A recent appeal at the General Court called into question the validity of a Registered Community Design for a wristband/watch/device, registered by NIKE on 27 December 2012 in respect of ‘measuring instruments, apparatus and devices’ in Class 10.04 of the Locarno Classification. Part of the graphic representation filed for NIKE’s design is shown below:

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Thomas Murphy filed an invalidity action with the EUIPO against NIKE’s design on 19 August 2013. This was based on a Community Design filed on 26 November 2004, which was registered for ‘flexible LCD watch bands’, as shown below:

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The application for invalidity claimed infringement of Article 6(1)(b) of Council Regulation (EC) No 6/2002, read in conjunction with Article 25(1)(b) of that Regulation, on the ground that the contested design was devoid of individual character. The EUIPO’s Invalidity Division and Board of Appeal both rejected the application for invalidity, leading Mr Murphy to appeal to the General Court.

The General Court held that under Article 6(1)(b) individual character must be assessed in the light of the overall impression produced on the informed user. The overall impression must be different from that produced by any design made available to the public before the date on which the application for registration was filed or, if a priority is claimed, the date of priority. Under Article 6(2) in assessing individual character, the degree of freedom of the designer in developing the design is to be taken into consideration. Account should also be taken of the nature of the product to which the design is applied or incorporated, and in particular the industrial sector to which it belongs.

Here, the informed user was held to be someone who normally purchases and uses wristbands such as those shown in the designs, and through carrying out research, knows a lot about them. Such a user would, therefore, be aware that these wristbands are flexible and round-shaped in order to fit around the wrist and that they contain a display and have some kind of equipment or sensors capable of taking measurements. As a result of their interest in the goods, the informed user would pay a relatively high degree of attention when using them.

The General Court agreed with the Board of Appeal’s assessment that the degree of freedom of the designer was high (although not very high as Mr Murphy had sought to argue). The designer’s freedom is only limited by technical constraints for the device at issue, such as that it needs to be able to fit around the wrist and to contain some form of measuring device. Everything else about the design of these watches is open to interpretation by the designer.

The General Court agreed with the Board of Appeal’s assessment that the designs differed in several respects. These were:

  • The presence of an oval button embedded in the top surface on the NIKE design;
  • The use of transparent material on the NIKE design;
  • The absence of ornamentation on the NIKE design;
  • The closing clasp on the NIKE design was shorter than that in the prior design; and
  • The prior design was notably thinner than the NIKE design.

Mr Murphy claimed that the essence of the prior design was its shape and its clasp and that in these respects NIKE’s design would be perceived as highly similar.

However, the General Court disagreed with Mr Murphy and held that the manner of use of the product in question should also be considered and that when using an electronic wristband, the informed user attaches more importance to the part of the wristband that displays the data than to the clasp of that wristband. Therefore, the differences highlighted between the two designs were enough to create a different overall impression. This was despite the fact that the degree of freedom of the designer of electronic wristbands was held to be high.

This is an interesting decision, as usually the greater the degree of freedom of a designer within a design process, the less likely it is that minor differences between the designs will be enough to produce a different overall impression on an informed user. Clearly, the differences noted between the designs at issue here were not considered minor. The fact that the informed user in this case was held to be someone who would pay a relatively high degree of attention when using the goods also played a part.

This case further highlights the importance of ensuring an accurate representation of your design is filed. Within the appeal, Mr Murphy had tried to provide further explanations in relation to the prior design, but these were rejected by the Board of Appeal and then the General Court, as they did not appear in the registered representations of the prior designs, and so did not come within the protection covered by the registration.