4th October 2017
As generally expected, in Joined Cases C‑361/15 P and C‑405/15 P, (Easy Sanitary Solutions BV v EUIPO/Group Nivelles), the CJEU has confirmed that the scope of a Community design is not limited by product type. As a consequence, the nature of the product in which the earlier design is incorporated or to which it is applied has no bearing on the assessment of the novelty or individual character of the contested Community design. Thus, a Community design for one type of product may be found invalid in light of a sufficiently similar prior design incorporated into, or applied to, a completely different type of product. Likewise, a Community design for one type of product can be infringed by the use of a sufficiently similar design incorporated into, or applied to, a completely different type of product.
In reaching this decision, the CJEU has reached the same conclusion that the UK court expressed some time ago in Green Lane Products v PMS ( EWCA Civ 358). In that case, the court held that a registered design provided a monopoly right over any type of products made to the design and thus it followed that admissible prior art could be drawn from any type of product. A prior design of a spiky massage ball was therefore capable of invalidating a later Community design for a spiky laundry ball, notwithstanding that the respective designs were for completely different types of product.
What does this mean in practice? In the majority of cases, the prior art cited against a Community design will come from same sector as the Community design itself. For instance, a Community design for a chair is most likely to be invalidated by an earlier design for another chair, rather than some different product type. But that won’t always be the case. A Community design for a chair could for instance be invalidated by an earlier design for a dolls’ house chair, despite this being a child’s toy. Similarly, a product which is alleged to infringe a Community design will most likely belong to the same sector as the allegedly infringed design, but that won’t always be the case. Where there is a divergence in respective sectors though, it is now clear that this alone will not suffice to save the Community design or avoid infringement, as the case may be.
Ewan's practice focusses on protecting and enforcing hi-tech or otherwise innovative product design and associated branding in a range of different areas, including medical devices, telecommunications and retail & consumer goods.
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