The informed user's perception and a design's individual character

Author: Valentina Torelli (Salvador Ferrandis & Partners, Madrid)

Senz Technologies BV v OHIM, Impliva B (Parapluies), Joined Cases T-22/13 and T-23/13, EU: EU:T:2015:310 General Court of the European Union, 21 May 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv136, first published online: August 20, 2015

In a scenario in which the freedom of the designer is limited and the informed user shows a higher level of attention when wishing to buy an umbrella, the General Court held that Senz's highly wind-resistant umbrellas had individual character and deserved to be registered notwithstanding a challenge from invalidity applicant Implivia. That was so even though it had been recognized that some prior art existed in the form of an US earlier patent, but that earlier design of an umbrella produced a different overall impression on the informed user.

Legal context

Article 6(1) of Regulation 6/2002 (the Community Design Regulation) sets out one of the two requirements to afford protection to designs in the EU by defining when a Community design has individual character. This occurs when the Community design produces a different overall impression on the informed user from that conceived by any design which has been made available to the public before either the date of application for registration or of priority of the registered Community design or, where the latter is an unregistered design, before the date it has been disclosed to the public.

Article 7(1) of Regulation 6/2002 provides that a design has been made available to the public for the purposes of assessing a Community design's novelty and individual character if it has been published, exhibited, used in trade or otherwise brought to the public before either the date of application for registration or of priority of the registered Community design or before the unregistered Community design has been disclosed in the EU. There are two exceptions to this rule: first, no account is taken of a disclosure when the design cannot be reasonably known in the normal course of business within the circles specialized in the relevant sector in the EU; secondly, a disclosure does not count when it has been made under an explicit or implicit obligation of confidentiality.

Finally, Article 52 in combination with Article 25 of Regulation 6/2002 grants any natural or legal person the right to apply for the invalidity of a Community design when it does not comply with the legal requirements established in Articles 4 to 9 of the Community Design Regulation, among others when it lacks individual character.

Facts

In 2006 Senz applied to register two Community designs for highly wind-resistant umbrellas, featuring respectively a black and a brown asymmetrical canopy with a beak-like shape and an off-centre shaft in respect of the canopy.

In 2009 Impliva sought to invalidate both of Senz's designs before the Office for Harmonisation in the Internal Market (OHIM) on the basis that they did not meet the legal requirements for registration under Articles 4 to 9 of Regulation 6/2002. In particular Impliva claimed that the contested designs produced the same overall impression on the relevant informed user as that characterizing identical or similar umbrellas, among others, the asymmetrical umbrella covered by US patent No. 5505221, registered on 9 April 1996.

Both the Cancellation Division and the Board of Appeal upheld the invalidity claims, holding that the contested designs did not have individual character. In particular, the Board of Appeal stated that, insofar as in the US designs are known as ‘design patents’ and the USPTO register is one of the most important IP registers in the world, the earlier US patent covering an umbrella similar to those of Senz should have been known within the circles specialized in the EU umbrella sector.

As to the assessment of the individual character of Senz's designs, the Board of Appeal started from the premise that the freedom of the designer was limited. It added that the informed user was deemed to be any person willing to buy an umbrella and showing a relatively high level of attention, especially in respect of the umbrella's basic structure. Therefore, the Board of Appeal concluded, all the designs at issue produced the same overall impression, whether from the perspective of the lateral or the underneath view of the umbrellas: all designs had asymmetrical and beak-like canopies and their distribution of the ribs and proportions of the canopies were similar.

In the joined appeals to the General Court, Senz relied on two pleas in law. First, it contested that the US patent could serve as prior art in the assessment of validity, alleging misapplication of Article 7(1) of Regulation 6/2002. Secondly, it argued that the Board of Appeal misapplied Article 6(1) of Regulation 6/2002, in that its umbrella designs had individual character.

Analysis

The General Court sided with the Board of Appeal in the evaluation of the US patent no. 5505221 as prior art of Senz's Community designs, confirming its interpretation of Article 7(1) of Regulation 6/2002.

The court started from the premise that the earlier patent protected both the asymmetrical umbrella's technicalities and its appearance deriving from its various features. On this basis some prior art was disclosed before the filing of the contested designs, in that the USPTO Register was a reliable source for the specialized circles in the umbrella sector to search for possible earlier conflicting rights. That was even more so, said the court, since in this case the design proprietor was a designer of a wind-resistant umbrella which needed to meet specific technical requirements.

Moreover, Senz failed to substantiate its claim properly. It did not provide evidence that European IP lawyers would disregard the fact that, in the United States, designs are protected in the patent register and that patent searches in that register would not be financially sustainable for individual designer and small companies. In any event, Senz failed to prove that the European umbrella sector was composed of such operators.

Finally, the General Court took the view that, contrary to what Senz argued, although the earlier patent had never been incorporated in a product which was actually marketed, knowledge of the patent could have been obtained within the circles specialized in the umbrella sector by means of online searches in the USPTO Register. This conclusion was even reinforced by the circumstance that the United States is an influencing commercial partner for EU specialized operators of the relevant sector.

Notwithstanding all the above, Senz succeeded in relation to its second plea in law and the General Court annulled the Board of Appeal's decisions while affirming that the two contested designs had individual character according to Article 6(1) of Regulation 6/2002.

The court agreed with the Board of Appeal on the definition of the informed user and on the fact that the freedom of the designer was limited. However, it considered that the three designs of asymmetrical umbrellas produced different overall impressions, especially due to the shape of the umbrellas' canopies.

While Senz's designs were characterized by pyramidal and quasi-pyramidal canopies with bent lateral contours forming an irregular octagon, the earlier patent featured a flat surface in the middle and curved lateral contours forming a regular octagon. Although all designs concerned umbrellas' asymmetrical and unusual shapes, the informed user may still be able to perceive the differences between them. Indeed, the informed user may be deemed to recognize their variations despite the fact that all designs shared the same characteristic.

The court then found that the off-centre shaft was not the dominant feature of all the conflicting designs and that it could not have any bearing in establishing that the designs created different overall impressions. Additionally, the perception of the umbrellas from the underneath perspective should not be taken into account, in that design rights protect the appearance of a product as it has been represented in the design, not those perspectives which have not been included in it.

Finally, the court rejected the argument that, inasmuch as the canopies' shapes had been dictated by technical constraints in order to provide the umbrellas with an aerodynamic structure, they were to be disregarded in the comparison of the overall impression. When the appearance of a product is also aimed at fulfilling a technical function it can be nonetheless afforded protection under Regulation 6/2002.

Practical significance

The General Court explained here how the assessment of a design's individual character must be undertaken. What is relevant an identification of the design's features which determine the overall impression capable of influencing the informed user's perception. It follows that, for the purposes of establishing the design's individual character, the comparison between similar designs must entail solely those parts which constitute the appearance of the product as resulting from the design's representation. It therefore cannot be argued that the new and unusual features of a design can be used to prohibit competitors to develop further versions of those features which show significant differences, as in the present case. In such a situation, the General Court clarified that the saturation of the state of the art cannot serve to deny that the informed user can recognize the differences of the conflicting designs insofar as they share a single characteristic feature.

© The Author (2015). Published by Oxford University Press. All rights reserved.

The individual character of a design: freedom and the ‘saturation of the state of the art’

Author: Stefano Barazza (Studio Legale Barazza, Udine, Italy)

Joined Cases T-83/11 and T-84/11, Antrax IT Srl v OHIM, General Court of the European Union, 13 November 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt011, first published online: February 21, 2013

The General Court, reviewing a decision of the OHIM's Board of Appeal on the lack of individual character of a design concerning a thermosyphon for radiators, provides a thorough assessment of the notions of ‘informed user’ and ‘degree of freedom of the designer’, observing that the ‘saturation of the state of the art’ (crowded field) may be relevant to assess the degree of awareness of the informed user.

Legal context and facts

Antrax owned eight Community design registrations (RCD no 000593959–0001 to 000593959–0008), registered in 2006, for ‘radiators for heating’ (Class 23.03 of the Locarno Classification). In particular, designs 000593959–0001 and –0002 depict thermosyphons consisting of a series of straight vertical heating pipes, of rectangular shape, attached to two horizontal collectors, of cylindrical shape, placed at the upper and lower end of the heating body.

In 2008 The Heating Company filed an application for invalidity against both RCDs, for lack of novelty and individual character, in relation to an earlier design, registered in 2002 (German designs no 4 and 5, covered by multiple registration No 401 10481.8, published in September 2002 and valid in France, Italy and the Benelux as international design No DM/060899). By its decisions of 30 September 2009, the OHIM Invalidity Division declared the RCDs invalid for lack of novelty under Article 5 of Regulation 6/2002.

The Third Board of Appeal annulled this decision for failing to give adequate reasons for the lack of novelty, and proceeded to re-examine the application. The Board excluded the lack of novelty, as the differences between the designs could not be regarded as immaterial details (Article 5(2)). Assessing the lack of individual character, the Board first defined the informed user as the person who buys radiators for heating, in order to install them at home, after seeing and comparing different designs, through consultation of relevant magazines and websites or by visiting specialized shops. Noting that both the RCDs and the previous designs portrayed radiators equipped with vertical pipes of rectangular shape and cylindrical collectors, of similar lateral protrusion, the Board concluded that the overall aspect of the radiators appeared similar, in the eyes of the informed user, regardless of his angle of observation. It also added that the differences between the designs, mainly pertaining to the relationship between the width, depth and horizontal spacing of the pipes, as well as between the diameter of the collectors and the pipes' depth, were insufficient to alter the informed user's perception. The Board also rejected Antrax's argument as to the limited degree of freedom of the designer, noting that different solutions appeared possible. Consequently, relying on Arts 6 and 25(1)(b) of Regulation 6/2002, the Board declared the RCDs invalid for lack of individual character.

Antrax filed two separate applications with the General Court (later joined, under Article 50(1) of the Rules of Procedure), demanding that the Board of Appeal's decisions be annulled and the RCDs declared valid.

Analysis

The General Court first excluded the admissibility of several new documents, submitted by Antrax for the first time with the applications to the court, holding that the judicial review established by Article 61 of Regulation 6/2002 merely concerns the legitimacy of the decisions taken by the Board of Appeal and cannot amount to a re-examination of the matter, in light of documents which had not been made available during the procedures in front of the OHIM (ex multis, Case T-9/07 Grupo Promer Mon Graphic SA v OHIM [2010] ECR II–00981 and Case C-29/05 OHIM v Kaul GmbH [2007] ECR I-02213).

With its only plea, the applicant asserted the violation of Article 6 of Regulation 6/2002, claiming that the differences between the disputed designs and the prior art were sufficient to allow the informed user to distinguish the different designs, which thus presented an individual character.

The General Court began its assessment by defining the notion of ‘informed user’, which, according to PepsiCo Inc v Grupo Promer Mon Graphic SA Case C-281/10 P [2011], lies

‘… between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise’.

The informed user, therefore, appears to be a particularly observant person who, being neither the producer or seller of a product that incorporates the design at issue, nor a technical expert or designer, makes use of the product according to its intended aim, exhibiting a relatively high degree of attention when using it (Case T-153/08 Shenzhen Taiden Industrial Co v OHIM [2010] ECR II-02517), and who has knowledge of the prior art and of the features commonly implemented by similar products, through personal experience or extensive knowledge of the sector. The court added that the heightened sensitivity attributed to the informed user does not imply, however, that he is capable of distinguishing aspects related to the technical function of the product from those which are arbitrary.

Applying these principles, the General Court confirmed the Board of Appeal's definition of the informed user.

On the notion of individual character, the court examined its relationship to the degree of freedom of the designer, noting that restrictions dictated by technical or regulatory constraints may result in standardization of some of the features of the products which implement the disputed designs: Case T-11/08 Kwang Yang Motor Co Ltd v OHIM [2011]. Thus the extent of the differences which the designs should exhibit to produce a different impression on the informed user is proportional to the degree of freedom of the designer: small differences may not generate a different overall impression if the degree of freedom is high, but may be sufficient when the degree is restricted.

The Board of Appeal's conclusions on the absence of a restriction of the degree of freedom were upheld, as it appeared that different designs could have been conceived. It was also observed that general trends cannot be regarded as restrictions to the degree of freedom.

The applicant challenged the Board of Appeal's conclusions as to the lack of individual character, maintaining that the absence of a lateral protrusion of the collectors, in the disputed designs, distinguished them from the prior art. The court recognized that the designs contained no claims as to the extent of the lateral protrusion of the collectors, contrary to the findings of the Board of Appeal. The conclusion was supported by the broken lines drawn at the collectors' extremities, as well as by the fact that the disputed designs did not represent complete radiators but merely depicted thermosyphons, as Antrax stated in its application for registration. OHIM's classification according to the Locarno Convention is a merely administrative procedure, which does not substitute or render the applicant's description invalid (Article 36(6) of Regulation 6/2002).

The court then verified whether the Board's other findings were independently sufficient to demonstrate the lack of individual character of the disputed designs. It disregarded the applicant's arguments concerning the comparison between the depth and spacing of the pipes in the disputed designs and prior art, since they relied on the unproved assertion of the identity of the collectors' dimensions. The judgment clarified that the protection of the disputed designs was granted independently of the dimensions of the final product to which they were to be incorporated and that the applicant had failed to prove the existence of any restriction to the collectors' dimensions. The comparison, therefore, should focus on the internal proportions of the elements, which is independent from the collectors' dimensions.

Finally, the applicant's remarks concerning the saturation of the state of the art were examined. Antrax had already submitted the argument during the proceedings in front of the Invalidity Division and the Board of Appeal, claiming that the crowded field rendered small differences in the internal proportions of the designs more readily perceptible by an informed user. The General Court noted that neither the Invalidity Division nor the Board of Appeal had expressly considered the argument put forward by the applicant. Contrary to OHIM's assertions, it found that the relevance of the exception could not be disputed and that OHIM's considerations as to the lack of proof supporting the applicant's arguments amounted to an inadmissible ex post integration of the reasons of the Board of Appeal's decision (see eg Case T-228/02 Organisation des Modjahedines du peuple d'Iran v Council [2006] ECR II-04665).

The court underlined that its review cannot extend to the evaluation of arguments which have not been considered by the Board of Appeal in the procedure leading to the contested decision, as the court's power to reform can only be exercised when, upon examination of the Board of Appeal's motivations, it is possible to determine the correct decision which should have been taken, based on factual and legal elements already proved: Case C-263/09 P Edwin Co Ltd v OHIM [2011].

The case offered an occasion to distinguish the saturation of the state of the art from the presence of a general trend in the industry. The latter, according to the court, bears significance only in relation to the aesthetic perception of a design and the commercial success of the product which incorporates it, but does not affect the overall impression produced by the designs on the informed user, nor does it restrict the degree of freedom of the designer. Therefore, when assessing the individual character of a design, the aesthetics or commercial success of a product should not be considered relevant. The saturation of the state of the art, instead, may well yield relevant effects on the perception of the informed user.

In light of the Board of Appeal's failure to state a reason with regard to a relevant argument submitted by the applicant, the General Court annulled the part of the Board of Appeal's decisions which proclaimed the invalidity of the designs, rejecting the rest of the application. The court evidenced that the duty to state reasons represents a fundamental principle of European Union Law, designed to allow the interested party and the judge to respectively challenge and assess the validity of an act (Case C-199/99 Corus UK v Commission [2003] ECR I-11177).

Practical significance

The judgment provides a useful overview of all the elements involved in the evaluation of the individual character of a design, enriching the notions of ‘informed user’ and ‘degree of freedom’, carved through reference to previous case law, with ancillary details drawn from the case in hand.

In particular, the court noted that the informed user's degree of awareness changes in relation to the degree of freedom of the designer (reciprocity) and can be influenced by the ‘saturation of the state of the art’, which potentially enhances his sensitiveness towards smaller differences in shapes and proportions. However, the informed user is supposedly incapable of discerning between features dictated by the technical function of the product from those which are arbitrary.

The rejection of the idea that general trends may determine a restriction of the freedom of the designer falls in line with an established case law (Shenzhen Taiden Industrial Co v OHIM), according to which the examination of the individual character of a design shall be conducted irrespective of aesthetic or commercial considerations. The court explicitly noted that such considerations cannot affect the degree of freedom of the designer, but may rather stimulate him to come up with new and original solutions. A diverse interpretation, centred upon the effects of general trends upon the degree of awareness of the informed user, would contradict the approach implemented in Article 6 of Regulation 6/2002 and might hinder creativity and innovation, rather than promoting it.

On the comparison of the overall and internal proportions of the designs, the court clarified that the former may be misleading, when the dimensions depend upon a single element the size of which may vary, unless a technical or normative restriction is present. It is only through an evaluation of the internal proportions of all the elements of the design, that the overall impression of the informed user can be positively identified, as internal proportions remain the same, regardless of the dimension of one of its elements.

The General Court also provided useful advice for the interpretation of applications for registration, evidencing that broken lines indicate elements that fall outside of the scope of protection and that OHIM's classification serves only administrative purposes and does not replace or invalidate the description made by the designer in the application for registration.