The Manual concerning the Examination of Design Invalidity Applications

1. The Manual concerning the Examination of Design Invalidity Applications 11th Liaison Meeting on Designs Alicante 19 November 2012 Arnaud Folliard-Monguiral, ICLAD

2. Aims • Adopted on 1 June 2012 • http://oami.europa.eu/ows/rw/resource/documents/RCD/guidelines/manual/design_invalidity_manual.pdf • Fostering predictability of decisions • procedural issues: aligning the RCD invalidity proceedings with the CTM oppo / cancellation established practice and making reference to CTM-related case-law from the General Court when an analogy proves possible; • substantive issues: aligning the RCD invalidity Manual with the identified trends of the Board of Appeal’s case-law for internal convergence purposes

3. Procedural issues • payment of the invalidity fee cannot be made by cheque; • grounds relied on subsequently to the filing of the application for invalidity are automatically inadmissible; • possibility to request proof of use of an earlier trade mark when the ground for invalidity is Art. 25(1)(e) CDR, as permitted by GC in Case T-148/08;

4. Procedural issues • limitation of the observations to one round save in limited circumstances; • where an earlier mark is relied on as the ground of Art. 25(1)(e) CDR, the rules applying to the submission of proof of use are aligned to the rules applying in Opposition proceedings; • the rules applying to extension of time limits and suspension are aligned to the rules applying in Opposition proceedings

5. Substantive issues: Functional shapes (Art. 8(1) CDR) • ‘A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function’ • As regards CTMs, the CJ made it clear that the existence of alternative shapes is irrelevant (CJ, 14/09/10, C-48/09P, Lego Juris A/S/ OHIM, (Red Lego brick), para. 53 • 3 BoA decisions: R 690/2007-3 of 22/10/09; R 1114/2007-3 of 12/11/09; R 211/2008-3 of 29/04/10

6. BoA, 29/04/2010, R 211/2008-3 - ‘Fluid distribution equipment’, para. 36

7. General Court, 09/09/2011, T-10/08, Engine, § 37

8. Functional shapes (Art. 8(1) CDR)Rationale • Assuming the underlying logic of Art. 8(1) CDR is that rights on an invention should not be extended after the expiry of the patent through design rights, it is reasonable to consider that each and every possible embodiement of a given technical solution should be excluded from protection under Art. 8(1) CDR.

9. Functional shapes (Art. 8(1) CDR)Manual • Article 8(1) CDR must be carried out by analysing the Community Design and not designs consisting of other shapes • The design as a whole will be invalid only if all the essential features of the appearance of the product in question are solely dictated by its technical function • The function is determined on account of indication of product and the design itself • Article 8(1) CDR applies must be assessed objectively • The functionality is assessed, inter alia, by taking account of patents

10. Priority Claims: Art. 41 CDR • A person who has duly filed an application for a design right or for a utility model (…) shall enjoy, for the purpose of filing an application for a registered Community design in respect of the same design or utility model, a right of priority of six months from the date of filing of the first application • Such a requirement is absent from Art. 4A CUP

11. Disclosure: Art. 7 CDR • Inclusion of the GC case-law: • ‘Use in trade’ does not suppose the putting on the market of the products in which a design is incorporated. Import from a third country to a European trader suffices (GC, 14/06/2011, T-68/10, ‘Watch attached to a lanyard’, para. 31-32) • Disclosures derived from the Internet

12. Disclosure: Art. 7 CDR • the date of disclosure on the internet will be considered reliable in particular where: • the website time-stamps each entry and thus provides information relating to the history of modifications applied to a file or web page (e.g. Wikipedia or forum messages and blogs); or • indexing dates are given to the web page by search engines (e.g. from the Google cache); • a screenshot of a web page bears a given date; or • information relating to the updates of a web page is available from an internet archiving service

13. Novelty: Art. 5 CDRBoA, 25/10/11, R 978/2010-3, Sanitary napkin Earlier design Contested RCD

14. Novelty: Art. 5 CDR • There is identity between the Community design and an earlier design where the latter discloses each and every element constituting the former. The framework of the comparison is limited to the features making up the Community design. It is therefore irrelevant whether the earlier design discloses additional features. • A Community design cannot be new if it is included in a more complex earlier design

16. Novelty: Art. 5 CDRBoA, 17/04/2012, R2378/2010-3, Ornementation for coffee packaging (appeal pending before GC in case T-302/12) Earlier design Contested RCD

17. Partial invalidity: Art. 25(6) CDR • A registered Community design which has been declared invalid pursuant to any of the grounds under Article 25(1)(b), (e), (f) or (g) CDR may be maintained in an amended form, if in that form it complies with the requirements for protection and the identity of the design is retained • Maintenance in an amended form will therefore be limited to cases in which the features removed or disclaimed do not contribute to the novelty or individual character of a Community design:

18. Partial invalidity: Art. 25(6) CDR • where the removed or disclaimed features are invisible during normal use of this complex product (Article 4(2) CDR); or • where the removed or disclaimed features are dictated by a function or by interconnection purposes (Article 8(1) and (2) CDR; or • where the removed or disclaimed features are so insignificant in view of their size or importance that they are likely to be overlooked by the informed user

19. THANK YOU.