22nd March 2015
22 March 2015, London
In a recent case handed down by the General Court (GC), the GC annulled the BoA’s finding that a registered Community design (RCD) for skirting boards was invalid under Articles 4(2)(a) & (b), 6(1)(b) and 25(1)(b) of the Community Designs Regulation (CDR).
Cezar was the owner of the RCD shown in Picture 1. Poli-Eco applied for a declaration of invalidity, relying on various earlier designs including the design shown in Picture 2.
Component part of complex product
The GC upheld the BoA’s finding that the RCD constituted a component part of a complex product, the complex product consisting of (i) a skirting board with a recess designed to accommodate cables and (ii) the contested design itself, which was an insert intended to cover that recess.
Visible features of the RCD the GC held that the only use of the RCD that could be taken into account was its use as an insert to cover a recess in a skirting board or wall. During such normal use, the BoA found that only the flat front surface of the RCD remained visible.
Earlier design According to the GC, the BoA had erred in its finding that, during normal use, the only visible feature of the earlier design was the flat front surface. In the catalogue in which the earlier design was shown, it was to be attached to the back part of a skirting board.
As a result, the earlier design was not visible during normal use of the complex product of which it was a part. The BoA had therefore made an error of assessment when comparing the designs in question; since a design constituting a component part of a complex product which is not visible during normal use of that product cannot be protected under Article 4(2)(a) of the Community Designs Regulation, it was held by analogy that the novelty and individual character of an RCD should not be assessed by comparing it with an earlier design which, as a component part of a complex product, was not visible during normal use. As a consequence, Poli-Eco’s application for a declaration of invalidity could not succeed based on this earlier design.
The GC’s reasoning raises two difficulties. Firstly, when assessing novelty and individual character of an RCD, there is no express requirement in the Community Designs Regulation as to the visibility during normal use or otherwise of the earlier design. Arguably it should not matter whether the earlier design was a component part of a complex product or not, or whether it was visible during normal use or not; if the earlier design is identical (or differs in only immaterial details) to the RCD or creates the same overall impression as it, the RCD should be invalid. In its decision, the GC appears to have introduced a requirement that, where the RCD is for a component part of a complex product, it can only be invalidated by an earlier design of a component part of a complex product if that earlier design was itself visible during normal use. The rationale for this new requirement is unclear. Secondly, in relation to the RCD, the GC held that only the flat front surface remained visible during normal use. Therefore it is this ‘flat surface’ which would need to itself fulfil the requirements of novelty and individual character in order to be a valid design (Art 4(2)(b)). By ultimately upholding the validity of the contested design, the GC appears to be saying that the flat surface alone satisfies these requirements. If that is the case, it arguably follows the RCD would now need to be found invalid if challenged with an earlier design simply for a flat surface.
 T-39/13, Cezar Przedsiębiorstwo Produkcyjne Dariusz Bogdan Niewiński v OHIM; Poli-Eco Tworzywa Sztuczne sp. zo.o.
Originally published in DesignWrites 5th Edition. Co-authored by Ning-Ning Li.
Ewan's practice focusses on protecting and enforcing hi-tech or otherwise innovative product design and associated branding in a range of different areas, including medical devices, telecommunications and retail & consumer goods.
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