Two recent judgements from the Court of Justice of the European Union in the cases T-174/16 and T-175/16 constitute a salutary reminder of the most important notions in the matter of design protection.
On 18th of May 2007 the German company Wessel-Werk filed a Community Design for nozzles for vacuum cleaners. In 2013 an invalidity proceedings was initiated against this Community Design by the company Wolf invoking as grounds of such invalidity a lack of novelty and of individual character notably due to the existence of a prior Registered Community Design N° 493945-0002 for nozzles for vacuum cleaners.
The EUIPO’s Invalidity Division rejected this invalidity proceedings in 2014, but the Board of Appeal of EUIPO admitted the appeal filed by Wolf and canceled the contested Design. Wessel-Werk then introduced an appeal before the Court of Justice of the European Union which was rejected and the invalidation of the design confirmed.
The surprising thing about the judgment from the Court is that it concentrates its analysis exclusively on the individual character of the design at stake – or rather on its lack of individual character – stating that, as the Design does not possess individual character it would no longer be necessary to examine whether the design is considered as new or not. At this point we notice an inversion in the order of analysis the Court usually follows: Ordinarily the Court starts analyzing a design’s novelty or lack of it, and only once this question is answered, it proceeds as a second step to examine the individual character or lack of it, but not the other way round.
Apart from this somehow innovative change in the order of analysis of the different grounds the remaining definitions evoked are rather classical, such as the notion of the “informed user”, referring to a fictitious person, which lies somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge, and the sectorial expert, who is an expert with detailed technical expertise. According to the Court in the present case the “informed user” is not the industrial operator (“the industry placed in the following step of the production chain”), as pretended by the claimant, but the user who will effectively use the vacuum cleaner, and in particular its nozzle, according to its function as domestic cleaning device. The Court considers that the informed (end) user’s attention will be drawn not to the different elements constituting the nozzle, such as the captor, but to the nozzle as part of the vacuum cleaner as a whole.
In the further development of the judgement the Court refers to the notion of “déjà vu” considering that the Board of Appeal was right to come to the conclusion of a lack of a different overall impression between the conflicting designs, and thus correctly stated an absence of individual character of the contested design.
According to the Court the informed user of a nozzle for vacuum cleaners will pay less attention to the captor or to its color, but will rather concentrate on the global impression of the nozzle in its entirety. For this reason a difference in the color employed is too small an alteration to justify the individual character of the contested design.
Another problematical point is the fact that the Board of Appeal often takes into account different representations of the design that is to say other than those examined by the EUIPO’s Invalidity Division. The Court simply remarks in this context that both of these representations are integrally part of the object of litigation brought to the Board of Appeal, highlighting that these representations do not present any noticeable differences that could have had an incidence on the existence or absence of individual character of the contested design.
As we can appreciate, the quoted decisions have the merit of further clarifying several of the key notions in design right.