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.

Snorkel decision breathes life into quasi design protection

Author: Mark Williams (Senior Associate, Allens Patent and Trade Mark Attorneys)

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu067, first published online: May 7, 2014

A recent decision of the Australian Trade Marks Office has confirmed that composite trade marks consisting of a combination of shape and word/logo elements can be considered inherently capable of distinguishing, even when the shape has a functional purpose.

Legal context

Shape trade marks are inherently difficult to register in Australia, particularly when the shape in question serves a functional purpose. However, the registration of trade marks consisting of a combination of shape and word/logo elements poses interesting questions about the scope of protection such registrations afford their owners.

Facts

Australian Performance Developments Pty Ltd (APD) sought registration of a composite mark consisting of the shape of an air intake snorkel in combination with the word SAFARI, in respect of air rams and air intake snorkels for vehicles in class 12.

APD's application was opposed by Ironman 4X4 Pty Ltd, who argued that the SAFARI SNORKEL logo applied to the air ram was merely a ‘colourable flourish’ and that the application was really a shape trade mark. It contended that registration of the mark would extend to APD an unfair monopoly in respect of a shape of an air ram that may legitimately be required for use by other traders.

APD responded by referring to a number of air intakes in the market to demonstrate that the shape of its product was not the only shape that could be used to achieve the functional purpose required or an air intake snorkel. In any event, it argued, the trade mark in question was more than just a shape, with the SAFARI SNORKEL logo providing an element distinct from the inherent form of the goods.

The Hearing Officer had little trouble in finding the trade mark inherently capable of distinguishing the claimed goods. He placed particular importance on the fact that air rams and air intake snorkels are the type of goods that are likely to be carefully inspected prior to purchase and that, in those circumstances, the SAFARI SNORKEL logo would be plainly evident to consumers. He also considered the fact that the SAFARI SNORKEL logo, being a registered mark, had already been deemed inherently capable of distinguishing such goods.

Each of the opponent's independent declarants specifically referred to the existence of the word and shape elements of the mark. One of the declarants said:

Purchasers of air rams rely on logos, get up and word marks to indicate the trade origin of such goods and view the shape as performing functional significance only.

Presumably the intention of that evidence was to show that the shape did not perform as a trade mark and so the combination mark was not capable of distinguishing APD's goods—only the logo was. However, that plan backfired. The Hearing Officer said that this confirmed that the composite trade mark as a whole was inherently capable of distinguishing the applicant's goods.

Ironman also pressed the ground of opposition that APD did not intend to use the mark. It cited Beecham Group Plc v Colgate Palmolive Company (2001) 58 IPR 161 as authority for the proposition that, if a trade mark is filed simply for the purpose of gaining some advantage over the market without an intention to use it as a badge of origin, there will not be the requisite intention to use the mark under s 59. However, the Hearing Officer dismissed the s 59 ground, accepting APD′s evidence of actual use of the trade mark to designate its goods both before and after the filing date of the application.

Analysis

It seems that the real issue to the registration of composite shape marks is: how broadly will they be construed by the courts? Will a court deem a similarly shaped air ram and snorkel, without the words, deceptively similar to the composite mark? Would such a use be use of the shape as a trade mark?

Given the Australian Trade Mark Office's current practice of citing marks which include an essential element of a prior mark, will it cite the composite mark against a later similar shape application despite the fact that the shape element of the composite mark is not, of itself, inherently capable of distinguishing?

Practical significance

Maybe the application of word or logo elements to shape marks is something that can be exploited by trade mark owners. Although it must surely be the case that the rights ultimately secured by filing such marks must be narrow (particularly in those cases where the word/logo is already registered), registration of the composite mark could provide perpetual quasi-design protection, and may even be used in Customs Notices of Objection to assist in the seizing similarly shaped goods at the border.

Chocs away for registration of Cadbury's purple

Author: Ilanah Simon Fhima (Faculty of Laws, University College London)

Application by Cadbury Ltd to Register a Shade of the Colour Purple for Goods in Class 30; Opposition by Société des Produits Nestlé SA, United Kingdom Trade Marks Registry, O-358-11, 20 October 2011

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jpr210, first published online: February 10, 2012

A senior hearing officer in the IPO rules on the registrability of a single colour mark.

Legal context

Following the decision of the Court of Justice of the European Union (ECJ) in Libertel Groep BV v Benelux-Merkenbureau (C-104/01) [2003] ECR I-3793, it is clear that single undelimited colours can be registered as trade marks. However, it is equally clear that colour marks face many challenges, including how they can be adequately graphically represented and whether consumers will view them as distinguishing the origin of the goods or services on which they are used. In practice, there have been few decisions on the registrability of single colours since Libertel. In this decision, Hearing Officer Allan James provides much needed guidance on the correct approach to registering a colour mark that will be familiar to many UK consumers.

Facts

In October 2004, Cadbury applied to register ‘The colour purple (Pantone 2685C), as shown in the form of application, applied to the whole visible surface or being the predominant colour applied to the whole visible surface, of the packaging of the goods’, accompanied by a colour sample, for ‘chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes’. After the examiner objected to the application for want of distinctive character, Cadbury produced evidence of acquired distinctiveness and the application was accepted and published. However, Nestlé opposed the application, arguing that it was not adequately graphically represented, was not a sign, and was incapable of distinguishing. Nestlé also claimed the mark fell foul of sections 3(1)(b), (c), and (d) of the Trade Marks Act 1994, had not acquired distinctive character, and had been applied for in bad faith because Cadbury had no intention to use the mark for the ‘whole visible surface’ of goods, or for the wide range of goods specified.

Analysis

Section 3(1)(a) grounds

All three section 3(1)(a) grounds were rejected by the Hearing Officer. Following Libertel, colours clearly can be signs, but they cannot be presumed to be signs. A colour might be a simple property of the goods, eg brown is the natural colour of chocolate, or may be incidental, eg the colour of the shoes of a child shown eating a bar of chocolate on the packaging of the chocolate. Neither type of use would send any information to consumers. However, there was nothing suggesting that the applied-for colour was a property of chocolate.

Nestlé had argued that the colour was not a sign because it encompassed an infinite number of signs. This too was rejected by the Hearing Officer. The fact that the mark envisaged the use of variable quantities of the mark did not matter as the mark itself, the colour purple Pantone 2685C, was fixed and stable. Any other answer would undermine the ECJ's previous findings that colours in the abstract can be registered. The applied-for mark was not analogous to the mark applied for in Dyson Ltd v Registrar of Trade Marks (C-321/03) [2007] ECR I-687 because the colour was not a mere property of the goods. Nor was it excluded under Heidelberger Bauchemie GmbH's Trade Mark Application (C49/02) [2004] ECR I-6129. While colour combinations must be presented in a predetermined and uniform way, this does not mean that contours or other methods of spatial definition must be utilized for either colour combinations or single colours. That the specification mentioned the use of purple as a ‘predominant’ colour did not render the applied-for mark a colour combination. While it envisaged the use of the purple with other material, this other material did not constitute part of the mark. Likewise, Nestlé's argument that the representation of Cadbury's mark would permit a variation in the use of the colour ranging from an uncertain percentage to 100 per cent was also flawed. It is not normally necessary to specify how a trade mark will actually be used as part of the graphic representation. Libertel made no mention of such a requirement, which was particularly significant because that case, like this one, involved a single colour. The requirement in Heidelberger Bauchemie was for a ‘fixed relationship’, not a spatial definition demonstrating actual use. Indeed, the cases suggested that it would have been acceptable for Cadbury to have requested registration merely by reference to the Pantone number, without mentioning the actual use.

Nestlé argued that the inclusion of the words ‘being the predominant colour’ was too vague and meant that the sign was not adequately graphically represented. This too was rejected. The mere provision of a colour sample, accompanied by a Pantone number, would have satisfied the Libertel requirements for the graphic representation of the colour. The added wording made the sign no less clear, precise, self-contained, easily accessible, and intelligible, but arguably made the representation clearer. Although the wording required a decision-taker to judge whether the colour was the ‘predominant’ one used, this was no more complicated than any of the other judgments that would be made during infringement proceedings.

In relation to whether the mark was capable of distinguishing, it was clear from Libertel that a single colour is not incapable of distinguishing. In any event, this aspect was contingent on the outcome of any objections under sections 3(1)(b), (c), and (d), and could not apply if acquired distinctiveness was shown.

Bad faith

Nestlé claimed that Cadbury had demonstrated bad faith as, at the time of registration, it had no intention to use the colour mark ‘applied to the whole visible surface … of the packaging of the goods’. The Hearing Officer accepted that a lack of intention to use a mark may constitute bad faith. However, there was no lack of an intention to use here. The Cadbury mark was not a bundle of marks, consisting of varying percentages of purple rolled into one. Instead, the use of the colour purple on the entirety of the packaging was just the ultimate example of the colour being predominant on the packaging of the goods. Moreover, there was evidence that one Cadbury product had been sold in a wrapper that was completely the relevant shade of purple. Nestlé's argument that the colour had not been applied to the ‘whole visible surface’ because the brand name was also present in a different colour was dismissed as ‘absurd’ and Cadbury's use of the words in such circumstances could not constitute activity which fell short of the standard of commercial behaviour observed by reasonable businessmen in the area.

Lack of distinctiveness

Cadbury accepted that the colour mark was not inherently distinctive. Consequently, there was no need to examine the mark under sections 3(1)(b), (c), or (d). Instead, the question was whether the mark had acquired distinctiveness by the application date. The Hearing Officer was guided by the ECJ's decisions in Libertel, and Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehor Walter Huber (C108/97) [1999] ECR I-2779. These required him to remember that colours would not necessarily be perceived by consumers in the same way as word marks, but that the method of, and factors to be taken into account for, assessing acquired distinctiveness remained the same. Additionally, the general interest in not unreasonably restricting access to colours had to be considered, although this had to be done by ‘critically assessing’ acquired distinctiveness for every item specified, rather than through refusing registration where a mark was shown to have acquired distinctiveness.

Clearly, there was an association of some sort in the public's mind between the purple colour and Cadbury, but the relevant question was whether the mark was distinctive of the goods, rather than just the company. On the evidence, the mark was distinctive for chocolate in bar and tablet form. A shade of the colour purple had been used for the Dairy Milk chocolate bar, which was the best-selling confectionery product in the UK, for nearly 20 years. Cadbury spent £35m on advertising including the colour in 2004 alone and the colour had been used in promotional contexts, including sponsorship of the Commonwealth Games and a popular television soap. Evidence from trade associations pointed to acquired distinctiveness, as did a survey showing 44 per cent unprompted association between the colour and Cadbury. Furthermore, third party use of purple on chocolate bars was limited to use on an ‘imitation’ own brand product, use which started a mere four months before Cadbury's application and which was limited in scale. The Hearing Officer also noted that exclusivity is not required for acquired distinctiveness. In order to show acquired distinctiveness, it was necessary to show that consumer association went beyond merely being ‘reminded’ of Cadbury. However, evidence of detrimental reliance such as confusion was not required as such evidence was unlikely to come to light in relation to a low cost item. Instead, reasonable inferences could be drawn from the use of the mark.

Purple had also acquired distinctiveness for chocolate confectionery products consisting just of chocolate since Cadbury had used the mark for over a decade for popular products fitting that description. Moreover, because these products were pure chocolate, there would have been a spill-over effect from Dairy Milk. However, there was insufficient evidence to show acquired distinctiveness for other forms of chocolate confectionery. Likewise, the mark had acquired distinctiveness for drinking chocolate and preparations for making drinking chocolate. Again the goods had been on sale in purple packaging since the early 1990s; Cadbury had 55 per cent of the drinking chocolate market in 2007 and survey evidence showed 69 per cent recognition from the same year. While this was three years after the application date, the Hearing Officer judged it unlikely that such a strong position could have been built up from nothing. The distinctiveness for chocolate bars was once again helpful, as drinking chocolate would be perceived as chocolate in liquid form.

However, the mark lacked acquired distinctiveness for chocolate assortments and chocolate cakes. In the former case, the evidence suggested that such products were less associated with Cadbury than with chocolate per se. Moreover, its best-selling assortment had been sold in a blue, rather than a purple box. In relation to the latter, there was insufficient evidence of how purple had actually been used for cakes.

Practical significance

This is a decision where less, arguably, would have been more. Cadbury's presumably well-meaning, but unnecessary attempts to clarify the scope of its use of the shade of purple applied for led directly to the challenges based on whether the mark was a sign, whether it was adequately graphically represented, and whether it was applied for in bad faith. However, the Hearing Officer took a common-sense approach to these challenges, true to the spirit of Libertel, which makes it clear that single undelimited colours are registrable.

In relation to acquired distinctiveness, the Hearing Officer viewed a detailed consideration of acquired distinctiveness in relation to each of the products applied for as the way to ensure that concerns about monopolizing colours could be taken into account. Yet, one would expect this form of analysis to take place in relation to judging acquired distinctiveness of every form of mark. Also of interest is how the very strong acquired distinctiveness in relation to chocolate bars and tablets had a ‘trickle-down’ effect to other products viewed essentially as chocolate, even though the evidence of acquired distinctiveness in relation to those products was not as strong. Finally, the Hearing Officer raised, but did not solve, an enduring problem: how to distinguish between mere association between a mark and a company, as opposed to acquired distinctiveness as to origin—an issue which is particularly acute where a mark is as familiar as Cadbury's purple is.