Introduction
Subsequent case law
Comment
The prior publication of a Community design within the 12-month grace period by way of an earlier registration through an office is an act of harmless disclosure falling under the exception of article 7(2) of the EU Community Design Regulation (CDR) when resulting from the actions of the designer or their successor in title.
Wording that initially seemed to be quite clear in article 7(2) of the CDR within the framework of the entire article 7 of the CDR was interpreted differently, to the surprise of many, in the ruling of the Third Board of Appeal on 27 October 2015.(1)
It was ruled in that case that a publication of a design in the Community Design Bulletin would be an act of a solely administrative nature and therefore could not benefit from the exception under article 7(2) of the CDR, the purpose of which would merely be to enable a harmless prior testing of the design on the market according to recital 20 of the CDR.
This decision received much attention at the time due to the new risks it entailed for registered Community designs (RCDs) that had relied on the grace period under article 7(2) of the CDR with regard to earlier publications by administrative acts, such as the earlier publication of a similar design by another office, or with regard to cases in which the priority claim of an RCD was at risk and a prior official publication of the design had taken place between the RCD filing date and the priority date.
However, a sequence of subsequent case law reversing the restrictive October 2015 decision has since been established.
July 2018
On 19 July 2018,(2) the Board ruled that the Invalidity Division's decision to disregard a prior publication by registration of the owner's older RCD within the grace period was covered by the exception under article 7(2) of the CDR, and thus took a contrary view with regard to its October 2015 decision. This new assessment by the Board was not contested in a review of the case before the General Court.(3)
January 2021
Further, on 11 January 2021,(4) the Board (still comprising two of the three members that made the October 2015 decision) confirmed that with its July 2018 decision, it had abandoned its initial restrictive view from its October 2015 decision, and ruled that an earlier publication following a registration of the owner's older RCD within the 12-month grace period is an act covered by the exception of article 7(2) of the CDR.
October 2021
Further, on 4 October 2021,(5) the Board found that a prior publication by way of registration of a similar design in an earlier Chinese utility model within the 12-month grace period was also a harmless disclosure falling under the exception of article 7(2) of the CDR.
These decisions, particularly the latest ones handed down in 2021, show that the case law on this subject now seems to be settled and that earlier publications of Community designs in the bulletin of an office within the 12-month grace period are covered by the exception of article 7(2) of the CDR, provided that they result from actions of the designer or their successor in title.
For further information on this topic please contact Rainer Bertram or Michael Döring at Grünecker by telephone (+49 89 21 23 50) or email ([email protected] or [email protected]). The Grünecker website can be accessed at grunecker.de.
Endnotes
(1) Case R 2427/2013-3 (and in a parallel decision in Case R 2428/2013-3).