Judgment of
the General Court 21 May 2015 in Joined Cases T-22/13 and T-23/13 Senz
Technologies B.V. vs. OHIM and Impliva B.V. (intervener)
The battle between Senz Technologies B.V. (Senz)
and Impliva B.V. (Impliva) with regards a “storm” umbrella has a long history
going back to 2006. This Judgment is interesting as the Community Designs of
Senz concerning a storm umbrella were declared invalid in 2010 by the
Invalidity Decision (no individual character) which decisions were appealed by
Senz, which appeals were dismissed by the Third Board of Appeal of OHIM in 2012 (no distinctive
character). However, Senz has more
succes with the General Court. The General Court decided that the storm
umbrella has in fact an individual character. In short:
102 It
follows from all the foregoing that the Board of Appeal erred in concluding
that the contested designs do not have individual character. The applicant’s
second plea is therefore admissible. The action must therefore be upheld and
the contested decision annulled.
The decision is also interesting as the
General Court made clear that it doesn’t matter that an earlier design (relied
on by Impliva as “prior art”) never has been incorporated into a product. In
short:
36 As
to the argument that the umbrella covered by the earlier patent has never been
produced — a point not contested, moreover, either by OHIM or the
intervener — it is clear that Article 7(1) of Regulation
No 6/2002 does not impose any requirement that the earlier design relied
on by the opposing party must have been used for the manufacture or marketing
of a product.
37 However,
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. In such scenarios, the
argument that there are no umbrellas covered by the earlier patent on the
market may make faintly plausible the fact that the earlier patent may have
been known to the circles specialised in the sector concerned through other
forms of information. In the present case, the fact that the umbrella designated
by the earlier patent has never been produced shows that the earlier patent
could not have been known to the circles specialised in the sector concerned
through advertising, marketing activities or catalogues. However, that fact
does not establish that the circles specialised in the sector concerned could
not have reasonably gained that knowledge otherwise, such as through an online
search in the American patent register.
From the judgment: On 25 August 2006, the applicant, Senz Technologies BV,
filed two applications for registration of a Community design with the Office
for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on
Community designs (OJ 2002 L 3, p. 1).
The
Community design at issue in Case T‑22/13 was registered under number
000579032-0001 and published in Community Trade Marks Bulletin
No 118/2006 of 17 October 2006, the indication of which mentions
‘umbrellas’, and which is reproduced below:
The
Community design at issue in Case T‑23/13 was registered under number
000579032-0002 and published in Community Trade Marks Bulletin
No 118/2006 of 17 October 2006, the indication of which mentions
‘umbrellas’, and which is reproduced below:
On
16 July 2009, the intervener, Impliva BV, lodged an application for a
declaration of invalidity pursuant to Article 52 of Regulation
No 6/2002 in respect of each of those designs (‘the contested designs’).
Each of those applications for a declaration of invalidity was based on
Article 25(1)(b) of Regulation No 6/2002 alleging that the contested
designs do not comply with the requirements laid down in Articles 4 to 9
of that regulation.
The
intervener contended in particular that the umbrellas covered by the contested
designs did not have individual character, because they make the same overall
impression on the informed user as a certain number of umbrellas with an
identical or similar shape which have been the subject of patents or designs
registered and made available to the public prior to the registration of the
contested designs. The earlier rights relied on included American patent
No 5505221 (‘the earlier patent’), registered on 9 April 1996 and
represented as follows:
On
18 October 2010 the Invalidity Division upheld the intervener’s
applications for a declaration of invalidity. It found that the earlier patent
had been made available to the public within the meaning of Article 7(1)
of Regulation No 6/2002 following its publication on the website of the
United States Patent and Trademark Office (USPTO), which site is freely
accessible free of charge in all Member States of the European Union. While
considering the freedom of the designer in the creation of the contested
designs to be limited, the Invalidity Division was of the opinion that, despite
the fact that the contested designs were new within the meaning of
Article 5(1) of Regulation No 6/2002, they were devoid of individual
character within the meaning of Article 6(1) of that regulation. Also
according to the Invalidity Division, the overall impression that each of the
contested designs and the earlier patent had on the informed user was
essentially the same as a result of the straight handles and especially the
asymmetrical shape of the canopies which were each supported by eight ribs
symmetrically arranged around the tip of the handle. By contrast, the exact
spacing and shape of the ribs (straight or curved) was of only minor importance
for the informed user, who, furthermore, was not familiar with designs of
asymmetrical umbrellas.
On
14 December 2010 the applicant brought an appeal against each of the
decisions adopted by the Invalidity Division.
By
decisions dated 26 September 2012 (‘the contested decisions’), the Third
Board of Appeal of OHIM dismissed the appeals on the ground that the contested
designs did not have distinctive character.
The
Board of Appeal considered that the earlier patent could reasonably be known to
the circles specialised in the sector concerned within the European Union. First,
the site of the USPTO register is accessible free of charge. Secondly, designs
are known in the United States as ‘design patents’. Thirdly, it would be unwise
on the part of those circles not to check whether prior art already exists in
the American register, which is one of the most important registers of
intellectual property rights in the world. Finally, the fact that the United
States is the most important trading partner of the European Union makes it
unlikely that the circles specialised in the sector concerned do not consult
the USPTO register.
The
Board of Appeal also held that the informed user knows the different designs
and the normal characteristics of umbrellas and has a relatively high level of
attention.
The
freedom of the designer is limited as regards the design of an umbrella. There
is, however, some degree of freedom as regards the overall shape and size of an
umbrella and a considerable degree of freedom as regards the wide range of
possibilities of decorating the canopy of an umbrella with patterns and
colours.
As
regards the overall impression produced by each of the contested designs, the
Board of Appeal held that it was determined principally by the under and
lateral sides of the umbrella designs, because while using the umbrella the
user will be beneath it and will not see the umbrella from above. Despite his
relatively high level of attention, the informed user pays attention to the
basic structure and not the details, which moreover do not alter the fact that
all the umbrellas covered by the earlier patent and the contested designs
produce essentially the same overall impression, in particular because of their
unusual appearance, which is elongated, asymmetric and ‘beak-like’, and of the
fact that the distribution of the ribs, the proportions of the canopies and the
spacing are similar. Finally, the fact that some of the depictions of the
contested designs show a black or brown canopy, whereas the earlier patent is a
simple diagram, is not a significant difference.
Important
considerations:
35 As
to the applicant’s argument that the excessive searches to be undertaken would
be beyond the financial means of designers and small enterprises, suffice it to
note that the applicant has not adduced any factual evidence or argument which
is not simply an allegation to the effect that in the present case the circles
specialised in the sector concerned are made up only of individual designers
and small enterprises which, moreover, as a rule do not have the means to
undertake searches to check for the existence of prior art outside the European
Union. The applicant in effect merely states that the circles specialised in
the sector concerned operating in the European Union do not consist of ‘large
companies’. However, the applicant goes on to state that there are ‘a few
larger (mainly German, Austrian and Dutch) companies and a lot of small
companies or individuals’ and that it is highly unlikely that the latter will
browse in the American patent register. Even if that observation were held to
be correct, in putting forth that argument the applicant recognises that the
‘few larger companies’ which, in the light of the point made in
paragraph 30 above, must be regarded as forming part of the circles
specialised in the sector concerned, probably do carry out such searches. Nor
has the applicant provided any specific information about the companies
operating in the European umbrellas sector. Accordingly, the applicant has once
again failed to substantiate its allegations using arguments which are not
simply allegations.
36 As
to the argument that the umbrella covered by the earlier patent has never been
produced — a point not contested, moreover, either by OHIM or the
intervener — it is clear that Article 7(1) of Regulation
No 6/2002 does not impose any requirement that the earlier design relied
on by the opposing party must have been used for the manufacture or marketing
of a product.
37 However,
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. In such scenarios, the
argument that there are no umbrellas covered by the earlier patent on the
market may make faintly plausible the fact that the earlier patent may have
been known to the circles specialised in the sector concerned through other
forms of information. In the present case, the fact that the umbrella
designated by the earlier patent has never been produced shows that the earlier
patent could not have been known to the circles specialised in the sector
concerned through advertising, marketing activities or catalogues. However,
that fact does not establish that the circles specialised in the sector
concerned could not have reasonably gained that knowledge otherwise, such as
through an online search in the American patent register.
38 Lastly,
as to the argument put forward by the applicant to the effect that the United
States are not the European Union’s principal trading partner in the field of
umbrellas, it must be observed that the question whether or not that is the
case is not per se decisive for ruling on the question whether the earlier
patent could not reasonably be known to the specialised circles. Even if the
United States are not the European Union’s principal trading partner in the
field of umbrellas, it still seems reasonable that a search might be undertaken
in the American patent register, since the United States carries at least a
certain commercial importance for the circles specialised in that sector
operating in the European Union. As the applicant has failed to adduce evidence
showing that that market plays only a very minor role in the normal course of
business for the circles specialised in the sector concerned, its argument is
irrelevant for the outcome of the present dispute.
39 In
the light of all the foregoing, the conclusion is therefore that the applicant
has failed to establish sufficiently that the circumstances of the present case
prevented the circles specialised in the sector concerned from learning of the
publication of the earlier patent on the USPTO website and thereby learn of the
patent. Accordingly, the Board of Appeal did not err in finding that the
earlier patent had been made available within the meaning of Article 7(1)
of Regulation No 6/2002. The first plea in law relied on by the applicant
must therefore be rejected in its entirety.
Court observes, first, that the Board of
Appeal, in paragraph 29 of each of the contested decisions, found only
that ‘[d]ifferences between the umbrellas … also depend on aerodynamic
considerations rather than pure aesthetic design’. Nor did it examine to what
extent the features of the appearance of the contested designs were ‘solely’
dictated by their function.
101 The
Court also observes that Regulation No 6/2002 does not provide for a
limitation of protection for designs and those of their features which (also)
fulfil a technical function. It is only when one or more features of a
product’s appearance are dictated solely by its technical function that that
regulation provides that such a feature must not be taken into account for the
purposes of such an assessment of individual character. The Board of Appeal
therefore erred in attaching only limited importance to the features which also
resulted from the wind-resistance function of the umbrellas covered by the
contested designs for the purpose of assessing the individual character of
those designs.
102 It
follows from all the foregoing that the Board of Appeal erred in concluding
that the contested designs do not have individual character. The applicant’s
second plea is therefore admissible. The action must therefore be upheld and
the contested decision annulled.
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