In judgments on September 10 (in cases T-525/13 and T-526/13), the General Court (GC) of the European Union declared valid two Community designs representing handbags owned by the maison Yves Saint Laurent S.a.S., rejecting the actions proposed by the fast-fashion giant H&M, which claimed nullity of the designs due to lack of individual character.

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One of YSL’s designs

The designs were registered by YSL on 30 October 2006. In 2009, H&M proposed actions of nullity against the latter before the Office for the Harmonization in the Internal Market (OHIM), complaining about the lack of individual character in light of one of their own earlier Community designs. Nevertheless, the Cancellation Division, as the Board of Appeal, considered H&M’s complaints groundless.

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H&M’s design

In particular, the OHIM’s decisions were based on the following grounds: that the two contested designs would have possessed the individual character under Art. 6 of the Regulation CE no. 6/2002, since the overall impression produced by the latter on the informed user – identified, for the handbag market, as a particularly informed and interested woman – would have been different from that produced by the earlier design. In fact, although they have features in common, the OHIM considered them insignificant and focussed on the decisive differences between the two designs.  For the purpose of the assessment, the degree of freedom of the designer in developing the contested designs was also taken into account. In general, the greater this freedom, the less likely it is that minor differences between the designs at issue will be sufficient to produce different overall impressions on an informed user. Therefore, the OHIM considered that in this case, despite the acknowledged extent of the designer’s liberty (due to the few constraints of the features imposed by the technical function of handbags) the differences between the designs were clear and significant.

Thus, in 2013, H&M appealed the decisions before the GC, complaining that the OHIM, on the one hand, had not sufficiently considered the high degree of freedom of the designer in the assessment of the individual character of YSL’s designs; and on the other hand, that it had made a mistake in finding that the differences between the two designs were sufficient to produce different impressions on the target customers.

With regard to the first claim, the Judges deemed the reasoning behind OHIM’s decisions satisfactory, noting that “the assessment of the individual character of a Community design is the result, in essence, of a four-stage examination”: specifically the examination of (i) “the sector to which the products in which the design is intended to be incorporated or to which it is intended to be applied belong”; (ii) “the degree of awareness of the prior art and the level of attention” of the informed user – that the GC remembered as someone in between and other than both the well-informed average consumer and an expert, with “a certain degree of knowledge with regard to the features which those designs normally include and, as a result of his interest in the products concerned (…), with a relatively high degree of attention” – (iii) “the designer’s degree of freedom in developing his design”; and, last but not least, (iv) “the outcome of the comparison of the designs at issue, taking into account (the three factors above)and the overall impressions produced on the informed user”. In this contest, to the GC – in contrast with the applicant’s opinion – “the factor relating to the designer’s degree of freedom may ‘reinforce’ (or, a contrario, moderate) the conclusion as regards the overall impression produced by each design at issue”, but it “cannot on its own determine the assessment of the individual character of a design”.

With regard to the second allegation, the GC – once again in line with the OHIM’s previous decisions – assessed that the different shape (rectangular for YSL, rounded for H&M); the dissimilar body (the first made from a single piece of leather, the second divided into three sections by seams) and the decorated surface of H&M’s handbag had to be considered “significant and therefore such as to markedly influence the overall impression of the informed user”. In this respect, the features that are common to the two designs at issue are therefore irrelevant: namely, their upper contour and the presence of handles in the form of a strap attached to them by rings. Not counting, the Judges added, that the common use of handles and rings does not exclude the fact that YSL’s model represents a bag to be carried solely by hand, whereas H&M’s bag is designed to be carried on the shoulder; another difference that affects the overall impression produced by the two designs.

In light of all of the above, the GC therefore recognised YSL’s designs as having individual character, and determined that H&M’s complaints were groundless.