A design for heated socks is not necessarily functional, says EUIPO BoA

In a recent decision, the Third Board of Appeal (BoA) of the EUIPO found that a design for heated

socks, pictured to the lower right, is not necessarily functional (case R 878/2022-3). The case featured various central issues in EU design law: from what a must-fit design is, through the definition of “normal use”, to the methodology for establishing functionality.

Background

Design owner, Lenz, sells products known as “heated socks”. The product heats itself with a rechargeable battery, depicted below. This battery is fixed with snap fasteners on a knee-high sock [this Kat recommends checking a video here for a better understanding]. Heated socks are especially useful for winter activities such as skiing.

In 2012, Lenz registered the Community design, shown to the  right. The lower part of the design is sketched in dashed lines. Thus, only the upper part is included within the scope of protection. In 2020, Lenz’s competitor, Wintersteiger, filed an application for invalidation of this design to the EUIPO.

But to understand the invalidity claim before the EUIPO, one must consider the parallel litigation between Lenz and Wintersteiger in Austria. There, Lenz filed a claim to the Vienna Commercial Court, alleging design infringement by Wintersteiger. Wintersteiger filed a counterclaim, asking the court to find the design invalid.

While the Vienna Commercial Court was considering the invalidity counterclaim, Lenz applied for an interim injunction. It asked the court to prohibit Wintersteiger from selling its heated socks.

First the Vienna Commercial Court, then the Higher Regional Court of Vienna (OLG Wien), and finally the Austrian Supreme Court, all denied the request for an interim injunction. Though the subject-matter was the interim injunction and not the design’s validity, the respective rulings did address some of the issues later raised by Wintersteiger in front of the EUIPO.

The OLG Wien (1R11/21a) discussed, whether a heated sock is a component part of the complex product (which would be composed of the sock and the battery). If so, the upper part of the sock must remain visible during normal use (Art. 4(2) Regulation 6/2002 on Community designs).

As Kat readers may remember, up until recently German-speaking courts have been interpreting the notion of “normal use” narrowly, due to differences in translation between the various versions of Regulation 6/2002. Hence, the OLG Wien argued, the snaps would be covered by the battery during the normal use, i.e., when the sock is worn. This part of the design is not eligible for protection.

Alternatively, said the OLG Wien, one may decide that the heated sock is not a component part of a complex product. In this case, the snap fasteners would fall under the prohibition of must-fit features. Under Art. 8(2), a design may not subsist in features that must necessarily be reproduced in their exact form and dimensions in order to permit the product to be mechanically connected to another product (i.e. upper snap piece on the battery and lower snap piece on the sock).

No matter the approach chosen, concluded the OLG Wien, the part with snap fasteners shall be excluded from design protection. The remaining design has a narrow scope of protection, and would not be infringed by Wintersteiger’s products. Thus, the OLG Wien denied the request for intermediary injunction against Wintersteiger. This reasoning was confirmed by the Austrian Supreme Court (4Ob72/21y).

Despite these statements, in the counter-claim proceedings, the Vienna Commercial Court found that it could not decide on the design’s validity due to lack of competence.

Invalidity proceedings in front of the EUIPO

Wintersteiger turned to the EUIPO’s Cancellation Division. They argued inter alia that (i) the contested design is a component of a complex product that does not remain visible during normal use (art. 4(2)); (ii) it consists exclusively of technically functional features (art. 8(1)); and (iii) the snap fasteners are a must-fit element, for which design protection is void (art. 8(2)).

The Cancellation Division had rejected these claims. The BoA did so as well, primarily on the ground that Wintersteiger had failed to provide sufficient evidence to substantiate its allegations, as follows.

First, the BoA observed that Wintersteiger did not provide evidence to show that the heated sock is a component part of the complex product in the sense of Art. 4(2).

Even if it were the case, continued the BoA, the snap fasteners on the sock would still be visible during “normal use”. To reach this conclusion, the BoA applied the ruling in C-472/21, delivered just one day prior. There, the Court of Justice explained that the concept of “normal use” shall be interpreted broadly (unlike what is done in German-speaking courts). The normal use of a heated sock thus includes plugging and unplugging the battery, making the snaps visible.

The BoA then addressed whether certain features of the contested design were exclusively due to the technically function of the product and thus would be excluded from design protection (art. 8(1)). To do so, the BoA applied the Court of Justice findings in Doceram.

According to the BoA, Wintersteiger failed to prove the applicability of Art. 8(1). The technical function of the product is to warm the feet. The contested design consists of the following features: (a) a bottom band made of fine-mesh fabric; (b) a rectangle made of firm fabric and positioned in portrait format on the bottom band; (c) three snap fasteners arranged vertically on the rectangular fabric; and (d) washing instructions and consumer information in white letters in the lower part. Features (a), (b), and (d) are not technically functional.

Regarding feature (c), the three snap fasteners, the product’s technical feature was not the only factor. The choice of having three snap fasteners and placing them vertically indicates creative or aesthetic considerations in the design. This is not least because only two snap fasteners are technically necessary for power delivery.

The BoA then discussed whether the prohibition of design protection for “must-fit” features applies (Art. 8(2)). According to the BoA, Art. 8(2) may be applied only if all essential features of the design are must-fit. The contested design includes other features apart from the snap fasteners (e.g., a sock fabric and washing instructions, as defined by the BoA). Thus, Art. 8(2) is not applicable.

This Kat notes the identical wording of Art. 8(1) and 8(2): “a Community design shall not subsist in features of appearance, which…” are either functional or must-fit. Thus, where a product combines both functional and non-functional features, the functional ones are disregarded, and only non-functional ones are deemed covered by the design. Strangely, the BoA did not apply the same approach to must-fit features. If it had, it would have enabled (rightly) excluding the three snap fasteners from design protection.

The upshot is that the BoA rejected Wintersteiger’s application to invalidate Lenz’s design to heated socks. Wintersteiger may now appeal the decision to the General Court (which, in turn, might give us additional guidance as to the meaning of a must-fit design).

Image of the Lenz rechargeable battery is taken from Rossignol.com.