This case concerns registered Community design No. 70438-0002 (“contested design”) intended to be applied to “skirting boards” (Class 25-02 of the Locarno Classification) and represented as follows:
Click here to view design.
On September 11, 2007, an application for a declaration of invalidity with regard to the contested design was filed on the grounds of Article 25 (1) lit b Community Designs Regulation (“CDR”), i.e., asserting lack of novelty (Article 5 CDR) and lack of individual character (Article 6 CDR). The applicant argued that the contested design was not new, because identical designs had been placed on the market already in 1999. In support of its application, the applicant produced,inter alia, selected pages from a catalogue. By decision of May 31, 2010, the Invalidity Division of OHIM upheld the application for a declaration of invalidity, on the ground that the contested design was not new. It based its assessment on one of the representations from that catalogue reproduced below (“earlier design”):
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On November 8, 2012, the Third Board of Appeal of OHIM dismissed the appeal against the decision of the Invalidity Division. It held, in essence, that the contested design was invalid owing to its lack of novelty and individual character. More specifically, the Board of Appeal found that the contested design was part of a complex product and that the only part of that design visible during normal use (see Article 4  [a] CDR) was the flat surface of its base part (interestingly, it seems to suffice, according to the Court, if “part of the design” remains visible, in spite of the more explicit language in Article 4 (2) [a] CDR, that the “component part once it has been incorporated into the complex product” must remain visible). Since the flat surface of the contested design was the same as the flat surface of the earlier design, the Board of Appeal concluded that the two designs were identical and that, consequently, the contested design was not new. Likewise, the overall impression produced by each of the designs at issue on an informed user was identical according to the Board of Appeal. The General Court of the European Union annulled the decision of the Board of Appeal, upholding the design holder’s plea that the Board of Appeal was wrong to conclude that the contested design had no novelty or individual character.
In support of this conclusion, the Court, firstly, found that the contested design must be categorized as a “component part of a complex product”. According to the Court’s findings, the contested design constituted a component part of a complex product “where it is intended to cover a recess in a skirting board and, incidentally, a recess in a wall or floor”. In this respect, the Court held that “although potential uses of a design should not be ruled out, it should none the less be pointed out that a purely hypothetical use of the contested design cannot be taken into account (…)”.
Secondly, when determining the “visible features of the component part during normal use”, the Court started under the presumption that the “(…) only use of the contested design which can be taken into account for the purposes of the present analysis is its use as an insert to cover a recess. (…) Consequently, the visibility of the contested design’s features must be assessed solely in the context of its use as an insert to cover a recess in a skirting board or wall.” As a consequence, the Court agreed with the Board of Appeal’s conclusion that “(…) the only visible feature of the contested design during normal use would be its front surface (…)”. In this context, the Court clarified that normal use does not include the regular disassembly and inspection of the insert.
Thirdly, and lastly, in assessing the overall impression of the earlier design, the Court clarified that Community design law “(…) does not require the graphic representation of a design in respect of which registration has been sought or that of a design which has already been made available to the public to include a perspective view (…).” Following from that proposition, the Court addressed the issue of whether the earlier design is visible during normal use and found, on the grounds of the submitted catalogue, that the earlier design was not visible during normal use of the complex product of which it is a part. The Court continued to hold (at  – ):
“Since a design constituting a component part of a complex product which is not visible during normal use of that complex product cannot be protected under Article 4 (2) [a] CDR, it must be held, by analogy, that the novelty and individual character of a Community design cannot be assessed by comparing that design with an earlier design which, as a component part of a complex product, is not visible during normal use of that product. Therefore, the criterion of visibility (…) applies to the earlier design. OHIM also acknowledged at the hearing that the same criteria had to be applied to both the designs at issue.”
As a consequence, the General Court concluded that an application for a declaration of invalidity cannot be based on an earlier design which, as a component part of a complex product, is not visible during normal use of that product.
This case is noteworthy – apart from the underlying facts, constellation and outcome. It is more in a fundamental sense that the Court’s decision is truly remarkable because the Court – rather generally – confirmed, applied and even extended what we have called the concept of reciprocity in European design law.
The key sentence is the one reproduced in para. 51 and 52 of the judgment, quoted above, and it is remarkable that OHIM as the defendant party agreed. Irrespective of the specifics of this case (and any other), the Court basically found that it is not allowed to treat the contested design and the prior reference differently, i.e., if a design constituting a component part of a complex product which is not visible during normal use of that complex product cannot be protected, an earlier design which, as a component part of a complex product, is also not visible during normal use of that product cannot serve for a proper comparison of the respective overall impression under Article 6 (1) CDR.
More decisions must be awaited to see whether other courts will follow that path.