Can the ideal image of female beauty be considered a limit to a designer’s freedom?

After years of legal battle between Barbie and Bratz [see here] and the more recent trouble in relation to the Frida Kahlo Barbie [covered by The IPKat here], Barbie is back on the legal battlefield, this time obtaining a win before the EUIPO Invalidity Division.

Last month, in fact, the EUIPO declared invalid the Registered Community design (RCD) for the products Doll’s heads and heads for dolls registered on 7.5.2014 by Jieyang Defa industry Co.

The contested RCD

This case is all about (or mostly about) the ideal image of female beauty and the designer's freedom. 

Background

The applicant, Mattel, Inc. invoked before the EUIPO invalidity division Article 25(1)(b) of the Community designs regulation (CDR) in conjunction with Article 4(1) and Articles 5 and 6 CDR stating that:

• prior design had been disclosed more than 12 months before the priority date of the contested RCD;
• the contested RCD lacked novelty;
• the contested RCD lacked individual character.

The RCD holder argued that their dolls were confiscated by Polish customs so there was no proof that they had been made available to the informed user, the designer's degree of freedom was very limited as the dolls were supposed to represent a female type which represents the ideal image of female beauty and the RCD was different from the priority rights on which the invalidity was based, in particular, concerning the shape of the back of the head, the top of the head and the hole at the bottom for the neck.

Analysis

Disclosure and Novelty

As readers might remember, in order to apply articles 5 and 6 CDR, a design should have been made available to the public before the RCD filing date or the RC priority date, except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned.

The invalidity applicant has to prove: 

• the disclosure of the earlier designs, 
• the indication and the reproduction of the prior designs that could form an obstacle to the novelty or individual character of the registered Community design, and 
• documents proving the existence of those earlier designs must be included in the application.

According to T-450/08:

• the invalidity applicant is free to choose the evidence and the Office is required to examine the evidence in its entirety;
• the disclosure of an earlier design must be based on solid and objective evidence;
• the credibility of the contest is essential: for this reason, it is necessary to take account of the person from whom the document originates and the circumstances in which it came into being;
• the documents must be weighed against each other: in fact, if combined or read in conjunction with other documents they may contribute to establish proof of the disclosure.

In the specific case, the division considered the excerpts submitted by the applicant to prove that the design had been made available to the public prior to the filing date.

Individual character 

According to article 6(1)(b) CDR, a RCD is considered as having individual character if the overall impression it produces on the informed user differs from the overall impression produced by any design made available to the public. In assessing individual character, the degree of freedom of the designer shall be taken into account.

The EUIPO invalidity decision recalled that, according to case law:

The designer’s degree of freedom is established by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (T-9/07) and that a general design trend is not a factor that restricts the designer’s freedom (T-83/14, T-84/11)

The informed user is a legal fiction that must be understood, depending on each case, as an intermediate concept between the average consumer, applicable in trade mark matters, of whom no specific knowledge is required and who, in general, does not perform a direct comparison between the marks, and the man of the art, applicable in the field of patents, an expert endowed with extensive technical skills and exhibiting a very high degree of attention when directly comparing conflicting inventions. (T-9/07)

In the present case the relevant sector is that sector of fashion dolls and the attention of the informed user is considered not to be exceptionally high. Moreover, according to the invalidity division, no particular attention will be given to the part of the dolls head above the hairline and the part that connects the head to the neck. Interestingly, the EUIPO invalidity decision underlined that the human mind is very skilled at recognizing faces and that the dolls' heads seem to be modelled after the same person and they wear almost identical make up.

According to the EUIPO the designer’s degree of freedom is restricted insofar as the dolls' heads should resemble a human head but it is not very limited because of the necessity to resemble Caucasians facial features. Moreover the proportions of the dolls’ heads of the designs are not the same as those of human heads consequently the head’s dolls could have had other proportions.

The RCD was consequently declared invalid.

Conclusion

From a general point of view this decision is interesting in that: (1) even in a sector as narrow as fashion head’s dolls, where the head has, obviously, to display a resemblance with a human face, the designer’s degree of freedom was considered to be limited but no too limited, and (2) an ideal image of female beauty (Caucasian facial features, with a tendency towards oriental female facial characteristics and elements) was not considered a limit to the designer’s degree of freedom.