General Court, Judgments of 9 September 2011, T-10/08 and T-11/08 ("Internal Combustion Engines")

The General Court confirmed that two Community designs for engines lacked individual character because their overall impressions, determined primarily by their most visible parts, did not differ from two earlier U.S. design patents published in the 1980s and 90s respectively.

This article only deals with the judgment in the case T-11/08. However, the only difference to the judgment in the case T-10/08, is the depiction of the engines under comparison.

Kwang Yang Motor Co. (Kwang Yang), a Taiwanese company, filed a Community design for an internal combustion engine on 2 April 2004.

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On 17 May 2005, Honda Giken Kogyo Kabushiki Kaisha (Honda) filed an invalidity action, claiming that the design lacked novelty and individual character as it was identical to its U.S. design patent registration published in 1986.

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OHIM's Board of Appeal, reversing a decision of the Invalidity Division, upheld the action and found that the Community design was invalid on the ground that it lacked individual character.

Kwang Yang brought an appeal up to the General Court, which, however, dismissed it. The court held that Kwang Yang's design constituted a component part of a complex product, e.g. of a lawnmower. It confirmed the Board of Appeal's assessment that the upper side of the engine determined its overall impression. During normal use of e.g. the lawnmower, the user saw, in general, the top side of the engine. The court dismissed Kwang Yang's argument that the rear and bottom sides of the engine should also be taken into account.

The court also held that the degree of freedom of the designer of an internal combustion engine to choose the shape of its components and their position was relatively wide. Because of this and the lack of any constraints it was unlikely that the minor differences between the designs created a different overall impression on an informed user.

The General Court concluded that the two designs produced identical impressions with regard to the shape and arrangement of their main components as well as their same basic structure and, therefore, the Community design lacked individual character.

The judgment of the General Court is the first decision relating to component parts of a complex product. First, it is interesting to note that the court considered the small combustion engine as a component part of a complex product, even though such engines are also sold separately and might only later be installed into other products. However, this finding appeared to be undisputed between the parties. Secondly, the court considered that a combustion engine was visible during normal use of e.g. a lawnmower as it was at least visible in part and hence could be a Community design under the CDR. However and finally, if a component part of a complex product is visible during normal use, then, for comparing such a design with an earlier design, it only matters whether the design produces the same overall impression with regard to the parts visible during normal use, but not in relation to the remaining non-visible parts. All the above will have to be taken into account when two component parts of a complex product are compared. Insofar the judgment is a landmark decision.