June 2024

Decisions of the Invalidity Division of the European Union Intellectual Property Office (EUIPO) Regarding the Rejection of RCD application for a declaration of invalidity

Recently, decisions numbered 121569 and 121529 were issued by the Cancellation Division of the European Union Intellectual Property Office (EUIPO) in the context of a dispute over the submission of applications for the cancellation of community designs before the EUIPO. The registered designs of our client had been incorporated into bags and have become established in both the Greek and European markets. These two aforementioned decisions deserve special mention and careful review primarily because they assessed the individual character of two designs of our client in comparison with a prior design that had been registered by the same client before the EUIPO. Indeed, as the EUIPO ruled in these decisions, the said prior design of our client was the only prior design correctly invoked by the applicant-opponent, and its prior disclosure was proven with adequacy and certainty, as required by the extensive relevant case law of the EUIPO and the Union courts. Thus, the Cancellation Division, after determining that the evidence submitted by the opponent regarding the alleged disclosure of the other designs mentioned in the applications was inadmissible due to apparent flaws, accepted that the disclosure of the contested prior design of our client was duly proven through the invocation and submission of the relevant registration certificate. Consequently, it proceeded to examine the individual character of the contested subsequent designs of our client in comparison with the said prior design.

Specifically, the Cancellation Division, after identifying the product category in which the contested designs of our client are incorporated, the profile of the informed user of these products, and the degree of freedom of the designer in creating the contested designs, concluded that the overall impression created by our client’s subsequent designs on the informed user differs significantly from the overall impression created by the contested prior design of the same client. The factors and specific characteristics of the subsequent designs that, in the opinion of the Cancellation Division, contribute to this different overall impression are as follows: the different design of the opening and closing mechanism of the subsequent designs, the different dimensions and shape of the strap holding the opening-closing mechanism, the side fabric pockets, the small logo located at the bottom right part of the front surface of one of the two subsequent designs, as well as the additional straps that facilitate the transportation of the bag into which one of our client's subsequent designs is incorporated.

For the sake of completeness, the critical considerations of the aforementioned decisions that support the conclusion regarding the fulfillment of the substantive requirement of individual character, and thus the validity of our client's designs contested by the opponent, are provided below: «[…] However, contrary to the applicant’s arguments, the contested design does not have a rolled-up top as the prior design, but contains flat closure flap, partly covering the top part of the front side. Straps in the middle of both designs differ in their lengths, widths, shapes and proportions. In the contested design, the strap is short and wide, affixed at the end of the closure flap and incorporates a Velcro-type closing, whereas in the prior design the strap is long and narrow, affixed at the back side of a lunch bag, runs through the top to the front side and ends with a metal snap button closure. Although, as claimed by the applicant, they perform technical function, there are no specific requirements for straps to be of particular size, shape or type in order to perform the function of closure and, therefore, they have an impact on the overall impressions created by designs in question. Therefore, despite the abovementioned similarities, there are significant differences between the prior design and the contested design in features that are arbitrary and in which the designer has at least an average degree of freedom. The informed user, who is particularly observant and pays a high degree of attention to the products, will notice the presence of the abovementioned differing features in the contested design and the difference they create in its overall impression, when compared with the prior design. These differences cannot be overlooked, especially if the designs are compared side by side. Therefore, it cannot be claimed that the prior design and the contested design produce the same overall impression. It follows, that the contested design has individual character as required by Article 6(1)(b) CDR[…]», «[…]However, the designs differ in their particular shapes, in the additional strap and two big ruffled pockets at both sides of the contested design. In particular, the presence of two ruffled pockets have significant impact on the contested design’s overall impression. This is because the contested design looks much bulkier and more casual, while the prior design looks lean and minimalistic. The contested design also contains an additional strap and a small rectangle decoration on its front side’s bottom right corner, which are not present in the prior design. Even if, as the applicant claims, the additional strap is a shoulder strap for carrying a lunch bag, it still has an impact on the design’s overall impression. Therefore, despite the abovementioned similarities, there are significant differences between the prior design and the contested design in features that are arbitrary and in which the designer has at least an average degree of freedom. The informed user, who is particularly observant and pays a high degree of attention to the products, will notice the presence of additional features in the contested design and the difference they create in its overall shape, when compared with the prior design. These differences cannot be overlooked, especially if the designs are compared side by side. Therefore, it cannot be claimed that the prior design and the contested design produce the same overall impression. It follows, that the contested design has individual character as required by Article 6(1)(b) CDR[…]».