Background

In 2009, the claimant registered a Community design (RCD) showing a broken cookie (Picture 1) for ‘cookies’.

In February 2010, the intervener initiated invalidity proceedings against the RCD at OHIM. In its application for a declaration of invalidity, the intervener alleged that the RCD was not new and had no individual character and also that its appearance was dictated by its technical function. In support of its application, the intervener referred to various earlier designs, including the cookies shown in Picture 2.

OHIM’s Invalidity Division dismissed the application for a declaration that the contested RCD was invalid.

In a decision on 2 August 2012, OHIM’s Third Board of Appeal (BoA) declared6 the contested RCD invalid due to lack of individual character. The BoA held that the layer of filling inside the cookie could not be taken into consideration for the assessment of the individual character of the contested RCD, as it did not remain visible during normal use of the product.

Further, the BoA considered that the outer appearance of the contested RCD was the same as some of the earlier cited designs and so the BoA found that the RCD did not produce a different overall impression on an informed user (who regularly consumes that type of cookie) than that produced by the earlier designs, given the broad design freedom for this type of product.

The General Court decision

The General Court (GC) has now confirmed the decision of the BoA that the RCD lacks individual character and is therefore invalid. All of its characteristics (namely the irregular, rough surface on the outside of the cookie, golden colour, round shape and the presence of chocolate chips) are characteristics which are common to the conflicting designs (Picture 2). Further, the layer of chocolate filling inside the cookie does not become visible during normal use but only when the cookie is broken. Consequently, this characteristic does not relate to the appearance of the product at issue and cannot be taken into consideration when assessing the individual character of the RCD.

Click here to view Picture 1.

Click here to view Picture 2.

Comment

According to Article 3(a) Community Designs Regulation (CDR), ‘design’ means the appearance of a product, arguably excluding the appearance which is only visible after an irreversible intervention in the product or only with special technical aids. The provisions of the Community Design Regulation do not require external visibility when used as intended. Therefore, a design may for example comprise the inner part of a suitcase. Further, designs may protect different states of a design (e.g. open and closed state of a cabriolet) if the various states are shown in the design application. In the case of cookies, their filling is normally only visible as result of an irreversible intervention and also does not constitute one of various states. Therefore, the filling of cookies usually cannot be considered as part of the appearance of the cookie.

In this case, the claimant’s RCD only shows a broken biscuit so that the claimant sought protection for this specific broken biscuit with the specific filling shown. Since the subject of protection of a registered design is defined by its representations (in combination with the description, if available), the GC should arguably have taken into consideration the filling of the cookie as well. Ultimately, the GC would probably have come to the same end result: since some of the earlier designs also show a cookie with a layer of filling, they would probably produce the same overall impression on the informed user as the contested RCD, and thus would probably be a lack of novelty.