Design Case Law of the Court of Justice Dr. Catherine

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Design Case Law of the Court of Justice
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• Dr. Catherine Jenewein
• Former Legal Secretary to Judge Azizi, General
  Court, Court of Justice of the European Union
  Patent Lawyer, European Patent Office
• Prof. Charles Gielen
• NautaDutilh N.V.
• University of Groningen
• Dr. iur. Henning Hartwig
• Bardehle Pagenberg
• Cecilia Wikström Chair Théophile Margellos
• Member of European Parliament Chairperson
• OHIM Boards of Appeal

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Prior Art in Community Design Law The Concept of
Reciprocity
Dr. Henning Hartwig Partner, Bardehle Pagenberg
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• Article 6 (1) CDR
• A design shall be considered to have individual
  character if the overall impression it produces
  on the informed user differs from the overall
  impression produced on such a user by any design
  which has been made available to the public ()
  before the date of filing the application for
  registration or, if a priority is claimed, the
  date of priority.

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• Article 6 (2) CDR
• In assessing individual character, the degree of
  freedom of the designer in developing the design
  shall be taken into consideration.

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• Article 6 (2) does not indicate prior art or
  existing design corpus (cf. Recital 14 CDR)
• Interaction between individual character and
  degree of freedom of the designer
• What is the response of the European Courts?

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• General Court
• () the greater the designers freedom in
  developing the challenged design, the less likely
  it is that minor differences between the designs
  at issue will be sufficient to produce a
  different overall impression on an informed user.
  Conversely, the more the designers freedom in
  developing the challenged design is restricted,
  the more likely minor differences between the
  designs at issue will be sufficient to produce a
  different overall impression on an informed
  user.

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• General Court
• Therefore, if the designer enjoys a high degree
  of freedom in developing a design, that
  reinforces the conclusion that the designs which
  do not have significant differences produce the
  same overall impression on an informed user.
• Kwang v Honda at 33

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• General Court
• As appears from the representations of engines
  produced by the intervener during the proceedings
  before OHIM and the General Court, there are
  designs for internal combustion engines in
  varying shapes and configurations which differ
  considerably from those used in the challenged
  design. Internal combustion engines exist in a
  wide variety of shapes and combinations of
  components, as the informed user of such an
  engine, who has some knowledge of the relevant
  industrial sector, is aware. Kwang v Honda at
  37

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• General Court
• Since the positioning and shape of the
  components of an internal combustion engine are
  not limited by any particular technical
  necessity, the designers degree of creativity
  with respect to such internal combustion engines
  is not limited. It follows that the Board of
  Appeal has not committed an error in holding that
  the designers of internal combustion engines
  enjoy a high degree of freedom in the development
  of designs relating to those internal combustion
  engines including the challenged design. Kwang
  v Honda at 38

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• Degree of freedom of the designer to be
  completed by the existing design corpus or
  prior art
• Interaction between degree of freedom of the
  designer and finding different overall
  impression
• Same overall impression () if designs do not
  have significant differences (in case of high
  degree)

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• Some open questions
• What is the meaning of significant
  differences?
• What is the test in case of a low degree of
  freedom?
• Is the existing design corpus limited to the
  indication of
• product of the challenged Community design?
• Is the existing design corpus limited in time
  (only disclosure
• prior to the application date)?

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• Article 10 (1) CDR
• The scope of the protection conferred by a
  Community design shall include any design which
  does not produce on the informed user a different
  overall impression.

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• Article 10 (2) CDR
• In assessing the scope of protection, the degree
  of freedom of the designer in developing his
  design shall be taken into consideration.

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• Is it likely that the General Court and/or Court
  of Justice will confirm the reciprocity test also
  in view of Article 10?
• Court of Justice in Grupo Promer No mention
• General Court in Grupo Promer No mention

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• German Federal Supreme Court
• A great concentration of designs and, thus, only
  little freedom of the designer will lead to a
  narrow scope of protection of the design so that
  minor differences in appearance may produce a
  different overall impression on the informed
  user. In contrast, a low concentration of designs
  and, therefore, a great freedom of the designer
  will lead to a broad scope of protection of the
  design so that even major differences in
  appearance may not produce a different overall
  impression on the informed user.
• Pram I at 24

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• Austrian Supreme Court
• By applying consistent terminology for both the
  scope of protection and the individual character,
  the Regulation gives rise to parallel criteria
  A high degree of individual character allows a
  large scope of protection whereas a low degree of
  individual character only permits a limited scope
  of protection. If the informed user is willing
  to confirm individual character in case of minor
  differences between the prior and the Community
  design, he must likewise confirm non-infringement
  in case of such differences between the asserted
  and the accused design. Sprayer

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• Concept of Reciprocity?
• () Interaction between prior art and validity
  of a Community design
• () Interaction between prior art and scope of
  protection of a
• Community design
• () Interaction between prior art and
  infringement of a Community
• design
• (?) Interaction between validity, scope of
  protection and infringement
• of a Community design?