The General Court takes a further step in registered design cases dealing with the visibility criterion

Monday, 29 of June of 2020

There are not many cases where the General Court of the EU (GC) has to deal with questions related to industrial design law (also called designs). Nevertheless, 2020 is certainly a prolific year in this respect.

One of the most interesting aspects, and one that raises more questions in practice, is visibility. As is well known, Council Regulation 6/2002 of 12 December 2001 on Community designs requires that in certain cases (in particular complex products) the protection conferred by a design be limited or predictable only if we want to say it in other terms to those parts that are only visible during the normal use of the product incorporating the design in question.

This criterion was qualified in, among others, on the famous GC decision of September 9th 2014, T-494/12, "Biscuit Poult SAS", in which the Chamber concluded that regardless of whether or not we are dealing with a complex product (the case in question, dealt with a design on a stuffed biscuit, product which clearly does not fall into the category of “complex”) “the non-visible features of the product, which did not relate to its appearance, could not be taken into consideration in determining whether the design in question was eligible for protection”.

Last March, the GC had the opportunity to elaborate a bit more on the scope of protection conferred by registered designs in cases where visibility is involved.

We refer in particular to the decision handed down on the 12th of said month in Case T-352/19 - Gamma-A/EUIPO - Zivju pārstrādes uzņēmumu serviss where the subject matter was to decide whether the following design registration:

was or was not valid considering the existence of the following prior art:

Before the EUIPO, the issue had been the subject of disparate pronouncements (rejection of the invalidity action at first instance, decision that was reversed before the Board of Appeal).

After analysing the issue, the Court confirmed the decision taken by the EUIPO at second instance (invalidity of the design in question) and dismissed the appeal.

According to the GC, the informed user of the contested design (whether a consumer of canned food or a professional in the food processing industry) will evaluate it according to the purpose and use of the product to which it is intended to be incorporated, i.e. taking into account that its purpose is that of food packaging.

In view of the above, the EUIPO rightly considered that the appearance of the products included in the can to which the contested design is intended to be incorporated, as well as their specific arrangement within the package, is not relevant, even if visible, in order to assess the overall impression produced on the user informed by the contested design.

The decision seems to follow the path initiated by other judgments, such as that of March 6th 2019 by the Court of Justice in Case C-693/17 P-DEP - Ferrero/BMB, in which the validity of the registered design included below on the left was disputed in view of the existence of the earlier one reproduced on the right.