How many lawyers does it take to change a light bulb?

There are quite a few punch lines to this question, sadly none has been mentioned in a recent judgment from the General Court involving the design of a light bulb and the interpretation of Art. 7(2) Community Design Regulation (‘CDR’).

According to this provision certain acts of disclosure will not be considered in the assessment of novelty and individual character of a registered Community design (‘RCD’)

if a design for which protection is claimed under a registered Community design has been made available to the public:

(a) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title; and

(b) during the 12-month period preceding the date of filing of the application or, if a priority is claimed, the date of priority.

The purpose of this exception is explained in Recital 20 CDR:

It is also necessary to allow the designer or his successor in title to test the products embodying the design in the market place before deciding whether the protection resulting from a registered Community design is desirable. To this end it is necessary to provide that disclosures of the design by the designer or his successor in title, or abusive disclosures during a period of 12 months prior to the date of the filing of the application for a registered Community design should not be prejudicial in assessing the novelty or the individual character of the design in question.

The question is whether the previously disclosed design must be identical to the RCD registered subsequently. This has been explored by the General Court.

Background

Liquidleds Lighting Corp. (‘Liquidleds’) obtained registered Community design (‚RCD‘) no. 003619881-0001 covering the following view:

Lidl Vertriebs GmbH & Co. KG (‘Lidl’) filed an application for a declaration of invalidity with the European Union Intellectual Property Office (‘EUIPO’). The invalidity application was based on an earlier design which produced the same overall impression as Liquidleds’ RCD.

The EUIPO dismissed the application and the EUIPO’s Board of Appeal (‘BoA’) dismissed Lidl’s appeal. They found that the earlier design could not be considered disclosed because of Art. 7(2) CDR. Lidl filed an action with the General Court.

The General Court’s decision

The General Court dismissed the appeal.

1. Interpretation of Art. 7(2) CDR

Lidl argued that the pre-disclosed design, which it invoked against Liquidleds’ RCD, is not identical to the contested RCD meaning that the conditions of Art. 7(2) CDR are not fulfilled.

The General Court disagreed.

a. The judges argued that Art. 7(2) CDR makes an exception from the requirements of novelty (Art. 5 CDR) and individual character (Art. 6 CDR). Novelty requires that no identical design has been disclosed prior to the contested RCD. Individual character requires that no design has been disclosed prior to the contested RCD that produces the same overall impression. If the designs had to be identical, the reference to Art. 6 CDR in Art. 7(2) CDR would have no scope of application.

b. Further, lack of individual character may follow from the disclosure of an identical earlier design, because such a design cannot produce a different overall impression. However, this is not the only case where the individual character has to be denied. Any disclosure of an earlier design producing the same overall impression leads to a finding of a lack of individual character.

c. Lidl argued that the wording of Art. 7(2) CDR suggests that the designs have to be identical. The Court recalled that EU legislation must not only be interpreted on the basis of the wording but also taking account of the context and the aims of the legislation. Art. 7(2) CDR does not use the words ‘identity’ or ‘identical’ nor does it require that ‘the same design’ has been disclosed. Unlike in Art. 41(1) CDR (dealing with priority claims), where the legislator explicitly included the requirement of the ‘same design’, the wording of Art. 7(2) CDR is not as restrictive.

Moreover, Recital 20 CDR mentions that the prior disclosure of the design does not affect the individual character of the RCD.

d. The purpose of Art. 7(2) CDR is to protect the interests of the designers. They may test a design for a period of 12 months before having to proceed with the formalities of filing. During that period, the designer may ascertain whether the design is a commercial success before incurring the costs of registration, without fear that the disclosure may be successfully raised during invalidity proceedings.

The judges also referred to Recital 7 CDR, stating that the protection system of Community designs seeks to encourage innovation and development of new products and investment in their production.

These aims and purposes would be undermined if the designer was not allowed to learn from the test of the design during the grace period and could not adjust it.

2. Burden of proof

Another issue in the judgment was the burden of proof with respect to the exception of Art. 7(2) CDR.

The Court found that the invalidity applicant has to demonstrate that the contested design does not fulfil the conditions of Art. 4 to 9 CDR.

However, with respect to Art. 7(2) CDR, it is for RCD owner to establish that that it is (1) either the designer or its successor in title, (2) that the design has been disclosed by itself or by a third person as a result of information provided or action taken by it and (3) that the disclosure took place during the grace period. The invalidity applicant may file its observations but does not have the burden of disproving the conditions of Art. 7(2) CDR. The judges held that the BoA complied with these principles.

Since Lidl did not dispute that the previously disclosed design by Liquidleds produced the same overall impression as the contested RCD, the invalidity application failed. 

 

Comment

The General Court’s reasoning is sound and clarifies the somewhat ambiguous wording of Art. 7(2) CDR. It would indeed be a strange interpretation of that provision to allow a designer to test its RCD but not to make amendments that do not change the overall impression. The Court of Justice of the EU will have the final say on this matter, if Lidl appeals and the court admits the appeal.

The picture is from Anete Lusina and used under the licensing terms of pexels.com.