In Shenzhen Taiden Industrial Co Ltd v Office of Harmonization for the Internal Market 22 June 2010 (unreported), the General Court dismissed an appeal by Shenzhen Taiden Industrial Co Ltd in relation to the validity of its Community design for a "conference unit", on the grounds that Shenzhen's design did not produce a different overall impression on the informed user when compared with an earlier design owned by Bosch Security Systems BV. As a result, it lacked individual character within the meaning of Article 6 of the Community Design Regulation (6/2002/EC).

BACKGROUND

Shenzhen applied to register the following design for “communications equipment” as a Community Registered Design (CRD):

Please click here to view the designs.

Bosch applied for a declaration of invalidity of Shenzhen’s design on the basis that it was not new and lacked individual character, relying on Bosch’s earlier international registered design for “units for conference systems”:

Please click here to view the designs.

Bosch also submitted a brochure, press cuttings and advertisements that reproduced the design of a conference unit and which Bosch argued was identical to its international design:

Please click here to view the images.

The Invalidity Division of the Office of Harmonization for the Internal Market (OHIM) rejected Bosch’s application but the OHIM Board of Appeal (BoA) allowed the appeal to the extent that it found that the CRD was new but lacked individual character because the degree of freedom of the designer was relatively wide and the differences between the designs were not sufficiently noticeable to produce a different overall impression on the user. The General Court (GC) upheld the BoA’s decision.

DECISION

The GC had to consider whether, from the point of view of the informed user and, taking into account the degree of freedom of the designer of a conference unit, the overall impression produced by Shenzhen's design differed from that produced by Bosch's earlier design.

As far as the informed user was concerned, the BoA and the GC had defined such a person as "anyone who regularly attends conferences or formal meetings at which the various participants have a conference unit with a microphone on the table in front of them".

As to degree of freedom of the designer, which the BoA had found to be wide and which Shenzhen disputed, the GC admitted that in order to fulfil its function, a conference unit had to have a speaker, a microphone and buttons accessible to the user. However, the GC said that those restrictions did not impact on the configuration of the device's features and appearance of the unit itself, as Shenzhen claimed. This conclusion was backed up by examples of designs of other conference units submitted by Bosch showing devices of varying shapes and sizes that differed perceptibly from Shenzhen's design. The GC found that the BoA had not erred in finding that the degree of freedom of the designer of conference units was relatively wide.

As to overall impression, the GC found that the only difference between the two designs at issue was the decoration on the lid of Shenzhen's design. However, given the fact that when the unit was in use, the decoration could not be seen and anyway the decoration was not particularly pronounced, it was not sufficient to offset the similarities found between the designs and therefore confer individual character on Shenzhen's design.

In conclusion, the GC found that Shenzhen's design produced the same overall impression on the informed user as Bosch's earlier design. Therefore, the BoA had been correct to find that Shenzhen's design lacked individual character.