Looks are not everything… even in design matters.

Determining the informed user and the way the informed user perceives the design of a specific product are important steps in the assessment whether two designs produce the same overall impression. In a recent judgment, the General Court emphasized that the actual use of the product in which the design is incorporated is an important factor in determining which features of the design are of particular relevance for the informed user (case T-654/22).

Background

On 17 November 2012, the predecessor of M&T 1997, a.s. (‘M&T’), applied for registration of the Community design no. 002138008-0031 for ‘door and window handles’:

The design was registered on 27 November 2017.

On 23 October 2020, VDS Czmyr Kowalik sp.k. (‘VDS’) filed a request for a declaration of invalidity based on lack of individual character of M&T’s registered Community design (‘RCD’) (Artt. 25(1)(b), 6 Community Design Regulation, ‘CDR’). VDS relied on several earlier designs, including the following:

The Cancellation Division of the European Union Intellectual Property Office (‘EUIPO’) declared the RCD invalid because it found that it produced the same overall impression as the earlier design depicted above. The Board of Appeal of the EUIPO (‘BoA’) rejected the appeal. M&T brought an action before the General Court.

The General Court’s decision

The General Court annulled the BoA’s decision.

The Court recalled that the assessment of the individual character of an RCD must be carried out in four stages:

1. Determining the sector to which the products belong;

2. Determining the informed user of those products in accordance with their purpose, the informed user’s degree of awareness of the prior art and the level of attention to the similarities and the differences of the designs;

3. Determining the designer’s degree of freedom in developing the design;

4. Comparing the overall impression of the contested RCD with that of the earlier design, taking the designer’s degree of freedom into account.

1. Relevant sector

It was undisputed that the door and window handle sector was decisive. The judges focused their assessment on the door handle sector.

2. Informed user

The Court recalled settled case law, according to which the concept of ‘informed user’ lies somewhere between the ‘average consumer’ in trade mark matters (who need not have any specific knowledge and makes no direct comparison between the trade marks) and the ‘sectoral expert’ (who is an expert with detailed technical expertise).

The informed user is particularly observant, knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to their features and shows a relatively high degree of attention when using them.

M&T argued that not only the end user constitutes the informed user but also salespeople. The General Court rejected this argument because the concept of the informed user does not refer to a professional quality linked to the product concerned. Additionally, the informed user is neither an expert nor a specialist.

3. Designer’s degree of freedom

In line with previous case law, the General Court found that the designer’s degree of freedom with respect to a door handle is high because it can be made in a significant variety of shapes, colours and materials.

4. Comparison

The General Court recalled that the individual character of a design results from an overall impression of difference, or lack of ‘déjà vu’, from the point of view of an informed user in relation to any earlier design. The comparison of the overall impressions must be synthetic and may not be limited to an analytic comparison of a list of similarities and differences.

The judges emphasized that the overall impression must be determined with regard to the normal use of the product. The attention of the informed user is focused on the most visible and most important elements when using the product. The importance of the visible features must be assessed based on their impact not only on the product’s appearance but also on the ease with which it can be used.

The Court also recalled that a high degree of freedom in developing a design reinforces the conclusion that designs, which do not have significant differences, produce the same overall impression. Conversely, a low degree of the designer’s freedom reinforces the conclusion that sufficiently marked differences between the designs produce a dissimilar overall impression.

M&T argued that its RCD received the ‘Red Dot’ international design award. The judges found this not to be a relevant factor because it does not say anything about the overall impression the design makes on the informed user.

As regards the most important parts of a door handle, the Court held that they are those corresponding to the outward-facing parts of the handle, namely the front, side and top parts. However, differences at the back will also be visible to the informed user.

On that basis, the General Court observed the following:

• The differences in the curvature of the edges and the shape of the neck will not be overlooked.
• The rounded curvature of the edges of the contested design is accompanied by a thinner and smoother appearance which the informed user will easily notice.
• The rounded and thinner shapes of the edges of the contested design constitute differences from the earlier design, which will be perceived by the informed user as influencing the manipulation of the handle. These design elements have an impact on the ease of use of the handle. Therefore, they are important elements for the overall impression produced by the contested design.
• The differences in the angles of the grip and the neck are neither marginal nor minor variations. A more rounded shape generally results in a softening of the lines, which has a significant effect both on the overall appearance and on the ease of use of the door handle.

Despite the high degree of the designer’s freedom, these differences were held to be sufficiently significant to produce a different overall impression.

Comment

The General Court adopted a practical approach. The informed user will not just look at the designs as they are but consider their use. This may bring design elements to the informed user’s attention, which might not appear as relevant when merely observing the design. This approach is in line with the fact that design rights are meant to protect a design for the purposes of incorporation into a product.