In Kwang Yang Motor Co Ltd v OHIM Cases T-10/08 and T- 11/08 9 September 2011 (unreported) the European General Court (GC) held that a design that constituted a component part of a complex product could only be considered to have individual character if the component part remained visible during normal use and fulfilled the requirements as to novelty and individual character.
In 2004, Kwang Yang registered the Community design shown here, which constituted a component part of a complex product, i.e., an internal combustion engine that was to be incorporated into a lawnmower.
In 2005, Honda challenged the validity of the design claiming that it was not new and lacked individual character pursuant to Articles 4 to 6 of the Community Design Regulation (6/2002/EC), as it was identical to Honda’s earlier US registered design. Click here to view image.
In 2006, the Invalidity Division of the The Office of Harmonization for the Internal Market (OHIM) rejected Honda’s application for invalidity. However, this decision was overturned in 2007 by OHIM’s Third Board of Appeal. In its assessment, the Board held that the component parts that remained visible during normal use was primarily the upper side and, on account of similarities in shape, position and relative size of the components, the overall impression produced was the same. It found that Kwang’s design was therefore invalid, especially given that the designer had a high degree of freedom. Kwang appealed to the GC.
The GC, contrary to Kwang’s argument, agreed with the Board’s assessment that during the normal use of the lawnmower, the user, who stands principally behind the lawnmower, saw the upper side of the engine. The remaining question for the GC, therefore, was whether the overall impression produced on the informed user by the visible features differed from that produced by Honda’s design.
The Informed User
The GC extended the current test for the informed user from someone who is neither a designer nor a technical expert of the relevant product, to someone who beyond the experience gained by using the product concerned, is unable to distinguish aspects of the appearance of the product that are dictated by the product’s technical function from those that are arbitrary.
Designer’s Degree of Freedom
The GC held that the Board did not err in finding that the designer had a high degree of freedom in designing engines. First, no limit was imposed as to the shape of the upper side of those engines. Second, the components of the engine could be positioned differently without altering the functionality or the aesthetic considerations.
Overall Impression Produced by The Two Designs
The GC found that the upper sides of both designs were similar in shape (rounded vents with straight openings to the rear of the engine and “C” shaped fuel tanks), and that their respective components were similar in proportions, arrangements, dimensions, layouts, sizes and shapes. The GC held that these similarities were more important than the differences in details that could not have an impact on the overall impression, since the informed user would be guided by basic structures alone.
The GC therefore ruled that the Board had rightly concluded that Kwang’s design lacked individual character since the designs at issue produced the same overall impression.
When considering component parts of a complex product, this ruling has shown that only the part(s) of that product that are left visible during its normal use will determine the overall impression produced. As well as extending the current test for the informed user, notably, the GC also held that differences in details between designs that would not have an impact on the overall impression are to be ignored, since the informed user would only focus on the basic structures.