[Guest post] EUIPO BoA IP Case Law Conference Report #2 – “A Deep-Dive into latest Design Case-law and Developments: Multi-layered Perspectives”

The IP Case Law Conference (IPCLC), “Decoding Decisions: Insights from Selected Case-Law” continues and it's now time of the second report. This post has been kindly prepared by Katfriend Michela Galea (Stockholm University). Here’s what she writes:

EUIPO BoA IP Case Law Conference Report #2 – “A Deep-Dive into latest Design Case-law and Developments: Multi-layered Perspectives”

by Michela Galea

The second session of the conference was devoted to the latest design case-law and its developments. It intended to discuss recent changes that design law has undergone, in view of the overhaul given to the legislation in the EU. This is owing to the fact that, in recent years, there has been an increased market interest for designs and, most pertinently, the design of product parts, disclosure in a high-tech environment and the identification of the common features of a design when considering invalidity on the ground of lack of individual character.

Dr. Iván L. Sempere delivering his speech

The session was chaired by Maja Praljak (Judge of Commercial court in Zagreb) and featured, as speakers, Dr. Iván L. Sempere (Founding partner of PADIMA), Elisabeth Fink (Member of the First and the Third Boards of Appeal, EUIPO), Eva Maierski (Partner at Lubberger Lehment, Specialist in Trademark, Design, and Copyright Law) and Dr Astrid Graul (Legal Department, DG Grow, European Commission).

Dr. Iván L. Sempere addressed the challenges of standardised or ‘common’ design features. Sempere started off the discussion by noting that standardisation becomes common in certain category of products - but is standardisation different from technical constraint? It is a fact that people put their attention in the ‘uncommon’ things and the regulation encourages design innovation. Yet, when a designer has to follow certain statutory or functional constraints, some features of the design become mandatory and this is something objective. For example, in the EU, all charger plugs must have a standardised format. However, are there any other potential reasons behind a standardisation of features?

Sempere noted that there are ‘trends’ and ‘market expectation’. It is not a question of limiting the freedom of the designer but rather the informed user perspective, due to the existence of all considerations. It was noted that notorious facts do not need to be proven (as addressed in 22/06/04, T-185/02, Pícaro, par.28 to 31, mutatis mutandis). Reference was made to Flowerpots 06/03/2020, R323/2019-3 where the means of evidence of market surveys, catalogues, statements and other were considered.

The first part of the session was concluded on the note that: “less importance should be given to the common because attention is focused on the un-common.”

Moving on, Elisabeth Fink discussed the dilemmas of designs of part products. Individual character of parts versus entire products were considered, as Fink used the well-known example of Barbie dolls (R 2021/2019-3 of 14/12/2020). The other part of the discussion considered the disclosure of unregistered designs for part products as Ferrari was used as an example. The question posed to the CJEU related to the conditions for disclosure of the part (see C-123/20 of 28/10/2021). The essence was that ‘part of a product’ under Art. 3(a) CDR to be understood as in everyday language as a section of the ‘whole’ that is the product.

Elisabeth Fink

Fink opined that the principle that designers cannot be required to “make available separately each of the parts of a product” should apply to prior art invoked in invalidity proceedings. Invalidity applicants should not be obliged to prove separate disclosure of the part. Capability of “producing an overall impression and not being completely lost in the product as a whole” should be a criterion to identify a part product within the whole product as disclosed. Finally, an assessment of validity should be based on the part products as identified by the invalidity applicant.

As a third topic during the second session, Eva Maierski addressed the discussion on the complexities of online and third country disclosures, especially in relation to high-tech globalised environments. The prior art context shall be prioritised in this discussion – a design needs to be disclosed publicly for prior art; which can be done in many ways. The ‘second step’ is the reasonable awareness test as only those disclosure requirements of the specialised sector could have been aware in the normal business.

Maierski noted the very recent example of the General Court on 6th March 2024, T‑647/22 concerning the Rihanna/PUMA case. The invalidity applicant relied on different disclosures ar prior art, and the most relevant one were Rihanna’s several Instagram posts (for more details on the decision, see IPKat post regarding this case here). Secondly, the Amazon case (GC, 15th March 2023, T‑89/22) considered by the General Court was also mentioned by Maierski where the invalidity action was on the indicated disclosure date from an Amazon offer. As a key takeaway, online publications play a crucial role and increase scope of potential prior art. It was opined that this balance must be recreated by applying the reasonable awareness test more carefully.

Last but not least, Dr. Astrid Graul discussed the latest developments on the Design Legislative Reform. The EU Commission conducted various studies and consultations which confirmed that the EU design system, despite being established more than 20 years works well, yet there are shortcomings which need to be addressed.

The need for the design reform is due to the patchwork of diverging national regimes. Most pertinently, the repair clause added in Design Directive will finally terminate transitional regime and complete single market in repair spare parts. Most importantly, this reform will aim for modernisation and more legal certainty. The appearance of digital products are covered – but in addition, the definition will include movement, transition or any other sort of animation of the features of the appearance of a product. Overall, it will increase clarity and transparency on eligible subject-matter of design protection. Graul noted that, despite all efforts to adopt a design law, this has been postponed to the new legislative mandate and is expected to take place in September/early October of this year.

By way of a conclusion, the session highlighted the different considerations that need to be taken in relation to designs. Technical advancements also pose questions for invalidity issues as the ‘multi-layered perspective’ of designs are identified. Ultimately, in a digital and globalised world, it is important to remember the requirements of design protection, by utilising the various examples noted in this session.

Keep your eyes peeled for the report on the third session from the EUIPO in Alicante on the challenges of trade mark modernisation!

Meet some of the IPKat Team members and Katfriends helping

reporting the IPCLC sessions in Alicante.

Other IPCLC Reports:

• EUIPO BoA IP Case Law Conference Report #1 – “An Odyssey Through the Evolving Landscape of Trade Mark General Court Judgments”