Joined Cases T-22/13 and T-23/13 – Senz Technologies BV v OHIM

Senz applied to register EU Community designs for its “storm proof” umbrellas. The umbrellas carry a unique tapered shape with an asymmetrical design to decrease wind resistance, some of which are allegedly windproof up to 100km/h.

Impliva BV filed an application that the designs should be invalid due to the lack of “individual character”. Impliva relied on a US patent for an umbrella with a similar shape and offset handle, arguing the designs did not produce a different overall impression on the informed user.

OHIM found that the US patent had been “made available to the public” on the USPTO website and that the designs were devoid of distinctive character due to the limited differences to the patent. Senz appealed to the Board of Appeal, which upheld the decision noting that the USPTO is known to the sector and freely accessible. The Board noted it would be unwise not to check the American register “one of the most important registers of intellectual property rights in the world” and an important trading partner for the EU. Senz appealed to the General Court which found that the earlier right relied on could be a patent where a patent contained the characteristics of a design. In this case the patent covered the lines, contours, angles and shape of an umbrella and contained a description of the appearance.

The patent had been made available to the public as it had been published and it would be reasonable for a designer to undertake searches. The fact that the patented umbrella had never been produced was irrelevant and the sector could have knowledge of it through searches.

However, the court took a different view on the overall impression and found the patent and designs were different when viewed laterally and from above. It is important to note that searches in key jurisdictions are vital, particularly where a new design has functional or technical characteristics and searches should not be limited to the EU or specific jurisdictions.