[Guest post] Critical review of recent design case law by the General Court

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg) on some recent EU design case law. Here’s what Henning writes:

Critical review of recent design case law by the General Court

by Henning Hartwig

Since 1 May 2019, under Article 58a (1) Statute of the Court of Justice of the European Union (CJEU), an appeal brought against a decision of the General Court concerning a decision of an independent Board of Appeal of European Union Intellectual Property Office (EUIPO) is not to proceed unless the CJEU first decides that it should be allowed to do so. In accordance with Article 58a (3), an appeal is to be allowed to proceed, in accordance with the detailed rules set out in the Rules of Procedure of the CJEU, where it raises an issue that is “significant with respect to the unity, consistency or development of EU law”. The result in this change has been a very dramatic reduction in trade mark and design cases heard by the CJEU. In fact, at the time of this writing, the CJEU has only accepted two appeals for review, one of them being a design case (C-382/21 P, EUIPO v KaiKai, ECLI:EU:C:2021:1050).

Consequently, and also given that finding validity of a design and, more particularly, assessing the overall impression of two conflicting designs (Article 6 [1] CDR) is a question of fact falling, in general, within the General Court’s exclusive jurisdiction (Joined Cases C-101/11 P and C-102/11 P, Neuman, ECLI:EU:C:2012:641, para 66), this court’s approach is fundamental for both understanding European design law and judging the quality the EUIPO’s Board of Appeal’s daily work.

However, while the General Court, also in 2019, proceeded to create “specialised Chambers”, including six Chambers exclusively dealing with intellectual property matters, resulting in more consistency, efficiency, and speediness as it is fair to expect, there remain areas of inconsistencies, particularly with respect to the construction of the subject matter of the contested or prior design or with regard to the indication of product of the contested registered Community design (RCD) as this Katfriend just demonstrated elsewhere.

Also, the General Court’s déjà-vu-test (T-666/11, Budziewska v EUIPO/Puma, ECLI:EU:T:2013:584, para 29) appears to be unpractical and unhelpful, being nothing more than an empty legal slogan (“lack of déjà-vu”) replacing another indefinite term (“overall impression of difference”).

Overall, while the level of attention and quality of the General Court’s case law in design matters is outstanding one should not forget that an extended (and, with respect to issues of facts, de facto unlimited) room for manoeuvre, by virtue of the General Court’s inherent power, should go hand in hand with an increased degree of responsibility, resulting in elevated standards when developing new and/or superseding existing criteria.