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.


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.


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.

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