The General Court (GC) has declared two Yves Saint Laurent (YSL) registered Community designs (RCDs) for handbags valid in reaching the conclusion that invalidation actions brought by H&M were unfounded.
The designs were registered in 2006. H&M filed the invalidation actions in 2009 against the two RCDs on the basis that they lacked individual character. H&M had relied upon its own earlier design, which it claimed was created and offered for sale in 2005. They argued that the YSL design created the same overall impression on the informed user as the earlier design.
Under European Union (EU) design law, a valid registered design must have individual character, that is, the informed user must consider the overall impression of the design to be different to earlier designs that have been made available to the public.
The Cancellation Division of OHIM issued its decision in 2011. It said the differences between the YSL designs were more than insignificant and therefore the earlier designs had individual character.
Appeal to the Board of Appeal
Upon appeal to the Board of Appeal, the freedom of the designer was taken into account and assessed in more detail.
Essentially, the greater the designer's freedom in developing a design, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user.
The Board of Appeal defined the informed user as "an informed woman who was interested, as a possible user, in handbags".
Whilst the freedom of the designer was in this case considered to be high, the Board of Appeal recognised that the designs had features in common such as the upper contours and handles in the form of straps attached to the body of the bags by a system of rings reinforced by rivets. However, the differences in shape, structure and surface finish played a decisive role in ultimately rejecting the actions by H&M. The common elements did not detract from the individual character of the YSL designs.
In analysing the designs in more detail, the Board of Appeal observed contrasting features relating to shape, cut of the leather and the surface.
Observing the contested design the Board of Appeal noted that:
- "The body of the contested design had a perceptibly rectangular shape, on account of the presence of three straight lines that marked the sides and the base of the bag, which gave the impression of relatively angular object."
- "The body of the contested design looks as if it is made from a single piece of leather without any visible division or seams except for on a short length at the lower corners".
- "The surface finish of the contested design was totally smooth, apart from two faint seams at the lower corners."
Whereas in contrast, for the earlier design:
- "The body of the earlier design had...curved sides and a curved base and its silhouette was dominated by an impression of roundness."
- "The front and back of the earlier design were... divided into three sections by seams, namely a curved upper section delimited by a collar and two lower sections of equal size delimited by a vertical seam.
- "The surface of the earlier design was covered with pronounced and raised decorative motifs, namely a collar edged with gatherings in the upper part of the bag, a vertical seam dividing the bag into two sections and pleats at the bottom of the bag."
The Board of Appeal found these contrasting design factors (shape, structure and surface finish) to be significant "and therefore such as to markedly influence the overall impression of the informed user."
The Board of Appeal found that "the impression produced would be that of a bag design characterised by classic lines and a formal simplicity whereas, in the case of the earlier design, the impression would be that of a more 'worked' bag, characterised by curves, the surface of which is adorned with ornamental motifs."
Therefore, H&M's case was again dismissed and it further appealed to the GC.
The GC decision
The GC agreed with the earlier finding of the Board of Appeal that the degree of freedom of the designer was high but disagreed with H&M's interpretation of Article 6 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (CDR). It noted that the assessment of "individual character" is the result of a four-stage analysis regarding:
- the sector to which the product in the design belongs;
- the informed user of those products in accordance with their purpose and the user's degree of awareness of prior designs and the level of attention in the comparison of the designs;
- the degree of design freedom in developing the design; and
- the outcome of the comparison of the designs in issue taking all of the above into consideration.
Indeed, the GC agreed with the finding of the Board of Appeal that:
"The degree of freedom of the designer is therefore not...the starting point for the assessment of individual character but...an aspect which must be taken into consideration when analysing the perception of the informed user."
The GC did not believe that the third stage, namely the "freedom of the designer" should alone be used to determine whether the YSL designs had individual character and therefore created a different overall impression on the informed user.
Applying the test as a whole, the GC concluded that the differences between the designs at issue were, as the Board of Appeal had concluded, significant, and that the similarities between them were insignificant.
RCDs are increasingly utilised as a useful form of protection for fashion brands in order to protect the appearance of items such as handbags; however, the GC judgment, issued nine years after the registration of the YSL designs, suggests that the scope of protection of designs can in some cases be interpreted relatively narrowly. Indeed, common features between designs may not be sufficient to reach a finding that they do not create a different overall impression on the informed user.
This case provides useful guidance on the aspects to be considered in reaching a finding as to whether a design registration has "individual character" (and may yet be further appealed to the CJ).
Case details at a glance
- Jurisdiction: European Union
- Decision level: General Court of the European Union
- Parties: H&M Hennes & Mauritz BV & Co KG v OHIM and Yves Saint Laurent SAS
- Citation: T-525/13 and T-526/13
- Date: 10 September 2015
- Full decision (T-525/13): http://dycip.com/T-525-13
- Full decision (T-526/13): http://dycip.com/T526-13