In its recent decision in Case T-513/09 José Manuel Baena Grupo, SA v. OHIM, the European General Court (“GC”) considered a challenge against the validity of a registered Community design brought on the basis of an earlier Community trade mark. The GC accepted the appeal against OHIM’s Board of Appeals decision, quashing the decision in which the Board accepted the application for invalidation on the grounds that the registered design lacked individual character as against the earlier trade mark.
The case provides a good example of how design rights compete with earlier trade marks. It also illustrates the wide opportunity offered by the Community design system for obtaining intellectual property protection, as well as confirming the relatively narrow scope of protection afforded by such rights in respect of non-identical competing designs.
A broad definition
Registered Community designs can be secured for a wide range of design works. Unlike many other systems for the protection of industrial designs, the Community design is not limited to product designs in the strict sense. Registration can be obtained not only for the shape of articles, but also in respect of other features such as colour, texture or materials, whether of the product itself or its ornamentation. Further, the design can relate not only to products or articles but also to their packaging or get-up (trade dress), and to graphic symbols (including logos and effectively any artistic design) and typographical arrangements.
Accordingly, it is possible in principle - and indeed very common - to register Community designs in respect of graphic works or other two-dimensional elements that would commonly be regarded as logos or generally as copyright material.
The design under consideration by the GC was a case in point. It was registered for a human-like cartoon character applied for goods such as T-shirts, head gear and other clothing items and stickers (as an ornamentation). The design (as registered) is reproduced below:
It is worth noting that although an applicant for the registration of a Community design is required to indicate the products to which the design will be applied, or the products in which it is to be incorporated, the description of products (that forms part of the registration) does not limit the scope of protection of the design right and there is no requirement on the proprietor of the design that it must use the design in practice, in respect of the listed (or any other) products during the period of protection (which can extended up to 25 years). Thus, the registration of the cartoon character in the example above provides its proprietor with an exclusive right to use that design in respect of any products of any description (including its use as a trademark, as an ornament, on packaging and so forth).
Novelty and individual character
Although OHIM (the EU Community registry office for Community trade marks and designs) does not carry out substantive examination of applications for design registration, the validity of the design remains open to challenges after registration (whether through an invalidation application brought before OHIM or as a defence or counter-claim in infringement proceedings before national courts).
The two central requirements against which the validity of a Community design registration is judged are novelty and individual character. The former relates to any identical designs that had been made available to the public in the Community before the date of registration (that is, the filing date or priority date claimed for the registered design). The novelty requirement applies not only to third party designs but also to the use of the design or its publication by the design owner himself before the relevant date (except where such use or publication by the owner took place in the 12 months period immediately before the application is filed).
The requirement of individual character is defined in Article 6 of the Community Design Regulation (Regulation 6/2002/EC). It is met if the ‘overall impression the design produced on the informed user differs from the overall impression produced on such user by any design made available to the public before the filing or priority date of the registered design’. It is provided further that the assessment of individual character should take into account the degree of freedom available to the designer (which is particularly relevant where functional considerations limit the design options).
Any form of earlier design available to the public can be invoked against the validity of a registered Community design. This may include an earlier registered design, a design used in relation to products or, indeed, earlier trade marks registered or used in the market.
A registered design can also be challenged on the basis that its use would infringe an earlier right (under Community or national law) such as a prior trade mark or copyright or a well-known trade mark under Article 6ter of the Paris Convention. Accordingly, an earlier trade mark is significant in two different and independent ways. It can be treated as an earlier publication available to the public before the date of registration of the design - that may affect the novelty or individual character of the registered design - and it can be asserted against the registered design on the basis that the use of the design would infringe the trade mark.
In the case of the design registered by José Manuel Baena Grupo SA, a challenge was brought on both these grounds: that the cartoon character lacked individual character in view of the earlier Community trade mark owned by the applicant for invalidation, and that the use of the design would infringe that trade mark. Only the first issue was considered by the GC in the decision at hand, as this was the sole basis on which the Board of Appeal accepted the challenge against the validity of the registered design.
The earlier Community trade mark (registered for clothing items in class 25, toys and sports articles in class 28, and various beverages in class 32) is reproduced below:
Whilst the Board of Appeal (and before it the cancellation division of OHIM) considered the registered design to be sufficiently close to the Community trade mark so as to deny individual character to the design, the GC held that it did produce a different overall impression on the informed users and, therefore, that it did possess the requisite individual character. The “informed users” were considered by the GC to be teenagers who were presumed to be the consumers of the T-shirts, stickers and other items for which the design was registered.
The GC put particular emphasis on the different facial expressions depicted in the two competing character designs. The trade mark character having a distinctly grumpy or angry expression and a forward leaning tense posture, whilst the registered design character having a neutral expression and a relaxed posture. The GC also noted some minor design differences (such as the separation of fingers in the registered design character which is absent in the trade mark character and the fact that only one arm is visible in the latter case). The GC pointed out that for the informed users, the emotional differences between the two characters would be highly significant, given the purpose of the ornamentation on the relevant products, and on that basis held that the overall impression produced by each of these cartoon characters on such informed users is different.
The outcome of this case is not particularly remarkable. The decision is in line with many previous decisions of the Community and national courts in which relatively minor differences between competing designs have been found to be sufficient to establish a ‘different overall impression on the informed user’. As previously held by the courts, it is not a question of confusing similarities (as in the case of trade marks), and the notion of the consumer in a hurry with imperfect recollection of the details of a familiar mark, picking a product off the shelf (that may be a relevant point of view in trade mark cases) is markedly different from that of the “informed user”. The court is required to adopt the point of view of an observer or consumer who is aware of competing designs on the market and who pays some attention to design details. In the eyes of such users, similar designs can nevertheless produce a different ‘overall impression’.
A limited scope of protection
The decision of the GC illustrates, therefore, that the requirement to establish individual character does not create a particularly high threshold to obtaining and defending a Community design registration. In the absence of an earlier design which is identical (which would preclude novelty), and provided there is no infringement of an earlier intellectual property right, a design can often be registered notwithstanding the existence of other similar designs on the market. A previously published design which is similar to a later registered design can provide grounds for invalidation on the basis of lack of individual character, but similarity alone is not sufficient. Similar designs can produce a different overall impression on the informed users.
Community registered designs, therefore, are fairly low-hanging fruits ready to be harvested by anyone wishing to obtain protection for any type of design works used in respect of their products. However, the other side of the coin is that the scope of protection of a registered Community design is not very broad where the matter concerns non-identical competing designs. The test for infringement by the use of a similar but not identical design is the same as the validity criterion of individual character as applied against earlier designs. The registration of a design confers on its owner the exclusive right to use the design, including “any design which does not produce on the informed user a different overall impression” (Article 10(1) of the Regulation). As in the test for individual character, the assessment takes into account the degree of design freedom available to the designer.
If the requirement of individual character does not create a significant barrier to obtaining intellectual property protection for designs, the right itself does not confer a particularly broad scope of protection. The registration is highly useful in protecting against direct reproductions and against very close copycats, but a poor imitation of a product design, packaging or its ornamentation, protected as a registered design, could well be held to leave a different overall impression on the informed user (as, for example, was held by the English Court of Appeal in Procter & Gamble v. Reckitt Benckiser  EWCA Civ 936, a case where the defendant’s design for an air freshener, although similar to the claimant’s registered design, was held not to infringe the registered design because the quality of the defendant’s product design was markedly lower than the registered design, thus producing a different overall impression on the informed user).
The value of trade mark and design registrations
Registered Community designs can be fairly easily (and cheaply) obtained and afford a useful intellectual property right covering the entire area of the European Union. They can be registered for a wide range of design elements, including two dimensional designs, and should be considered as an alternative in many cases where trade mark registration is difficult to obtain.
However, trade marks remain a broader and more critical intellectual property right as they are enforceable against a much wider range of similar signs, thereby providing more effective protection against counterfeits and imitations. Just as registered designs, Community trade marks can be registered for the shape of products and their packaging and many other visual elements that can be (or may become through use) distinctive. If trade mark protection is possible to obtain, it would be more valuable than the registration of the design, but the latter should be kept in mind both as an alternative and as an additional level of protection (given that trade marks may also face challenges against validity on grounds which often do not affect the registration of a design).