Design law protects the appearance of a product or a part thereof. It is applied to the look and feel of an object, rather than its function. This can include protecting the colour, shape, contours or texture/material of the whole product or just a part of it, so long as it meets the requirements for registrations. Two recent judgments show how the threshold for design protection is being examined in practice.
To be eligible for design protection, the design of the product must meet certain criteria; in particular, it must be ‘new’ and have an ‘individual character’. The need for novelty in this instance means that no identical drawing or model has previously been made available to the public.
The criterion of individual character is a slightly more complicated. Individual character is established by the question of whether the so-called ‘informed user’ could distinguish between the new design and a similar product. In other words, if the informed user would consider that the product design creates the same overall impression as a design that has been previously made available to the public, it may not possess sufficient ‘individual character’ to be eligible for design protection. Another important factor while assessing individual character is the degree of freedom that the designer has when developing the drawing or model. The less freedom the designer has, the sooner the design has individual character.
Nike’s LCD watch has individual character... A recent judgement in which the requirement of individual character was shown to be met relates to the Nike LCD watch, an electronic wristband with instrumentation capable of taking measurements (see first picture below). The wristband was registered as a Community Design in 2012 allowing it protection in all – currently 28 – EU member states. The proprietor of an earlier design registration from 2004 (second picture below) filed a declaration of invalidity on the Nike design on the ground that it was devoid of individual character.
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In its judgement, the EU General Court found that the degree of freedom held by the designer of an electronic wristband is limited by the technical constraints that apply to those wristbands. In order for a wristband to function optimally, the wristband needs to be relatively small, thin and light and must have a certain shape so as to fit the wrist. The degree of freedom of the designer was therefore held not to be very high. Moreover, it found that Nike’s design differed sufficiently from the earlier design because both the width and the materials used are different. Lastly, it noted that on the Nike design the different internal components are clearly visible, which gives it a more technical outlook than the earlier design. The overall impression produced by the contested design on the informed user thus differs sufficiently to that produced by the earlier design, which led to the conclusion that Nike’s design possessed individual character.
...this door handle does not In another recent judgement, the requirement of individual character was not met in a dispute over the door handle shown in the second picture below. Here, the Court found that the handle did not give a different impression than the earlier design (the so-called ‘Dora-handle’ as shown in the first picture).
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The Court rejected arguments that the groove in the new design constituted individual character, finding instead that it only had a slight effect on the overall impression as it covers a very small area of the handle. It also noted that the groove consisted only of a simple vertical line, a simple detail which would not likely be noticed or capture the attention of the informed user. In this instance, it held that the degree of freedom for the designers of door handles was very high and almost unlimited because handles can be designed in any combination of colours, patterns, shapes and materials. The only limitation in this sense is that the handle must be able to be mounted onto a door and must have a grip. In this light, it can be seen that the shape, dimensions and proportions of both designs do not differ materially. As a result, the overall impression of the contested design was held to be in all respects identical to that of the earlier design and the requirement of individual character was therefore not met.