In the legal dispute about two grill bowl designs before the CFI, the contested GRILL BOWL Community design was challenged in its individual character because of an older national grill bowl design – submitted as a patent specification. May the patent claims be used in the comparison of the overall impression?
The European Court of Justice (Court of First Instance, CFI) has ruled on the dispute Grill Bowls Designs, in which a recent Community design was challenged by the owner of an earlier national design on grill bowls, the company Cuki Cofresco Srl (Italy).
Grill bowl: patent drawings against EU design
The special feature of this case is the submission of the design of the older grill bowl design, because Cuki Cofresco submitted only one patent specification (patent specification DE 195 29 005 published in August 1996 on “Grill bowl and method for its manufacture”). As usual in patent specifications, some drawings were included, but all details can only be obtained by reading from the patent specification, not from the drawings.
So it was in this case of the grill bowl. The Invalidity Division of the EUIPO had not accepted this opposition and decided that the earlier design could not be taken into account for the examination of the individual character of the contested Community design, because the illustrations did not sufficiently reflect the overall view of the appearance of the product. However, the Board of Appeal of the EUIPO, which was subsequently appealed, overturned this decision and said, there was a lack of individual character of the contested Community design grill bowl, which is a prerequisite for design protection – and this despite the fact that there are visible differences in the shape of the two grill shell designs.
Differences in the shape of the designs
This decision was appealed by Novelis Deutschland GmbH (Germany), which had registered the contested later Community design GRILL BOWL. The applicant argued that the Board of Appeal had not correctly assessed the clear differences between the two grill bowl designs, as there were differences in shape (semicircular versus rectangular) and in the height of the grooves and ridges. In addition, not all of the comparative details were clear on their own in the drawings of the older national grill tray design. In assessing the overall impression of the older design, the Board of Appeal did not only base its decision on the rectangular shape taken from the patent specification, but also used shapes outside the older design, criticized applicant Novelis.
Novelis therefore claimed infringement of Article 25(1)(b) in conjunction with Article 6(1)(b) of Regulation No 6/2002. According to Novelis, the Board of Appeal infringed the principle according to which individual character must be assessed by making individual comparisons. Novelis concluded that the Board of Appeal had obviously not looked at an “informed” user, but at a design or patent expert who had studied the patent specification, and argued that the Board of Appeal had made an erroneous and, above all, arbitrary comparison.
Grill bowl Disput: clarity of the older design?
The CFI rejected this. The Board of Appeal was correct to focus on the distinctive features common to both designs, as well as the less distinctive differences, the European court explained.
It is true that, according to the case law, for the examination of whether the challenged design lacks novelty or individual character a precise and specific earlier design is required. However, the applicant had not even questioned whether the representation of the earlier design (by the drawings in the patent specification) was sufficiently precise and definite for an assessment of the individual character of the contested Community design, the CFI explained. Instead, the applicant had argued that important differences had not been taken into account.
Lack of individual character – view to the “informed user”
This accusation was in turn examined by the CFI, specifically with regard to an “informed user”. According to Art. 6(1) of Regulation No. 6/2002, whether a design has individual character must be determined on the basis of the overall impression it produces on the informed user. So who is this informed user?
According to settled case law, the informed has personal experience or extensive knowledge in the field concerned, the CFI explained. As interpreted, this means that the relevant informed user (analogous to the relevant consumer in trademark proceedings) is not to be regarded as an expert or specialist who could detect even minimal differences in detail. However, as a rule, he will not only perceive an overall impression, but will make a direct comparison of the designs in dispute, and do so with comparatively great attention.
Taking all this into account, the CFI summarized that in view of the numerous common features of the designs in dispute, the Board of Appeal had rightly found that the informed user would not attribute any individual character to the contested community design.
This is not called into question by the fact that the submitted representation of the earlier design does not show the overall view of the appearance of the product, the CFI said. The Board of Appeal was required, the court explained, to assess the evidence submitted in its entirety. Therefore, it was entitled to take into account all the explanatory figures and the claims from the patent specification, too.
Novelis’ claim was therefore rejected in its entirety.
If a patent specification and drawings are used as support for an invalidity application against a younger design, the design owners should always consider questioning the necessary clarity of the older design. This is because, as the current ruling of the CFI implies, the textual claims from a patent specification may also be taken into account in the comparison for the examination of the overall impression.
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