General Court on design law: Principle of unicity of design and no interpretation favourable to the holder

Had Oscar Wilde known about the importance of consistency in design protection, he might not have written “consistency is the last refuge of the unimaginative”.

In a recent decision, the General Court held that a violation of the principle of unicity can lead to the invalidity of a registered Community design (‘RCD’) and that there is no principle of interpretation favourable to the holder.

Background

In 2009, Orgatex GmbH & Co. KG (‚Orgatex‘) obtained registration of the following RCD no. 1112155-0001 for ‘ground markings’:

In 2020, an individual filed an application for a declaration of invalidity against Orgatex’ RCD. The applicant argued that it did not constitute a design in the meaning of Art. 3(a) Community Design Regulation (‘CDR’) (Art. 25(1)(a) CDR) and that it lacked novelty and individual character (Art. 25(1)(b) CDR).

The Cancellation Division of the European Union Intellectual Property Office (‘EUIPO’) dismissed the application. The EUIPO’s Board of Appeal (‘BoA’) upheld the appeal and declared Orgatex’ RCD invalid. It considered the views not to be consistent and representing at least two different designs.

Orgatex appealed to the General Court.

The General Court’s decision

The General Court dismissed the appeal (T-25/23).

According to Art. 3(a) CDR, a ‘design’ is

the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

The judges concluded from this provision that the appearance is the decisive factor for a design and that its examination has to be limited to the question whether the representation of the RCD shows the appearance of a product or a part thereof. Observations by Orgatex on the design during the application proceedings could be taken into account only if they were apparent from the representation of the RCD.

Since the representation of the design defined the subject matter of the protection, the EUIPO and economic operators had to be able, for reasons of legal certainty, to ascertain the design clearly and precisely.

As a consequence, the judges deemed it necessary that the views showed the appearance of a single or unitary product or a part thereof. They coined the term ‘principle of unicity of design’ for this condition.

The judges held (para. 40 of the decision):

There can be no unicity of design if the views constituting the representation as a whole are insolubly inconsistent or insurmountably contradictory, so that the appearance of a single product cannot be determined and, consequently, the representation does not allow a single design to be clearly identified. Conversely, the unicity of the design may be established despite minor discrepancies between the views, strictly to the extent that those views can nevertheless be reconciled in the sense of a unitary design. That being the case, the adjudicating bodies of EUIPO are not obliged to consider all possible combinations between the views provided by the applicant at the time of the application, but only those combinations which seem logical and plausible in the light of common experience. 

The Court continued dealing with some general arguments from Orgatex.

BoA not bound by registration decision

Although the EUIPO’s examiner reviewed whether the contested RCD fulfilled the requirements of Art. 3(a) CDR during the application process, the BoA was not bound by this assessment in invalidity proceedings. Invalidity proceedings are intended to remedy any errors made during the registration proceedings.

No principle of interpretation favourable to the holder

The judges also refused Orgatex’ assertion that there was a ‘principle of interpretation favourable to the holder’ in EU design law.

Orgatex relied on Recital 24 of the CDR. It states that the registration process of an RCD

should present the minimum cost and difficulty to applicants, so as to make it readily available to small and medium-sized enterprises as well as to individual designers.

The Court found that this Recital did not require a favourable interpretation of RCDs in invalidity proceedings. On the contrary, the presumption of validity of an RCD in infringement proceedings (Art. 85(1) CDR) and the principles of legal certainty and sound administration required a strict examination of the grounds of invalidity.

The Court proceeded to review the RCD at hand:

Inconsistent views – Scenario 1

The judges agreed with the BoA that it seemed logical and plausible that views 1.1 and 1.2 showed the front face and views 1.3 and 1.4 the rear face of the ground marking, each with a top view and a perspective view.

The lack of the contour lines in view 1.1, which were present and highlighted in view 1.2 below, constituted an insoluble inconsistency:

Similar inexplicable discrepancies existed for views 1.3 and 1.4:

Beyond that, the judges found that the differences in the shades of the frames between views 1.3 and 1.4 could not be explained solely by the difference in perspective between an oblique side view in view 1.3 and a plan view in view 1.4:

There was no indication of a light source. While photographs of the real-life product required a light source that might lead to different shades, the same was not true for the computer-generated views of Orgatex’ RCD. The latter did not require light exposure.

Even assuming that the lighting was different, it would not explain the varying colour gradation in view 1.3, which changed from a light grey in the lower left to a darker grey in the upper right. Additionally, it changed in view 1.4 from a light grey throughout the upper part to a darker grey in the lower part of the frame.

Inconsistent views – Scenario 2

The BoA also considered the scenario (as asserted by Orgatex and assessed by the EUIPO’s Cancellation Division) that view 1.1 showed the front face and views 1.2, 1.3 and 1.4 the rear face of the contested design.

The judges held that it was illogical and implausible that the RCD at hand contained only one front view and three rear views. Nevertheless, even assuming this was the correct way to assess the design, there would be insoluble inconsistencies:

1. In the absence of a visible light source, the different shades on the frames in views 1.2, 1.3 and 1.4 could not be explained. In particular, if views 1.2 and 1.4 showed the product from the same angle, the shades should not differ:

2. The contour lines around the inner (seemingly transparent) tile differed. They were dotted in view 1.4 and continuous in view 1.2. In addition, the contour lines in views 1.2 and 1.4 had the same intensity. This was not true for view 1.3 where they were more visible on the left-hand side than on the right-hand side.

Having submitted pictures of the actual goods, Orgatex argued that the rear part of the product had adhesive stripes, which explained the different contour lines. The judges noted that these strips were not visible in the RCD and the pictures of the actual product did not play a role in invalidity proceedings. The examination of a design had to be carried out on the basis of the representations recorded in the register. A comparison with products actually marketed could be used only for illustrative purposes to confirm conclusions already drawn from the assessment of the views of the RCD. In any event, insoluble inconsistencies between registered views could not be overcome by a comparison with real-life products.

Comment

In design prosecution the principle is: Keep it simple and consistent.

1. Simple means: Show only the product or product part that incorporates the design to be protected. Avoid including additional items, a background, any stylistic means (such as lighting or reflections) or trade marks (in particular figurative marks).

Also, unless necessary to obtain the desired scope of protection, filing a single view can be sufficient. In the case above, it seems that views 1.2 or 1.4 would have adequately protected Orgatex’ interest in the designs.

2. Consistent means: If you are a lawyer and get pictures of the goods from your client, play a complex version of the game ‘spot the difference’ between all views. If put together in one’s mind, the representations must form a coherent product design.

Even minor discrepancies between the views should be avoided, even though they do not necessarily lead to the invalidity of the design, provided they can be explained, for instance by different lighting (for an example see here).