Keywords
Summary

Keywords

1. Community designs – Grounds for invalidity – Conflict with a prior design – Meaning – Design not producing on the informed user a different overall impression from that produced by the prior design

(Council Regulation No 6/2002, Arts 10 and 25(1)(d))

2. Community designs – Application for registration – Conditions – Indication of the products

(Council Regulation No 6/2002, Arts 36(2) and (6))

3. Community designs – Grounds for invalidity – Conflict with a prior design – Design not producing on the informed user a different overall impression from that produced by the prior design – Informed user – Meaning

(Council Regulation No 6/2002, Arts 10(1) and 25(1)(d))

4. Community designs – Grounds for invalidity – Conflict with a prior design – Design not producing on the informed user a different overall impression from that produced by the prior design – Criteria for assessment

(Council Regulation No 6/2002, Arts 10 and 25(1)(d))

Summary

1. Article 25(1)(d) of Regulation No 6/2002 on Community designs must be interpreted as meaning that a Community design is in conflict with a prior design when, taking into consideration the freedom of the designer in developing the Community design, that design does not produce on the informed user a different overall impression from that produced by the prior design relied on.

That interpretation of Article 25(1)(d) is the only one which can ensure that the rights of the proprietor of a prior design that is referred to in that provision is protected against any infringement of the design resulting from the coexistence of a subsequent Community design that produces the same overall impression on the informed user. If Article 25(1)(d) were not interpreted in that manner, the proprietor of a prior right would be precluded from applying for a declaration of invalidity in respect of a subsequent Community design that produces the same overall impression and be deprived of the actual protection conferred by his design under Article 10 of Regulation No 6/2002 or Article 9 of Directive 98/71 on the legal protection of designs.

(see paras 52-53)

2. Under Article 3(a) of Regulation No 6/2002 on Community designs, a design is the appearance of a product, and Article 36(2) of that regulation requires that an application for a registered Community design is to contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied. However, although the indication of those products in the application for a registered Community design is compulsory, that information does not, by virtue of Article 36(6) of Regulation No 6/2002, affect the scope of protection of the design as such.

Accordingly, it follows from Article 36(6) of Regulation No 6/2002 that, in order to ascertain the product in which the contested design is intended to be incorporated or to which it is intended to be applied, the relevant indication in the application for registration of that design should be taken into account, but also, where necessary, the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function. Taking into account the design itself may enable the product to be placed within a broader category of goods indicated at the time of registration and, therefore, to determine the informed user and the degree of freedom of the designer in developing his design.

(see paras 55-56)

3. The informed user, within the meaning of Article 10(1) of Regulation No 6/2002 on Community designs, is particularly observant and has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design, or, as the case may be, on the date of priority claimed.

(see para. 62)

4. The designer’s degree of freedom in developing his design is established, inter alia, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned.

In the specific assessment of the overall impression of the designs at issue on the informed user, who has some awareness of the state of the prior art, the designer’s degree of freedom in developing the contested design must be taken into account. Thus, in so far as similarities between the designs at issue relate to common features, those similarities will have only minor importance in the overall impression produced by those designs on the informed user. In addition, the more the designer’s freedom in developing the contested design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on the informed user.

(see paras 67, 72)