Connecting the dots

Dotted or broken lines are common in trade mark and design applications to show elements that are not meant to be protected. The Guidelines on the Examination of applications for registered Community designs of the European Union Intellectual Property Office (‘EUIPO’) state:

Visual disclaimers indicate that protection is not being sought, and registration has not been granted, for certain features of the design shown in the representation. Thus, they indicate what is not intended to be protected. This can be achieved:

· by excluding with broken lines, blurring or colour shading the features of the design for which protection is not sought; or

· by including the features of the design for which protection is sought within a boundary, thus making it clear that no protection is sought for what falls outside the boundary.

The General Court recently explored the relevance of broken lines in registered Community designs (‘RCD’) when they are invoked as prior art in invalidity proceedings.

Background

In case T-757/22, Puma filed an application for a declaration of invalidity against RCD no. 004160273-0015 for ‘footwear’ with the following views:

Case T-758/22 concerned an invalidity application of Puma against RCD no. 008367742-0013 for ‘footwear’ with the following views:

Puma based the applications on a lack of individual character (Art. 25(1)(b), Art. 6 Community Design Regulation, ‘CDR’) because of the following earlier designs:

(RCD no. 1286116-0005 (‘D 1’))

(RCD no. 1286116-0006 (‘D 2’))


(RCD no. 1286116-0003 (‘D 3’))


(RCD no. 1286116-0002 (‘D 4’))


(RCD no. 1286116-0001 (‘D 5’))

(Puma’s ‘NRGY v2’ from 2016 (‘D 6’))


(Puma’s ‘Mega NRGY Knit’ (‘D 7’) in case T-757/22)


(Puma’s ‘Mega NRGY Knit Run/Train/Fit A/W 2017’ (‘D 7’) in case T-758/22)

The Invalidity Division of the EUIPO rejected Puma’s applications. The EUIPO’s Board of Appeal (‘BoA’) confirmed these decisions upon appeal.

Puma filed actions before the General Court.

The General Court’s decisions

The General Court dismissed Puma’s actions.

The judges confirmed the BoA’s findings that the contested designs were meant to be applied to shoes and that the informed user has a relatively high level of attention. The designer’s degree of freedom was deemed to be high. A shoe design is limited only by the ergonomics of feet, the need to provide firmness and postural steadiness and the shoes need to be comfortable and safe. The designer is free to choose, inter alia, the shape, material, colour, patterns and decorative elements.

The judges recalled that the overall impressions produced by the designs is decisive. They are created by the features disclosed in the contested design without taking account of features, which are excluded from protection, such as technical features. The fact that an earlier design discloses additional elements, which are not present in the contested design, is not decisive.

Relevant elements of the contested designs

Puma argued that only the soles of the contested designs may be considered in the comparison because they are the essential element of a shoe.

This did not convince the judges. While the overall impression of a design may be dominated by certain features, Puma did not justify why the sole should be so important that the comparison may be limited to that element. Since the contested designs represent entire shoes from all angles, all parts of them must be taken into account.

Relevant elements of the earlier designs D1 to D5

The interesting parts of the decisions concern the assessment of the relevant elements of the earlier designs D1 to D5.

Puma argued that these designs only show a sole and the broken lines constituting the upper shoe cannot be taken into account for the purpose of the comparison as they do not form part of the protected RCDs. They only indicate how the sole will be attached to the rest of the shoe.

The judges drew on the EUIPO’s Guidelines on the Examination of applications for registered Community designs cited above. While they are not binding, they are a reference source for EUIPO’s practice in respect of designs.

The General Court found that designs D1 to D5 have been registered with the product indication ‘soles for footwear’ and they depict soles with the upper shoes in broken lines, meaning that no protection is claimed for the design of the upper parts.

Despite that, the Court held that the upper parts of the shoes also form part of the designs and must be compared to the contested designs. The function of an earlier design is to reveal the state of the prior art, meaning the corpus of previous designs relating to the product in question that were disclosed on the filing date of the contested design. A prior design belongs to the corpus of previous designs merely by being disclosed within the meaning of Art. 7 CDR. Accordingly, the subject of the protection of an earlier design is not decisive but solely the question whether its elements have been disclosed.

Comparison of the designs

The General Court confirmed the BoA’s assessment that the overall impression created by the contested designs differ sufficiently from those of the earlier designs invoked by Puma. This seems obvious when the comparison is not limited to the soles.

The only noteworthy point the General Court made in this respect is that distinctive word and figurative signs included in the designs, which indicate the commercial origin, may not be taken into account in the comparison. The judges reasoned that they do not have an ornamental or decorative function and do not constitute features of the product giving the goods their appearance for the purposes of Art. 3(a) and (b) CDR.

Comment

The General Court’s decisions on the relevance of broken lines does not come as a surprise. An earlier design need not be registered or protected in any way to constitute prior art that might invalidate a later design. Even simple hand-drawn sketches on a napkin qualify as prior art if they have been sufficiently disclosed within the meaning of Art. 7 CDR.

Design applicants should give serious thought to whether to use broken lines and if so, which design they should have. The overall impression created by the design application, including the broken lines, will become prior art and can prevent the novelty or individual character of a later design, whether it is a design of the applicant or of a competitor.

The General Court’s finding that word and figurative marks in the designs must be excluded is debatable, at least with respect to the contested design. It is the applicant’s choice to include word or figurative marks in the design’s representation. Since there is no requirement of use, the applicant is free to omit indicators of origin and register a design that is not actually used in commerce. If trade marks are included, they form part of the product’s design and should be taken into account. Of course, the relative weight of word marks in the overall impression may not be decisive.

The importance of figurative marks in the overall impression is shown in the earlier design D6:

It contains Puma’s so called ‘form strip’, which is registered, for instance, as EU trade mark no. 003513694:

Is this quite central design element to be disregarded because it is a distinctive element and a registered trade mark?

And what about elements that are not registered as trade marks but are distinctive? Should they also be disregarded in the comparison of the designs?