The recent General Court (GC) decision in Senz Technologies BV v OHIM – Impliva BV shows that arguably obscure, non-European prior art can be taken into account when assessing the validity of a registered Community design (RCD).

To be valid, an RCD must be novel and have individual character, relative to the prior art.

In the Senz case, concerning designs for asymmetric shaped umbrellas, the publication of just a single US utility patent, containing illustrations of a similar shaped umbrella, was enough to invalidate the RCDs for lack of individual character.

Individual character

When assessing the individual character of a Community design, it must be compared with prior designs which have been "made available to the public". Under the Community Designs Regulation:

"A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public ... [before the RCD filing/priority date]." [Emphasis added].

What is meant by "made available to the public"?

The regulation contains the following, rather opaque, definition:

"...a design shall be deemed to have been made available to the public if it has been published..., exhibited, used in trade or otherwise disclosed [before the RCD filing/priority date], except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community." [Emphasis added].

Arguments before the GC

In attacking the validity of two RCDs, Impliva relied on a prior design disclosed by the publication of a US utility patent, which it said meant that the RCDs lacked novelty and "individual character". The RCDs' owner, Senz, argued that the US patent should not be taken into account, as it could not be known to circles specialised in the sector concerned, operating in the EU, since:

  • designs are not the same as patented inventions;
  • the average EU designer would not consult the US patent register;
  • the patented umbrella had never been manufactured or marketed.

The GC dismissed Senz's arguments, primarily due to lack of supporting evidence. In what some may consider a surprising decision, the court held that the mere presence of the US patent on the United States Patent and Trademark Office (USPTO) register was sufficient for the illustrations contained in it to be deemed relevant prior art, even though there was no evidence that the patented product had ever reached the market. Accordingly, the GC held the RCDs invalid for lack of individual character (though the novelty attack failed).

One take-away from this case is that it is worth checking online patent registers (in the European Union and beyond) for prior art, when seeking to invalidate a Community design.

In short

A single piece of prior art can deprive a Community design of individual character.

A published US utility patent can suffice for this purpose, even when the subject matter has never been marketed.

Case details at a glance

  • Jurisdiction: European Union
  • Decision level: General Court
  • Parties: Senz Technologies BV v OHIM – Impliva BV
  • Citation: Joined cases T-22/13 and T-23/13
  • Date: 21 May 2015
  • Full decision: dycip.com/senzrcd