GENERAL COURT, JUDGMENT OF 14 JUNE 2011, T-68/10 (WATCH ATTACHED TO A LANYARD)

The General Court held that the contested Community design, a watch attached to a lanyard, lacked individual character because its overall impression was not different from that of watches shipped from China to the Netherlands by a third party almost a year before the application.

Sphere Time (Sphere) filed a Community design for watches on 14 April 2005.

Click here to see drawing.

Punch SAS claimed lack of novelty and individual character, holding it was similar to the design of the SYMBICORT watches which had been shipped from China to the Netherlands in April 2004 and, therefore, made available to the public before the application date of the Community design.

Click here to see picture.

The Office for Harmonization in the Internal Market's (OHIM's) Invalidity Division and Board of Appeal found that the Community design lacked individual character.

Sphere brought an action before the General Court which was, however, also dismissed.

The court confirmed that the date to be taken into account for the examination of validity was the date of the application of the Community design, i.e. 14 April 2005, and not, as claimed by Sphere, one year earlier, i.e. 14 April 2004.

Article 7(2)(b) Community Design Regulation (CDR) provides that a disclosure shall not be taken into consideration if the design has been made available to the public during the 12- month period before the date of filing by the designer or the design owner or a third party as result of information provided or action taken by the designer or the design owner.

The court said that the objective of Art. 7(2) was to offer the designer or the design owner the opportunity to market a design for a period of 12 months, before having to proceed with the formalities of filing. However, as Sphere did not even claim that it was the designer or owner of the SYMBICORT design, Art. 7 (2)(b) CDR did not apply.

The shipping invoices for the delivery of 2,000 SYMBICORT watches from Hong Kong to a client in the Netherlands in April 2004 proved that they were available to the public before the application date of the Community design.

The overall impression produced by Sphere's Community design did not differ from that of the design of the SYMBICORT watches. Although the informed user was also the professional buyer of these watches it sufficed that the relevant average consumer perceived the designs as producing the same overall impression. The freedom of the designer was relatively wide as there was some room for variations with regard to the watch face and the watch case as well as the length and width of the lanyard. The court rejected Sphere's argument that the photo of the SYMBICORT watches did not show a lanyard allowing the watch to be worn around the neck as for the examination not only the graphic representation of the design should be taken into account but also the shipping invoices which referred to a "lanyard with a watch." The function of a lanyard was to allow an object to be worn around the neck.

Comparing the designs, the court held that the designs were similar in the following features: the proportions of the lanyard, the round analogue watch with two concentric rings on the edge and a gap on the side of the outer ring for a knob for setting the time, and the position of the watch. It was negligible that the lanyard of the SYMBICORT design was black and showed a brand name as the Community design represented a promotional item and had no color claimed. The other differing details did not influence the overall impression; in particular as the watch hands and the rectangular design on the watch face were not protected by the Community design as they were only presented with dotted lines in OHIM's register.

The court concluded the Community design lacked individual character.