Design Case Law
of the Court of Justice
Dr. Catherine Jenewein
Former Legal Secretary to Judge Azizi, General Court, Court of Justice of the
European Union; Patent Lawyer, European Patent Office
Prof. Charles Gielen
NautaDutilh N.V.
University of Groningen
Dr. iur. Henning Hartwig
Bardehle Pagenberg
Cecilia Wikström
Chair: Théophile Margellos
Member of European Parliament
Chairperson
OHIM Boards of Appeal
Prior Art in Community Design Law
The Concept of Reciprocity
Dr. Henning Hartwig
Partner, Bardehle Pagenberg
Article 6 (1) CDR
A design shall be considered to have individual
character if the overall impression it produces on
the informed user differs from the overall
impression produced on such a user by any design
which has been made available to the public (…)
before the date of filing the application for
registration or, if a priority is claimed, the date of
priority.
Article 6 (2) CDR
In assessing individual character, the degree of
freedom of the designer in developing the design
shall be taken into consideration.
• Article 6 (2) does not indicate “prior art” or
“existing design corpus” (cf. Recital 14 CDR)
• Interaction between “individual character” and
“degree of freedom of the designer”
• What is the response of the European Courts?
General Court
“(…) the greater the designer’s freedom in developing
the challenged design, the less likely it is that minor
differences between the designs at issue will be
sufficient to produce a different overall impression on
an informed user. Conversely, the more the designer’s
freedom in developing the challenged design is
restricted, the more likely minor differences between
the designs at issue will be sufficient to produce a
different overall impression on an informed user.”
General Court
“Therefore, if the designer enjoys a high degree of
freedom in developing a design, that reinforces the
conclusion that the designs which do not have
significant differences produce the same overall
impression on an informed user.”
Kwang v Honda at [33]
General Court
“As appears from the representations of engines produced
by the intervener during the proceedings before OHIM and
the General Court, there are designs for internal combustion
engines in varying shapes and configurations which differ
considerably from those used in the challenged design.
Internal combustion engines exist in a wide variety of shapes
and combinations of components, as the informed user of
such an engine, who has some knowledge of the relevant
industrial sector, is aware.
Kwang v Honda at [37]
General Court
“Since the positioning and shape of the components of an
internal combustion engine are not limited by any particular
technical necessity, the designer’s degree of creativity with
respect to such internal combustion engines is not limited.
It follows that the Board of Appeal has not committed an
error in holding that the designers of internal combustion
engines enjoy a high degree of freedom in the development
of designs relating to those internal combustion engines
including the challenged design.”
Kwang v Honda at [38]
•
“Degree of freedom of the designer” to be
completed by the “existing design corpus” or “prior
art”
•
Interaction between “degree of freedom of the
designer” and finding “different overall impression”
•
“Same overall impression” (+) if designs do not have
“significant differences“ (in case of high degree)
Some open questions
• What is the meaning of “significant differences“?
• What is the test in case of a low degree of freedom?
• Is the existing design corpus limited to the indication of
product of the challenged Community design?
• Is the existing design corpus limited in time (only disclosure
prior to the application date)?
Article 10 (1) CDR
The scope of the protection conferred by a
Community design shall include any design which
does not produce on the informed user a different
overall impression.
Article 10 (2) CDR
In assessing the scope of protection, the degree of
freedom of the designer in developing his design
shall be taken into consideration.
•
Is it likely that the General Court and/or Court of
Justice will confirm the reciprocity test also in view
of Article 10?
•
Court of Justice in “Grupo Promer”: No mention
•
General Court in “Grupo Promer”: No mention
German Federal Supreme Court
“A great concentration of designs and, thus, only little freedom
of the designer will lead to a narrow scope of protection of the
design so that minor differences in appearance may produce a
different overall impression on the informed user. In contrast, a
low concentration of designs and, therefore, a great freedom
of the designer will lead to a broad scope of protection of the
design so that even major differences in appearance may not
produce a different overall impression on the informed user.”
Pram I at [24]
Austrian Supreme Court
“By applying consistent terminology for both the scope of
protection and the individual character, the Regulation gives
rise to parallel criteria: A high degree of individual character
allows a large scope of protection whereas a low degree of
individual character only permits a limited scope of protection.
If the informed user is willing to confirm individual character in
case of minor differences between the prior and the
Community design, he must likewise confirm non-infringement
in case of such differences between the asserted and the
accused design.”
Sprayer
Concept of Reciprocity?
(+) Interaction between prior art and validity of a Community design
(+) Interaction between prior art and scope of protection of a
Community design
(+) Interaction between prior art and infringement of a Community
design
(?) Interaction between validity, scope of protection and infringement
of a Community design?