1 April 2014, London
In the recent case of El Hogar Perfecto del Siglo XXI, SL v OHIM; Wenf International Advisers Ltd, The General Court (“GC”) has upheld the Board of Appeal’s findings that a Community design for a corkscrew was invalid under Articles 4, 6(1) (b) and 25(1)(b) of the Community Designs Regulation.
El Hogar was the owner of the Community design in question (representations of which are shown below left). Wenf International applied for a declaration of invalidity, relying on its earlier Spanish registered design for bottle openers (representations of which are shown below right).
The GC held that the BoA had correctly found that the informed user for the purposes of assessing the individual character of the contested design could be both a private individual and a professional (e.g. waiter, sommelier). Such a user would be knowledgeable about wine and related accessories and possess a degree of knowledge as to winebottle openers on the market.
The GC rejected El Hogar’s submissions that the informed user was exclusively a ‘person who works with wine and/or in the supply thereof ’, and in any event El Hogar had failed to establish that limiting the definition to professionals would affect the BoA’s finding on this issue.
Degree of freedom of the designer
The GC held that the general appearance of a corkscrew was not determined by the existence of technical constraints and may vary considerably. In relation to the handle in particular, it was not dictated by functionality, was the central and biggest element of the corkscrew and may take various forms and vary in size. The BoA was correct to find that the designer’s degree of freedom with respect to corkscrews was high.
Overall impression produced on user
The GC held that the differences between the designs at issue highlighted by El Hogar (slight differences between the handles, the size of the small blade, the material and colour of the helical screw and the support notches in the double lever) were either irrelevant or insignificant.
The alleged functional advantages of the contested design compared to the earlier design, even if established, were irrelevant for the purpose of proving the individual character of the design.
The contested design and earlier design did not produce different overall impressions on the informed user, who would not go beyond a certain level of examination, and therefore the design lacked individual character.
Originally published in DesignWrites 3rd Edition.
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