Novelty and Individual Character of the Industrial Design

legal insight

December 2023

Thanasis Ioannou, LL.M.

Abstract: When and under what conditions is the design of a stuffed doll protected? Or the design of a solar water heater; or the design for the lid of a hot beverage cup? The subject of this article is the essential requirements for the protection of industrial designs, namely novelty and individual character. The existence of those conditions is not checked before the registration of the design in the register of the Hellenic Industrial Property Organisation (OVI) if it is a national design or of the EUIPO if it is a Community design, nor is any person having a legitimate interest granted the right of opposition at the stage preparatory to the registration of the design. Consequently, the examination of those conditions now falls primarily to the civil courts, which are called upon to determine whether they are satisfied in a second time after registration of the designs, on the occasion of a counterclaim for a declaration of invalidity or an objection of invalidity.

The substantive requirements of novelty and individual character in industrial design law:

1. The concept of disclosure of an earlier design

A finding that the positive substantive requirements of novelty and individual character are satisfied or not requires that a prior design, which is identical or does not create a different overall impression, has been made available to the public in any manner whatsoever anywhere in the world, not only in the European Union. In particular as regards the novelty requirement, the case law of the EU courts accepts that the nature of the product to which the earlier design has been applied is not relevant in the context of the relevant investigation. Therefore, in order to determine initially whether the contested design fulfils the element of novelty, it will be compared with one or more earlier designs, even if they have been incorporated into products other than those identified by the right holder in his application (e.g. a pattern of a handbag may be compared with a pattern incorporated into a fabric chair for the purposes of determining whether the contested design is new). Disclosure of a design may, by way of example, take place by putting it into circulation, by registering the externally visible image of the whole or part of a product as a national or Community design, as a national or EU trade mark, or by attaching it to a patent.

The invocation and proof of any of the above by the party claiming the invalidity of the subsequent design triggers the so-called presumption of disclosure. This presumption may be rebutted by the proprietor if he invokes and proves either that the disclosure/disclosure in question could not reasonably have become known in the ordinary course of events to circles specialised in the relevant field and carrying on business within the Union before the date of filing of the application for registration with the OVI (Article 13(1)(b) of the Patent Law) or that the disclosure/disclosure in question could not reasonably have become known in the ordinary course of events to circles specialised in the relevant field and carrying on business within the Union before the date of filing of the application for registration with the OVI (Article 13(1)(b) of the Patent Law). 1 of Decree No 259/1997) or that the earlier design was disclosed to a third party under the express or implied condition of confidentiality (Article 13(2) of Decree No 259/1997). 

Furthermore, the Law provides for three cases of disclosure circumstances which, exceptionally, are not taken into account when assessing the new and individual character of the registered design. These are either the disclosure made by the designer or his successor in title within the single grace period preceding the date of filing the application for registration (Article 14(1) a' of Decree 259/1997) or disclosure due to unlawful conduct towards the author or his successor (Article 14(1)(b) of Decree 259/1997) or the presentation of the design at an officially recognised international exhibition up to six months before the date of filing with the OVI (Article 14(2) of Decree 259/1997).

It follows from the above that the assessment of the novelty and individual character of the registered design requires an independent comparison with one or more individual designs which are precisely defined, individualised, specific and defined within the set of designs previously made available to the public, but not a comparison with a combination of individual elements drawn from several earlier designs (e.g. a general design or a design which is not a design which is not a design which has been made available to the public), and not a comparison with a combination of individual elements drawn from several earlier designs (e.g. a general design which has been made available to the public, a design which has been made available to the public). Indeed, such a combination of individual and already known features is not excluded a priori from the protection of industrial design law, since it may fulfil the positive essential elements of novelty and individual character (e.g. the designer of a lunch bag adopts in an original way the opening and closing mechanism previously used in school bags).

2. The concept of novelty of an industrial design

A design is identical to an earlier design if the latter contains all the features which make up the former or if their features differ only in minor details (Article 12(3) of Decree 259/1997), i.e. details which are not immediately perceptible and which therefore do not create even negligible (insignificant) differences between the designs in question. On the contrary, perceptible differences in a direct comparison of the designs constitute novelty. By contrast, it follows that in order to establish the novelty of a design, it is necessary to establish the existence of substantial differences with the earlier designs, which the invalidity claimant relies on in the action, counterclaim or even objection (where this can be admissibly raised as described above).

2.1 Examples of case-law on the lack of the condition of novelty

Decision No 1567/2022 of the Athens Court of First Instance held that a design for a metallic packaging for wafers lacks novelty and is therefore invalid on the basis of the following premises: '[...] The registered design at issue depicts the externally visible image of a metallic packaging for wafers, which has the following essential characteristics: a) the shape of an upright cylinder, and b) a slightly flattened lower base. However, at least from the year 2013, i.e. before the filing of application No. .... the products, in particular culinary delicacies made from duck liver, have been marketed under the composite marks 'Secret d'Eleveurs' and 'LARNAUDIE Prestige' in packaging which, when compared (each in isolation) with the design at issue and without taking into account the specific marks applied to them, are identical to the design in question within the meaning of Article 12(3). Decree No 259/1997, since both of the abovementioned essential characteristics apply to them, which together determine their visible external appearance. [...] It should be noted that the applicants themselves describe the shape appearing on the contested certificate in the description with the words 'TUTU SHAPE', placed in brackets, which indicates their knowledge that the contested design or model refers to a previously disclosed and widespread shape. It is submitted that the substantive positive requirement of novelty is lacking, and therefore the objectively cumulative action for a declaration of invalidity of the contested design must be upheld as valid in substance and the latter must be declared invalid [...]'.

In the very recent judgment No 4946/2023 of the Athens Court of First Instance, which was delivered in the course of the interlocutory proceedings, the claim that registered designs were invalid because of prior disclosure by the designer himself was upheld. In particular, that judgment accepted that: "the novelty and individual character of the latter has been annulled, in accordance with the provisions of Article 14(1)(b) of Regulation (EC) No 40/94. 1 of Decree 259/1997 and 7 par. 2 of Regulation 6/2002, since a period of more than one year had elapsed between the time when the original designs were first made available to the public (2016) and the time when the first application for registration No. 2020060014 of 20.02.2020, concerning national designs No. 6004476, was filed on behalf of the applicant, and it is stressed that it is irrelevant whether the initial putting into circulation was carried out by the designer himself. [...] In the present case, it is recalled that the applicant filed on 26.01.2017 before the European Union Intellectual Property Office (EUIPO) the European trade mark No. 016293318, which was registered in the EU Trade Mark Register on 12.05.2017. This mark includes as its distinctive feature elements of the above designs/designs in dispute, for the registration of which the first application of the applicant was filed before the OHIM on 20.02.2020, i.e. after a period of more than three (3) years, since the "disclosure" of part of the externally visible image of the subsequently filed designs/designs, by filing the above mentioned application for a European trade mark of 26.01.2017".

3. The concept of individual character of an industrial design

The assessment of the individual character of a design in the context of comparing it with any earlier design from among the set of earlier designs is multifactorial and essentially staggered in four sub-stages. In particular, the object of this examination is to determine, first, what is understood to be the sector of the products in which the design is to be incorporated or applied, second, what is understood to be the informed user of those products in terms of their purpose and, in relation to that informed user, what is the degree of knowledge of the prior technological development and the degree of attention to similarities and differences when comparing the designs, third, what was, at the time the design was drawn up, the degree of freedom of the designer, which is inversely related to its individual character, and, fourth, having regard to the latter, what is the result of a comparison, if possible direct, of the overall impression produced on the informed user by the contested design and each earlier design which has been made available to the public, considered separately.

At the outset, a definition of the concept of the informed user, whose perception is sought in order to assess the individual character of the contested design, must be given. In particular, according to the case-law of the European Union, the term 'informed user' means either the end user or the professional purchaser who uses the product to which the registered design is applied or incorporated, in accordance with the intended purpose of that product. It follows from the aggressive term 'informed' that, without being a designer or a technical expert, the user is familiar with the various designs existing in the sector concerned, has a certain knowledge of the elements which are normally included in them and, because of his interest in the products concerned, shows a relatively high degree of care when using them. The concept of the 'informed user' is therefore placed at the interface between the average consumer, a concept which is crucial in the context of trade mark law, and the sectoral expert, who possesses specific technical knowledge. 

The informed user, therefore, when observing and comparing the designs under comparison, exercises particular care, either because of his professional experience or because of his wide range of knowledge in the relevant field. That is because the informed user is already by nature a person who takes a particular interest in the design of the product concerned, and in general in the trends in the field of design, art and fashion which may have been adopted in the preparation of the design in question.

Furthermore, the degree of freedom of the creator, the other decisive factor in the assessment of individual character, depends in particular on the restrictions relating either to the characteristics imposed by the technical function of the product or an element thereof or to the specifications imposed by law on the product concerned. Such limitations have the effect of making certain characteristics the norm and common to the designs relating to the product concerned. It is easy to see that the creator of designs intended to be incorporated into fashion items (e.g. handbags, shoes) enjoys a significantly higher degree of freedom than the creator of a design for a product which, among other things, is intended to perform technical functions (e.g. an electrical appliance or a car).

The greater the freedom of the creator when drawing up a design, the less the minor differences between the designs in question are sufficient to create a different overall impression on the informed user. Conversely, the more limited the freedom of the designer, the more likely it is that minor differences will be sufficient to create a different overall impression on the informed user. Consequently, designs with only insignificant differences between them will produce the same overall impression on the informed user if they enjoy a high degree of freedom, whereas, conversely, a low degree of creator freedom favours the conclusion that sufficiently marked differences between designs or patterns will produce a different overall impression on the informed user.

In short, the individual character of a design results from the different overall impression or the impression of 'novelty' that it creates in the informed user, as compared with any previous such design, taking into account sufficiently distinctive differences that are sufficiently marked to create a different overall impression. Indeed, the informed user in comparing the compared designs will focus his attention on the features that are arbitrary and deviate from the norm. In any event, it follows from the very letter of the concept of 'overall impression' that the comparison of the overall impressions created by the designs or models must be global and cannot be exhausted by an analytical enumeration of differences and similarities. However, it cannot be ruled out that, when comparing designs, the overall impression created by each of them may be dominated by certain characteristics of the corresponding products or parts thereof.

3.1. Legislative examples of judgments on the existence or otherwise of individual character

With regard to sample packaging of cleaning products, the decision No. 4336/2019 of the Athens Court of First Instance held that the concept of an informed user includes "someone who buys cleaning products and is informed on the subject by visiting retail stores and supermarkets, where they are available, by consulting brochures of offers for household items and by conducting relevant searches on the internet. That user is familiar with the various designs or models available in the field of cleaning products, has a certain knowledge of the elements which those designs or models normally contain and, because of his wide range of knowledge, is particularly diligent. 

Furthermore, as regards the individual character of the industrial design at issue, the abovementioned judgment ruled as follows: "Furthermore, although the packaging of the second category of goods has a cylindrical shape and a handle in common with the contested design, each of them has essential differences from the design at issue [...]. It should be noted that the products in (d) and (e) above show differences which are perceptible to the informed user even in the features common to the contested design, as: (a) their peripheral recess is very shallow in order to maintain the 'one-piece' cylindrical appearance and not to give the impression of a narrow 'bottle' waist, and (b) the neck is semi-cylindrical in shape and the handle protrudes and is therefore not inscribed in the neck. The abovementioned distinctive differences between the two categories of goods are sufficiently marked that any earlier packaging, assessed globally, would create a different overall impression on the informed user from the overall impression created by the design in question, taking into account the relatively high degree of freedom of the designer in its preparation'.

Judgment No 963/2022 of the Athens Court of First Instance held that 'an informed user of a plush toy is a person who is interested in purchasing one as a souvenir, gift, toy, decoration or collector's item and who becomes informed about it by visiting retail shops, consulting trade catalogues or carrying out relevant searches on the internet. That user is familiar with the various designs or models available in the field of stuffed animal toys, has a certain knowledge of the elements which those designs or models normally contain and, because of his wide range of knowledge, is particularly diligent'. In assessing the overall impression which the contested designs of the parties create on the informed user, the above judgment made the following assumptions: "The first defendant in the month of January in the year 2018 participated in an industry exhibition in M... where it advertised a stuffed toy in two sizes, 22 and 30 cm, with codes TRWJ-23S and TRWJ-23M, respectively, and subsequently imported from China and made available to its customers 3. 600 pieces of the upper lutrine, manufactured by the company 'U...', the exterior of which consists of a representation of a donkey in a sitting rather than standing position, with a mane, shorter forelimbs (asymmetry of limbs), [... (a) the protection of a design extends to any design which does not create a different overall impression on the informed user, even if there is no likelihood of confusion on the part of the average consumer because the goods in question bear dissimilar distinctive signs (see paragraph 2(a) of the contested decision). (b) any minimal variation in the ratio of height to diameter is not perceived by the informed user and does not alter the overall impression (see paragraph 10); and (c) it is clear from the registered design that it applies to a stuffed toy, that is to say, a toy made of a material which is similar in texture to fur and filled with a soft material, which is also the case with the first defendant's product. Any differences in texture, fabric and colour shade are considered to be minor and insignificant. In view of the above, the synergy of the above fundamental characteristics in both designs at issue creates a similar overall impression on the informed user, taking into account the particularly high degree of freedom of the designer in the preparation of the registered design. It should be noted that, despite his relatively high level of attention, the aforementioned informed user does not observe in detail the minor differences that may exist between the conflicting designs.

Judgment No 4075/2019 of the Athens Multi-Member Court of First Instance in an action for infringement of, inter alia, a registered national industrial design for the rear face of a metal cover of a solar water heater, summarised the characteristics of the informed user of those products as follows: 'an informed user (i.e. of solar panel back covers) is defined as a person who is interested in purchasing or replacing a solar water heater and who obtains information on the subject by visiting manufacturers or their commercial representatives and distributors, consulting commercial catalogues or carrying out relevant searches on the Internet'. Having then made a global assessment of the overall impression produced on the informed user by the opposing parties' contested designs, that judgment concluded that 'although the contested designs have a circle, spokes and triangular shapes in common, they differ substantially from each other, both in terms of the size of the circle and the number of spokes and triangles contained in each of them. These are characteristic differences which are sufficiently marked that the contested shapes, when assessed globally, give the informed user a different overall impression. Indeed, the informed user will perceive, on the one hand, the registered design at issue as a representation of a star, since the circle and the rays are visually emphasised as a single whole, dominating the overall impression, and, on the other hand, the design used by the defendant as a simple composition of geometric shapes, since the circle and the six triangles are visually emphasised, so that only they dominate the overall impression...'.

Finally, the Athens Polymeric Court of First Instance, in its judgment No 5898/2013, in the context of an action for a declaration of invalidity of a registered national design for a lid for a cup for a hot drink, declared that the design was invalid, having found that the design of the first defendant, the proprietor company, lacked individual character, on the basis of the assumption that it was merely an improved version of earlier designs which had been widely circulating on the market for years and used to cover the same purpose. In particular, that judgment ruled the following with regard to the lack of individual character of the contested registered design of the first defendants: "[...] the defendants admit that such lids are widely marketed, used to seal cups of hot beverages sold for retail consumption off the premises and to enable such consumption on the go without removing the cap, and that the one described in the certificate is an improved version of earlier designs. They claim that its specific characteristics and dimensions make it unique and distinguish it from the rest. They refer to its special dimensions, which their witness also stated that they are the result of many tests and long-standing design, but these dimensions, with the exception of the height of the front turret and the circular rim, are not included in the drawings incorporated in the above-mentioned certificate. They further state that the existing lids up to that time had defects, such as poor fit to the containers, no raised turret or a turret of different heights, no dent in the middle or a dent of different shape and size, or a badly placed hole. However, on the one hand, these defects are not absolute, e.g. a poor fit in the cup depends equally on the design and dimensions of the latter, which, even if standardised, cannot be absolutely identical in all manufacturers, and the good positioning and ideal size of holes, turrets, etc. can only apply to an average of the physical characteristics of the users-consumers themselves, and on the other hand the specific characteristics of the design are by their very nature complementary to those found in other constructions. The appearance of the specific features in the design in question cannot, moreover, give the design an individual character and create in the informed user an impression different from that produced in the same user by any other design or model of the same kind'.

4. In lieu of an epilogue

It follows from the foregoing analysis that the positive substantive conditions which must be met in order to trigger protection of an industrial design, namely novelty and individual character, may be understood as two concentric circles, the smaller of which represents the condition of novelty and the larger of which represents individual character. This is because the regulatory scope of the provision of Article 12(4) of Decree No 259/1997 (and, correspondingly, of the provision of Article 7(1) of Regulation No 6/2002) is broader than that of Article 12(3) of the same article (and, correspondingly, of the provisions of Article 6(1) and (2) of Regulation No 6/2002) in the sense that the essential differences may be sufficient to establish the novelty of a design, but may not give rise to a different overall impression.  By contrast, it follows that a different overall impression is created in the mind of the informed user only where there are objective differences which also constitute novelty at the immediately preceding stage of the relevant legal examination of the validity of the industrial design.  Thus, the conditions of novelty and individual character overlap to a certain extent.

It is also crucial to clarify that the concept of individual character should not be confused with the concept of likelihood of confusion. The latter is a prerequisite for the protection of distinctive features of the essential system and trademarks, while at the same time being inconsistent with the structure of the system of protection of industrial designs, the main pillars of which are Decree 259/1997 at national level and Regulation 6/2002 at EU level. After all, in the field of industrial design law, the decisive factor is the overall impression created by the designs because of their externally visible characteristics, and not their commercial origin from a specific undertaking. The legal interest to be protected under industrial design law is therefore the design effort and inspiration of the creator of the design, which makes the product in which it is incorporated more attractive to the consumer. By contrast, the function of origin, which is the main protected interest in the context of trade mark law, does not exist as a concept in industrial design law, since it is outside the scope of the law of industrial designs. Of course, if the proprietor of the design also invokes the provisions of unfair competition in his action or application for injunctive relief in the alternative, he must also include in the historical basis of his action or application facts that establish the likelihood of confusion in order to protect his design as a "interference" (Article 13 of Law 146/1914).