To be valid, a Community design must be new and have individual character, which means it must produce on the informed user a different overall impression from that produced by the designs already disclosed at the time of registration. The publication of a US patent in 1995, although neither marketed in Europe nor even in the US, may be regarded as the disclosure of a prior design, with respect to Community designs of a wind-resistant umbrella.
In the case Senz Technologies BV v. OHIM and Impliva BV (Joined Cases T‑22/13 & T‑23/13, 21 May 2015), the General Court, dealing with invalidity proceedings of the registered Community design of a wind-resistant umbrella, had to decide whether or not the sole publication of a US patent could reasonably be expected to come to the attention of circles specialised in the sector operating within the EU.
Article 7 of the European Regulation 6/2002 on Community designs provides that “(…) a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed (…) except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community.”
The onus is then on the holder of the RCD to show that the disclosure is not relevant. Proving a negative fact is always difficult, especially in this particular case where, as held by the GC:
- “It seems reasonable (…) that the designer of a wind-resistant umbrella, before placing it on the market, will undertake searches in patent registers, as he may be deemed to know that such a product must meet not only aesthetic but also — and to a considerable extent — technical requirements, and that it is therefore reasonable and plausible that a wind-resistant umbrella may have already been patented;
- The fact that a design has never been incorporated into a product is significant only where the applicant has established that the circles specialised in the sector concerned do not generally consult patent registers or that the circles specialised in the sector concerned do not generally attach any weight to patents, in particular American patents;
- The question whether or not the United States are the European Union’s principal trading partner in the field of umbrellas is not per se decisive for ruling on the question whether the earlier patent could not reasonably be known to the specialised circles”.
The applicant failed to adduce any factual evidence or argument that the US patent could not be deemed to be known in the normal course of business by the circles specialised in the sector concerned.
Besides, the Court concluded that since the designer’s degree of freedom was limited, minor differences between the earlier patent and the contested designs were sufficient to produce different overall impressions on the informed user. Given this reasoning, the Court upheld the appeal of the RCD’s holder and annulled the contested decisions invalidating the designs.
This decision appears to confirm the line of reasoning of European case law over the past 10 years, holding that:
- Designs disclosed within the EU through trademarks, patents and/or designs publications, will become known to the circles specialised in the sector;
- Disclosures derived from the internet and bearing a certain date form part of the prior art;
- Trademarks, design patents and patents published in Official bulletins of significant offices such as the USPTO (1) or the Japanese Patent office (2), are also relevant disclosures. For US trade marks, the date of disclosure will be the date of publication, not the claimed date of first use (3);
- Trademarks, design patents and patents published in the country of the applicant (4) might be relevant disclosures.
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(1) Case Honda Giken Kogyo KK v. Kwang Yang Motor Co Ltd, ICD 990, 17 August 2006, about a combustion engine.
(2) Case Sunstar Suisse SA v. Dentaid SL, ICD 420, 20 June 2005, about a toothbrush: “However the publication of a Japanese patent is pertinent disclosure since it was made in the official journal of one of the world’s most important industrial property offices in terms of volume of applications and registrations of designs”.
See also the case Narumi China Corporation v. Kennex (Hong Kong) Ltd, ICD 1592, 26 January 2006, about plates.
(3) Case I-Feng Kao v. Built NY Inc., ICD 2483, 10 October 2006, about bottle carriers for transport.
(4) Case Lin Yu Shiu v. Lin Chun-Ju (two Taiwanese entities), ICD 2905, 3 April 2007, about tool handles.
