The "déjà vu" feeling - nullity of an EU design (lamp)

The "déjà vu" feeling - nullity of an EU design (lamp)

In a recent case, the European General Court (EGC) had to deal with the invalidity of a lamp design and to assess whether it had individual character. It was also particularly interesting that the older design had already been declared invalid.

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EU Design No. 2503680-0001

I. General facts about EU design protection

Designs are two- or three-dimensional appearances of a product or a part thereof, resulting from the features of the lines, contours, colors, shape, surface structure and/or materials of the product itself and/or its ornamentation. For EU-wide design protection, two requirements must be met: It must be “new” and have “individual character”. Individual character means that the resulting overall impression of the design must be different for the informed user from the impression of older and prior designs. Novelty means that no identical design may have been published in the EU before the filing date. Note: There is however a so-called 12-month grace-period with respect to EU (and also German) designs. Therefore, not absolute novelty is necessary.

II. Background of the Case

On 16 July 2014, the applicant, Davide Groppi Srl, filed the EU design application No. 2503680-0001 with the European Union Intellectual Property Office (EUIPO) as pictured above. The contested design was registered for the product 'lamps' in Locarno Class 26-05.

On 3 March 2017, the other party to the proceedings before the EUIPO Board of Appeal (BoA), Viabizzuno Srl, filed an application for a declaration of invalidity with the EUIPO for lack of individual character. It based its request on the earlier EU design No. 1294664-0010 (pictured below), which had in the meantime been declared invalid on 30 October 2018 due to lack of individual character. Both the Cancellation Division and the BoA, which was subsequently called upon, granted the application for a declaration of invalidity. Now the European General Court (EGC) had to deal with the case.


EU Design No. 1294664-0010


III. Decision of the EGC

First, the EGC clarified that it is irrelevant that the earlier EU design has been declared invalid in the meantime, since the legal prerequisite for the novelty of the design is not the validity of an earlier design but the disclosure of the design. Further, the EGC stated that the assessment of “individual character” of a Community (or EU) design essentially involves an examination in four steps (see judgment dated 13 June 2019, Visi/one/EUIPO - T-74/18, EU:T:2019:417).


Step 1: Determining the industry of the products in which the design is intended to be incorporated or to which it is intended to be applied


The applicant accused the BoA of equating two different products, namely table lamps and garden lamps. This was countered by the EGC. The registration of the challenged design refers to luminaires in general. No additional reference is apparent, so it cannot be determined that the lamp is intended to be used specifically for indoor or outdoor lighting purposes.


Step 2: Determination of the informed user of these products according to their intended purpose and, with reference to this informed user, the degree of knowledge of the state of the art and the degree of attention to similarities and differences when comparing the designs


The BoA also did not err in identifying the "informed user". The EGC noted that this term is not defined in Regulation No 6/2002. However, it must be understood as a concept which lies between that of the average consumer, similarly applicable in the trademark field, who is not expected to have any special knowledge and who generally does not make a direct comparison between the conflicting marks, and that of the expert with profound technical skills. In the present case, that person is rightly deemed to be the person who uses the lamps and is familiar with market offerings in that industry.


Step 3: Determination of the degree of freedom of the designer in the development of the design, the influence of which on the individual character is inversely proportional


The assessment of the BoA on the freedom of design was not objected to by the applicant. The EGC therefore only states in general terms that this is a factor which makes it possible to nuance the assessment of the individual character of the contested design, and not an independent factor which determines the extent to which two designs must differ from each other in order for one of them to have individual character.


Step 4: Comparing, as directly as possible, the overall impressions which the contested design and the earlier design made available to the public each evoke in the informed user


First, the BoA found that the designs at issue represented lamps consisting of the same three parts, which were visually almost identical. According to settled case law, the individual character of a design results from an overall impression of dissimilarity or lack of "déjà vu" from the point of view of the informed user. The differences in the base of the luminaires are not sufficient to create the overall different impression.


IV. Conclusion

In this decision, the EGC examined the individual character of a community (EU) design in a textbook manner. The novelty of the design was rejected on the basis of an interesting aspect – namely, it is not the validity of an older design that matters, but its disclosure.


For further information please read the full decision here.