Court Closes Door on Protection of Design

04 April 2016

Honeycomb structure 1

Polish company Promarc Technics s.c. had registered a honeycomb structure as a Community design indicating that the design related to “part of doors”.

In an application for invalidity of the design, the EUIPO had found the registered design invalid at both first instance and on appeal and the owner appealed the decision up to the General Court of the EU Court of Justice (T-251/14).

 The basis of the application for invalidity was a drawing from an earlier US patent, i.e.:

Honeycomb structure 2

The EUIPO found that the registered design produced the same overall impression on the informed user as the earlier design taking into account the very wide freedom of the designer, in that the only constraint was a functional one – the separation of and padding between the door panels.

The General Court agreed with the EUIPO that the design was invalid, making the following observations:

  • Once prior art is put before the EUIPO, the onus shifts to the owner of the registered design to show that the prior art would not have been known to the specialist circles in the relevant sector (in this case, manufacturers and sellers of doors as well as end users of the products);
  • The description of the product to which the design is applied determines, not only who the informed user is, but also the degree of freedom that the designer has in reaching the protected design. The assessment should not be made from the perspective of the features disclosed in the registration (i.e. what appears to be the internal structure of a door in this case) but rather from the product description given in the design registration.
  • In this case, the term “parts of doors” is very broad and does not specify the type of doors or features of interest to the design owner and so the design owner could not use arguments that relied on the specialised nature of the product it was in fact selling.

Comments

While it was initially thought that product descriptions would play no role in assessing validity and infringement we have now seen a number of cases which demonstrate how important they are. They direct the enquiry as to who the informed user is and also the constraints faced by the designer, both of which are central to the assessment of infringement and validity.

This begs the question, what if the design owner uses an incorrect description? We know that the EUIPO will pick up on obvious errors in the description at the application stage, but what if the nature of the product cannot be determined from the design?

Another issue is whether you can evade a potential validity challenge by using a broad product description. In this case, the design owner avoided an obvious validity trap; if a more precise description had been used, for example “insulating layer for use inside of a door”, it would have been immediately obvious that the design was not visible in the normal use of the product of which it is part and so was invalid.

But if the product description is broadened, as in this case, the design owner may avoid the most obvious validity risk but can then run into the problem that the design field is so wide that it cannot rely upon special factors that may be relevant to the specific design field of the product it is selling.

It is therefore important to consider carefully all of the information that is included in a design application, whether this is the type of drawing used to depict the design or the description of the product, as this all plays a role in determining the scope of protection of the design when it is registered.

Martin Krause

Martin Krause

Partner

Our Expert
Martin Krause
Martin Krause
Location: Bristol (UK)

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