Are Registered Community Design Rights Slipping Down the Drain?

The law relating to Community design rights is set out in COUNCIL REGULATION (EC) No 6/2002 otherwise known as the Community Designs Regulation ("CDR").

A recent case T-15/13 - Group Nivelles v OHIM - Easy Sanitairy Solutions (Caniveau d'évacuation de douche), (yet to be translated and released in English) makes very interesting reading in relation to the application of Articles 5 and 6 of CDR namely novelty and individual character and will be seen as remarkable by the design community. 

Articles 5 & 6 of CDR read as follows:

Article 5 - Novelty

1. A design shall be considered to be new if no identical design has been made available to the public: (a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public; (b) in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.
2. Designs shall be deemed to be identical if their features differ only in immaterial details.

Article 6 - Individual character

1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public: (a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public; (b) in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.

Case T-15/13 (Group Nivelles)

The case in question, determined by the General Court ("GC") related to the validity of a registered Community design ("RCD") for an elongated shower drain applied to products in the consumer market for home and sanitary appliances. The main question within the case was whether prior art may be taken into account when assessing the novelty and individual character (see above) of RCD's. The submitted prior art drain was applied to products for industrial use. The question was whether such prior art may be included in the assessment of validity.

Decision

With regard to novelty the GC held that all identical designs that are made available to the public are novelty-destroying. This is so even when they are applied to or incorporated in other products.  However, for individual character the nature of the product to which the design is applied or in which it is incorporated and the sector to which it belongs are considered relevant. Other products are not excluded from the individual character assessment per se, but the assumption that the informed user knows of the various designs which exist in the sector concerned does not cover other products.

The GC's argument is that a RCD gives enforceable rights against a product that does not produce a different overall impression and thus should apply to the novelty assessment.

The GC's view on individual character contrasts with novelty.  Individual character is based on art 6 CDR considered in light of recital 14 and its concept the informed user. The GC held that the assessment of the individual character is based on the view of the product user or the user in which it was incorporated.

Both articles 5 and 6 CDR require the comparison to be made in respect of designs made available to 'the public' in accordance with article 7.  In respect of this the GC held that all identical designs, applied or incorporated within other products made available for public consumption are considered novelty destroying.

Practical Implications

The GC's application of the strictness of the novelty and individual character tests will determine how many will view the outcome of this case.  Too strict an application would be undesirable.

Under Art 5(2) CDR, if the novelty assessment designs only differ because of the immaterial details then they will be seen to be identical. In an earlier GC ruling, the GC has made it clear that designs will be identical if they differ only in immaterial details.  Such details will not be immediately perceptible, so they won't produce even slight differences between the designs.

For the assessment of individual character, the guidance is to follow the basic structure alone and not be influenced by the differences in the details if they do not produce a different overall impression.

These two tests seem to be at polar opposites; the novelty test is strict, the individual character assessment is open to interpretation. The worry stemming from this outcome means that what was once valid may become invalid and lead to misuse and abuse of the registration formalities which is not the desired outcome.