and No 000593959-0002, for ‘radiators for heating’ in Class 23-03 of the Locarno Classification.
Factual and Legal Backgrounds
An Italian company, Antrax It S.r.l., was granted registration for the following RCD for ‘radiators for heating’:
The registrations were subsequently the subject of an application for invalidity, based on the claim of lack of novelty and individual character. The invalidity applicant based its application on the following earlier design:
The Invalidity Division upheld the application for the declaration of invalidity. It did so essentially, as regards novelty, on the basis that the prior design and the contested RCD were substantially identical since they showed differences which only concerned immaterial details.
The RCD holder appealed to the Board of Appeal claiming that the Invalidity Decision should be annulled and the contested RCD be declared valid.
The Board of Appeal annulled the Invalidity Decision and declared the RCD invalid for lack of individual character pursuant to Article 6 CDR, rather than for lack of novelty, as previously decided by the Invalidity Division. The RCD holder appealed to the General Court claiming the annulment of the Decisions of the Board of Appeal, alleging infringement of Article 6 CDR.
Summary of the Judgment
As a first remark regarding the definition of informed user, the General Court confirmed that the informed user has to be understood not as a user with an average degree of attention, but as a particularly observant one, either because of their personal experience or their extensive knowledge of the sector concerned. This does not imply that the informed user is able to distinguish those elements of the appearance of a product which are merely dictated by its technical function from those that are arbitrary (paragraphs 39, 40).
As regards the scope of protection of a design registration, the General Court clarified that the indication of the product and the classification thereof is only used by the OHIM for administrative purposes. That being the purpose of the terms used by the OHIM to indicate the products in which the design is intended to be incorporated, such an initiative does not replace or invalidate the description indicated in the application for design registration. Moreover the General Court made it clear that the protection afforded by the design is not about the concrete size of a product to which the design is intended to be applied (paragraphs 56, 57).
As regards the assessment of the individual character of the contested designs, the General Court considered the use of broken lines as meaning that those parts of the designs, namely the ends of the collectors, fell outside of the scope of protection (paragraph 55). Therefore, according to the General Court, in this case, what is relevant, are the differences in proportions (paragraph 71). Contrary to the conclusion reached by the Board of Appeal, according to which the differences, taken individually or as a whole, were not considered so significant as to alter the overall impression conveyed to the informed user, the General Court took the view that the Board of Appeal failed to give reasoning on a point raised by the parties to the administrative proceeding before the OHIM, namely that of the density of the field concerned (paragraphs 77, 79, 98). In this respect the Court shed light on the relevance of the density of the prior art in the field concerned for the assessment of the individual character of a design. In this case the General Court held that the degree of freedom of the designer was not limited since the RCD holder failed to prove any technical or legal constraints (paragraph 50). However the Board of Appeal should have considered the claim raised by the RCD holder before the OHIM, following which the field of radiators for heating has a high density in terms of designs displaying similar features. This fact has an effect on the perception of the informed user so that the differences in internal proportions of the designs concerned would be immediately perceived by the informed user and would, then, convey different overall impressions (paragraph 77).
The General Court clarified that the reduced degree of freedom of the designer, due to the existence of technical or regulatory constraints, is a different matter from that of the density of the field concerned. In fact, according to the Court, if a specific sector is considered to be characterised by high density of the prior art, this is for the party alleging it to prove that the informed user is deemed to be more attentive to the differences between the designs in question (paragraph 89).
In this respect, the General Court clarified that the question whether a design does or does not follow a general design trend is relevant in relation to the aesthetic perception of the design and can, therefore, possibly have an influence on the commercial success of the product (paragraph 94). However, the existence of any such design trends cannot be treated as a valid factor to limit the degree of freedom of a designer who, by contrast, has the freedom to discover new forms, new trends and even to innovate within an existing trend. For such an evaluation, the aesthetic considerations, or considerations related to the commercial success of a product in which the design is incorporated, do not count (paragraphs 95, 96).
Knowledge circle “Designs”