OHIM design invalidity decision

The IPKat has come across a nifty little RCD invalidity decision from the OHIM Invalidity Division.

Zygmunt Piotrowski obtained an RCD for packaging intended to hold three bottles together. However, he made a fatal mistake – one of his representations of his design published in the Community Design Bulletin showed his product holding together three bottles of Danone’s Danviva drink, replendid with Danone’s trade marks.

Danone took umbrage and sought the mark’s invalidation under Art.25(1)(e) of the Community Design Regulation. The Invalidity Division granted Danone’s request. After establishing that Danone did in fact have registered trade marks that corresponded to those shown in the RCD, the Division found that Danone could have stopped their use under Art.5(1)(a) of Directive 89/104 and so the Art.25(1)(e) case was made out. The Division was not impressed by Piotrowski’s argument that Danone’s products were not part of the design, finding that everything that is depicted in images representing the design constitutes part of the design, unless it is specifically disclaimed.

The IPKat says that the moral of the story is simple – don’t use someone else’s IP-protected goods in your IPR application without their permission. For the most part this decision is sensible as the need to disclaim removes any doubt or subjectivity from the proceedings. However, the IPKat wonders whether, if one used a photograph of one’s article against a blue background, would one now have to disclaim the background to avoid it being considered part of the design?