[Guest post] Decoding the General Court in design law – adding matter to the prior art?

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg) on a brand-new decision issued by the General Court of the European Union on 3 July 2024 in an interesting design case (Case T-329/22). Here’s what Henning writes:

Decoding the General Court in design law – adding matter to the prior art?

by Henning Hartwig

I.

According to the EUIPO’s ‘Boards of Appeal Action Plan – 2021/2026’, the confirmation rate by the General Court of the Board of Appeal decisions appealed has ‘constantly been in the region of 80 %’. Hence, it is not surprising to see that, on 3 July 2024, the General Court of the EU dismissed an appeal brought against a decision of the Third Board of Appeal in a design matter (Case T-329/22).

The case is particular and interesting because the contested Community Design (‘RCD’) no. 363486-0001 (‘contested RCD’) was filed and registered on 27 June 2005 (‘indication of products: ‘Waterspouts, Water-collection guttering’) as shown below (only one view was submitted):

II.

On 24 July 2020, Canalones Novokanal S.L., Spain, brought an application for a declaration of invalidity against the contested RCD owned by Canalones Castilla S.L., Spain. The application was based on one specific piece of prior art (taken from a price catalogue dated April 2004, issued by Canalón S.A., Spain), i.e., the following representation (technical reference numbers removed):

On 29 April 2021, the Invalidity Division declared the contested RCD invalid and, in essence, concluded (Case 113 025 page 10):

The fact that the earlier design only shows the image of the profile of a geometric shape simulating a cornice with a fold towards the interior of the gutter is not sufficient reason for the contested design to produce a different overall impression from the previously disclosed design. On the contrary, the contested design produces the same overall impression as compared with the earlier design, as it represents the same profile of a geometric shape simulating a cornice with an interior expansion. The designer had a wide design freedom.

As a result, the Invalidity Division focused on the profile/sectional view provided by the earlier design (by way of a two-dimensional view) and ignored additional matter shown in the contested RCD (overall providing for a three-dimensional or front perspective view).

III.

On 5 April 2022, the Board of Appeal concurred with the Invalidity Division and, in essence, concluded (Case R 1122/2021-3 para 44):

The overall impression produced in the informed user is the same. The fact that the earlier design only shows the image of the profile of a geometric shape simulating a cornice with a fold towards the inside of the chute is not a sufficient reason for the contested design to produce a different overall impression from the previously disclosed design.

Obviously, the Board of Appeal borrowed from the Invalidity Division, without adding any further argument.

IV.

On 3 July 2024, the General Court dismissed the appeal brought against the Board of Appeal’s decision, siding with Canalones Novokanal S.L. and essentially finding as follows (emphasis added):

[60] The General Court finds, as did the Board of Appeal, that the relatively simple overall linear shape, the configuration and the general appearance of the geometric shape simulating a cornice with an inward fold of the designs at issue are very similar. On the other hand, there are differences in the inward fold of the channel in its front part, the inclination of the sections, the angles of the rounding or the size of the base. However, the differences between the designs at issue do not give rise to a different overall impression in that they have only a limited impact on the informed user. The fact that the earlier design shows only the image of the profile of a geometric shape simulating a cornice with a fold towards the inside of the chute is not sufficient for the contested design to produce a different overall impression from the earlier design. Accordingly, those differences cannot overcome the impression of ‘déjà vu’ that arises from the conflicting designs, having regard to their common elements, which are among their most visible and important features.

[61] Therefore, in view of the high degree of freedom exercised by the designer in developing the contested design and in the absence of significant differences from the earlier design, the assessment of the Board of Appeal that the conflicting designs produce an identical overall impression must be upheld and, consequently, the contested design does not satisfy the requirement of individual character.

Like the Board of Appeal (and the Invalidity Division), the General Court proceeded from what is shown in the prior art and ignored additional matter shown in the contested RCD.

V.

Are these findings compelling?

Under established EU design law and practice, an accused infringer cannot avoid infringement simply by adding matter to the claimed design (labelling, for instance). Consequently, matter added to the claimed design must be ignored when assessing infringement (for details see here).

Reciprocally, it has been held, correctly, that matter shown in the prior design (colour, for instance) but not in the contested design, being challenged for lack of validity, must be ignored, too (for instance T-193/20 para 82). The reason is that the owner of the contested design cannot and should not avoid invalidity simply by omitting matter from the prior design (colour, for example). Likewise, no-one should be allowed to establish protection based on a design that has been disclosed as a part of an entire product. Consequently, it is irrelevant whether the earlier design discloses additional features. For the same reasons, when identifying the subject matter of the prior design, one shall not—by way of reconstruction—add features of appearance when comparing the prior art with the contested design. For that reason, the German Federal Patent Court, in March 2021, dismissed a request for a declaration of invalidity of German design registration DE 40 109 822-0002 represented by way of a two-dimensional view, which was challenged based on a prior design disclosed by way of a three-dimensional view in a patent specification as explained elsewhere.

Finally, matter from the contested design not shown in the prior design shall not be omitted/ignored when assessing validity (for instance T-767/17 para 51-53). Likewise, the EUIPO’s Guidelines for Examination of design invalidity applications (31 March 2024, para 5.7.2) provide: ‘(…) when the contested RCD shows more features than the earlier design, all of its features will be taken into account for the assessment of novelty and individual character. This can happen, for instance, where the contested RCD includes colours, visible effects produced by textures or any other aspects of appearance that are not visible in the earlier design.’

Under these standards, and revisiting the case at hand, it is interesting to note that the owner of RCD no. 363486-0001 did not remove matter from the prior design but added a third dimension to it. Consequently, the findings of the General Court (and the lower instances) appear to be doubtful, particularly as they do not address the practically important question of whether, and under which circumstances, adding matter to the prior art would allow escaping from invalidity.