Senz and Sensibility: what the informed user of an umbrella sees

Design in Case T-22/13

In Joined Cases T-22/13 and T-23/13 Senz Technologies v OHIM - Impliva (Parapluies) the General Court decided on an application to invalidate two of Senz's Community designs consisting of the appearance of umbrellas as represented on the right.

Impliva challenged the registrations on absolute grounds, under Article 52 in combination with Article 25(1)(b) of Regulation 6/2002 on Community designs, on the ground that the contested designs produced the same overall impression as the umbrella covered by an earlier American design patent, registered in 1996, and therefore lacked individual character.

The Cancellation Division upheld the invalidity claim as did the Board of Appeal, which considered that the design holder should know the prior art in the field of umbrellas, especially the one contained in the US patent register, one of the most important in the world (as an aside, the United States and Japan recently acceded to the Hague System for the International Registration of Industrial Designs, extending its coverage to 64 countries). In addition, since United States is the most important trading partner for the EU, those who specialise in umbrella trade should be expected to consult the USPTO register.

Design in Case T-23/13

In respect of the parameters for assessing distinctive character, the Board of Appeal concluded that the freedom of the designer was limited when applied to the shape or size of an umbrella. Moreover, the informed user wishing to buy an umbrella would pay attention to its basic structure and not to the details, even when paying a high level of attention. In this case the Board of Appeal held that the parties' respective designs produced the same overall impression, in that both the patent and the designs have a beak-like shape while ‘the distribution of the ribs the proportion of the canopies and the spacing are similar’; importantly, they also shared an asymmetrical shape given by the off-centre shaft).

Senz Technologies argued before the General Court that the Board of Appeal wrongly assessed the disclosure in the US design patent according to Article 7(1) of Regulation 6/2002. Said Senz, its designs had individual character insofar as they sought to produce a different overall impression on the informed user to that conveyed by any prior art, as provided by Article 6 of Regulation 6/2002.

US patent 5505221

Annulling the decision of the Board of Appeal, the General Court first held that the registration of an earlier design patent, covering the shape of an umbrella, was a sufficient reason for accepting that some prior art had been disclosed within the specialised circles of the umbrella sector in the EU, as required by the law. This was even more so because the contested designs involved highly wind-resistant umbrellas for which protection encompassed both their aesthetic and technical requirements. It followed that the informed designer must know about patent systems and check patent registries before placing the umbrellas in the market.

US patent 5505221

Said the General Court, Senz failed to substantiate its arguments with evidence and its arguments did not serve the purpose of contrasting the disclosure of the prior patent. First, it did not prove that even EU IP lawyers would disregard the registration of design patents in the USA. Secondly, it did not furnish proof that the circles specialised in the umbrella sector would include only individual designers or small companies which could not afford prior art searches outside the EU. Thirdly, even though no advertising or marketing materials existed for the US umbrella since it was never manufactured, specialised umbrella makers still might have become aware of it through patent searches. Finally, Senz could not demonstrate that the United States was a small trader regarding the umbrella sector in the EU, so to reduce its importance when taking account of relevant prior art.

US patent 5505221

Senz had better luck with its second plea, since the General Court agreed that, notwithstanding the prior art, the two contested designs did after all have individual character of the two contested design. While the Court confirmed the Board of Appeal's definition of the informed user and agreed that the freedom of the designer was limited, it concluded that the different overall impression produced by the patent against those created by Senz's designs was due to the umbrellas' canopies: the patent disclosed a flat surface in the middle and curved lateral contours forming a regular octagon, while the designs had a pyramidal and quasi-pyramidal shape with bent lateral contours forming an irregular octagon. The General Court emphasised that the asymmetrical shape shared by the US patent and Senz's designs could not  offset the perception of their differences in the mind of the informed user. To this end, contrary to OHIM's submission, case-law of the saturation of the state of art did not not assist in reaching that conclusion.

The off-centre shaft in respect of the umbrella's canopy was not a dominant feature within the comparison of three asymmetrical umbrellas, said the General Court, which also declined to give greater importance to the underneath perspective of the umbrellas, in that design right protects the appearance of a product as it is reproduced and not its non-visible perspective. Finally, the fact that the umbrellas incorporating the designs also fulfil the technical function of being particularly wind-resistant did not exclude the possibility of protecting them in so far as the General Court has found they had individual character.

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