EU community design protection is not restricted to trade sectors

A design registered at the EU Intellectual Property Office, known as a registered community design, secures protection for the appearance of a product (for example shape, patterns and colours) across all the countries in the European Union.

 

A recent case involving the design of a drain for a shower clarifies that:

• the scope of protection of a registered community design is not limited to any one trade sector; and
• prior public disclosure in any trade sector is relevant when assessing novelty and individual character of a registered community design.

 

David Roberts explains that ‘This case is important, as it confirms the broad scope of cross-trade protection afforded to a registered community design.’

 

Background to this case

When filing a registered community design one of the requirements is to provide an indication of the products to which the design is to be applied. This is done by providing a title of the design, as well as a classification number.

 

Easy Sanitary Solutions had registered a design entitled a 'Shower drain'. The Locarno classification number 23.02 was provided, which covers 'sanitary appliances'.

 

In 2009 I-Drain, a predecessor to the opposing party Group Nivelles NV, submitted an application for a declaration of invalidity of the contested design, primarily on the basis that the design allegedly lacked novelty and individual character. Group Nivelles NV relied upon the following extract from a product catalogue as the relevant prior art:

 

At first instance the EUIPO agreed with this assessment and declared the contested design invalid for lack of novelty. In making this assessment the EUIPO noted that in use the only visible part of the contested design was the top of the plate, and therefore only this portion was relevant for assessing novelty and individual character.

 

On appeal at the EUIPO this decision was annulled, the appeal board finding that the registered community design was new since it was not identical to the earlier design and contained differences that were neither “minimal” nor “difficult to appreciate objectively”. Following on from this the General Court of the EU annulled this decision, leading to this appeal at the CJEU.

 

CJEU Judgement

In the case the CJEU considered Article 10(1) of the Regulation (COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs) which states “The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression” (emphasis added). This is quite clear that scope of protection covers any product utilising a registered design and does not only cover those products in the same classification.

 

The flip side is the assessment of novelty and individual character in determining whether a registered design is valid in the first place. The CJEU considered Article 7(1) of the Regulation which states 'a design shall be deemed to have been made available to the public [and therefore relevant for assessing novelty and individual character] … except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned'.

 

The appellant, ESS, essentially construed this section of the regulation as meaning that a prior art product is relevant for assessing novelty and individual character only if the prior art product is in the same sector or intended for the same use as the design in question. Here ESS attempted to draw a distinction between the contested design which was intended for use in a domestic bathroom setting, and the prior art which had a more industrial purpose. The CJEU did not agree on this point and noted that the exclusions in Article 7(1) of events that do not constitute a public disclosure is intended to 'ensure that events that are difficult to verify and that occur in a third country are not capable of constituting such disclosure, and not to make a distinction between various business sectors within the European Union…'. The CJEU were also keen to avoid an 'absurd' situation whereby an existing design could infringe a later registered design, but not be prior art against it.

 

Balancing these points, the CJEU came to the conclusion that the scope of protection of a registered community design is not limited to the particular trade sector of the design in question, and likewise for assessing novelty and individual character earlier disclosures are not limited to particular trade sectors.

 

This is a sensible judgement which clarifies the scope of protection of registered community designs.

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in March 2018.