Multiple personality disorder amongst the public for Community designs?

This is the question posed by Katfriend Gerben Hartman (Brinkhof N.V.)  in relation to the recent judgment of the General Court (GC) in Group Nivelles/OHIM, T-15/13. Here's what Gerben writes:

"In its judgment of 13 May 2015 (Group Nivelles/ OHIM, T-15/13 – English translation not yet available) the General Court (GC) of the EU decided on which prior designs may be taken into account for the assessment of novelty and individual character of Community designs. The dispute concerned the validity of a registered Community design for an elongated shower drain. This RCD is applied to products in the consumer market for home and sanitary appliances. The submitted prior art drain was applied to products for industrial use. The question was whether such prior art may be included in the assessment of validity. The outcome is remarkable.

According to the GC, all identical designs, even applied to or incorporated in other products, that are made available to the public are considered novelty-destroying. However, for individual character the nature of the product to which the design is applied or in which it is incorporated and the sector to which it belongs are considered relevant. Although other products are not excluded from the individual character assessment per se, the assumption that the informed user knows of the various designs which exist in the sector concerned does not cover other products.

Such knowledge is considered a prerequisite for lack of individual character.

Gerben Hartman

The GC’s main argument for inclusion of designs applied to or incorporated in other products in the novelty assessment is that a Community design gives rights enforceable against use on any product or use of any design which does not produce a different overall impression (with reference to art. 10 and 19 CDR). In addition, disclosure pursuant to art. 7(1) CDR subject to knowledge of the circles specialised in the sector concerned within the Community, was held not to be limited to the product wherein the Community design is incorporated or whereto it is applied. This exception concerns the sector to which the potential prior art belongs and is aimed to exclude only prior art that is obscure even to those operating in that sector within the Community (with reference to CoA E&W (Jacob-LJ) 23 April 2008, Green Lane/PMS, par. 73-79).

For individual character the GC adopted its different view based on art. 6 CDR in light of recital 14 and its concept of the informed user. The GC repeated that the status of ‘user’ implies use of the product in which the design is incorporated in accordance with the purpose for which that product is intended (with reference to GC EU 22 June 2010, Shenzen Taiden/OHIM, T-153/08, par. 46 and GC EU 9 September 2011, Kwang Yang/OHIM, T-10/08, par. 24).

The Court therefore held that the assessment of individual character should be made in view of the user of the product to which the design is applied or in which it is incorporated.

RCD

This would mean that any prior art product may be considered for lack of novelty, but not necessarily for lack of individual character. A community design would lack no individual character over prior art with the same overall impression concerning another type of product, unless additional knowledge of this other product is evidenced (i.e. positive correction of the assumption that the informed user has knowledge of designs relating to the same type of products only).

If one accepts the GC’s argument that novelty should be assessed in relation to prior art extending to all kinds of products as a Community design gives rights enforceable against the use on any product or use of any similar design, then this should equally apply for individual character. In respect of novelty, the GC expressly referred not only to art. 19 but also to art. 10(1) CDR, which reads:

“The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.”

This provision is construed by the GC to provide universal protection (i.e. regardless of the specific product), even though this comparison is expressly made in view of the informed user. This also couples scope of protection and use. It appears inconsistent to take a universal approach for scope of protection and a product-specific approach for individual character. The GC referred to recital 14 for support.

Relying on the preamble is skating on thin ice. The preamble is not binding and where the provisions remain silent (i.e. on ‘the nature of the product’) their wording is not easily interpreted otherwise (cf. ECJ 19 June 2014, Karen Millen/Dunnes, C-345/13, par. 31 [here]).

Skating on thin ice?
Kats can do it

In addition, the ‘public’ pursuant to art. 7(1) CDR is the same for the purposes of articles 5 and 6.   

For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b), as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community.

Both articles 5 and 6 CDR require the comparison to be made in respect of designs made available to ‘the public’ in accordance with article 7 CDR. If this provision is held not to be limited by the product wherein the Community design is incorporated or whereto it is applied, this interpretation should hold true both for novelty and individual character. Otherwise there is multiple personality disorder amongst the public for Community designs.

Does the GC’s differentiation between novelty and individual character have any practical implications?

The actual impact is dependent on the strictness of the novelty and individual character tests.

For the novelty assessment designs shall be deemed to be identical if their features differ only in immaterial details (art. 5(2) CDR). According to the GC this means that such details are not immediately perceptible and would not therefore produce differences, even slight, between those designs (GC EU 6 June 2013, Kastenholz/OHIM, T-68/11, par. 37).

Prior art

For the individual character assessment an informed user will in principle be guided by the basic structures alone and not by differences in the details, which do not produce different overall impressions on him. The greater the designer’s freedom in developing a design however, the less likely it is that minor differences may produce different overall impressions (GC EU 9 September 2011, Kwang Yang/OHIM, T-10/08, par. 33 and 44). In practice the novelty test is quite strict, whereas the individual character assessment is more lax.

Too rigid application of these tests may have the undesired result that prior designs concerning other products in more or less similar sectors may not invalidate a Community design with an immediately perceptible different detail in one of its features, even when the overall impression is the same. The Community design would, when adopting a universal scope of protection, be enforceable against any design which does not produce a different overall impression. This may not only make unlawful what had previously been lawful, but may also introduce abuse of registration formalities (see CoA E&W (Jacob-LJ) 23 April 2008, Green Lane/PMS, par. 75). This outcome is undesirable. In any case, the relevant products (single-type or any-type) should be the same for the assessment of infringement and validity (i.e. novelty and individual character).”

Thanks so much for this detailed and thorough analysis, Gerben!