Little design freedom for medical plasters

A dispute over similar designs for medical plasters was decided before the CJEU. The Court affirmed a limited design freedom for medical plasters and defined the “informed user”.

A dispute over similar designs for medical plasters was decided before the European Court: The CJEU dismissed the action for annulment brought by the holder of an earlier similar design. Important in this case was the limited design freedom of the designer for medical plasters.

The facts

In August 2012, the intervener, Andreas Fahl Medizintechnik-Vertrieb GmbH (Germany), filed an application for a Community design of medical plasters in Class 24-04 of the Locarno Agreement. The applicant, Atos Medical GmbH (Germany), subsequently filed an application for a declaration of annulment with the EUIPO in April 2016, claiming that the contested design did not satisfy the conditions of Article 4(1)(b) of Regulation No 6/2002 because it lacked novelty and peculiarity within the meaning of Articles 5 and 6 of that regulation.

Locarno Classification

Since January 2019, the 12th edition of the International Classification for Industrial Designs has been in force, the so-called Locarno Classification. For all design applications, the designs are assigned product terms within the scope of the Locarno Classification. The current classification according to Locarno Classification is also available on the information page of the DPMA on designs. The DPMA offers a search engine for searching existing product terms. Moreover there are also sublclases within the Locarno classes.

The Cancellation Division declared the design invalid, but the Board of Appeal annulled this decision and rejected the declaration of invalidity of the contested design. Before the European Court (CJEU), the applicant put forward arguments for the invalidity of the design relating to the disclosure of the applicant’s earlier designs and to the comparison between those earlier designs and the contested design.

Limited design freedom

By decision of 29 June 2018 (contested decision), the Third Board of Appeal of EUIPO annulled the decision of the Cancellation Division (which had declared the design invalid) and rejected the application for annulment. The freedom of the designer to design the goods in question, namely tracheostomy patches, was restricted, inter alia the size and shape of the patch was determined by the covering of the tracheostoma, the secure attachment of the aid.

The limited design freedom in the design of a plaster was also confirmed by the CJEU. This is important because the greater the designer’s freedom in developing the design, the greater and clearer the differences between the conflicting designs must be in terms of the overall impression of the informed user.

The informed user – between professional and consumer

In this context, the Court also explained the concept of ‘informed user’. Such a user is by no means a specialist, but nevertheless more than the average consumer. No profound technical skills can be expected from him, but he is nevertheless particularly vigilant on the basis of his personal experience or his extensive knowledge in the relevant field, the CJEU explained. In the present case, the informed user is familiar with the characteristics of tracheostomy patches and the various designs in this field.

Peculiarity of a design

The nature of the contested design was also discussed in detail. According to the case-law, the peculiarity of a design is based on the fact that, from the point of view of an informed user, there is a difference in the overall impression or no ‘déjà vu’ in relation to the pre-existing wealth of shapes, taking into account those differences which are sufficiently pronounced to produce a dissimilar overall impression.

You are welcome to read our article on this subject: The peculiarity of a design – is there a “Déjà-vu”?

In the present case, the CJEU pointed out that any saturation of the state of the art as well as the nature of the use of the product in question, in particular with regard to the way in which it is used, must also be taken into account when assessing the peculiarity of a design. Although the earlier designs and the contested design have common characteristics (a slightly asymmetrical basic shape, semicircular lateral projections, a circular opening and a rectangular projection at the right end), the CJEU, like the Board of Appeal, considered the small differences to be so characteristic that the overall impression was different.

The Court found small differences in the shape of the plaster, which is oval in the contested design and significantly more bulbous than in the earlier designs. It cannot be concluded from the fact that the opposing designs have a basic round or oval shape in the broad sense that they create the same overall impression, since they are a product for which such a shape is relevant in order to avoid unnecessary adhesive surfaces, the Court stated.

The CJEU therefore dismissed the action for annulment and upheld the contested decision of the EUIPO Board of Appeal.

Would you also like to protect or defend your design?

When filing a design application, the Office does not check whether other very similar or even identical designs have already been registered. The protection of your design therefore requires a good search. Please feel free to contact us, our attorneys are experienced in protecting and defending a design.