Replacing the packet: registering designs for e-cigarette accessories 

18th November 2022

E-cigarettes have become increasingly popular in recent years. A range of e-cigarette accessories are now on the market, including cases for e-cigarettes. We take a look at a recent EU Intellectual Property Office (“EUIPO”) decision about a Community registered design (which covers all EU member states) for the design of a case/bag.

The contested design

Simone Huang was the owner of the below Community registered design (“the Design”) in class 27-06 for cases for electronic cigarettes. The Design was registered in September 2021.

Application for invalidity

iDistribution Srl (“IDS”) filed an application for a declaration of invalidity against the Design. It argued that the Design lacked novelty and individual character over the prior art. Novelty and individual character are essential requirements for the validity of a Community design. A design will be considered novel if no identical design has previously been made available to the public (designs will be deemed identical if their features differ only in immaterial details). A design will 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 previously made available to the public.

IDS provided evidence of a prior art design of e-cigarette accessories on the market which were said to be highly similar design to the Design. These were available to the public to purchase from an online retailer for a substantial period of time before the Design’s filing date.

Comparison of the prior art design and the Design

For the purposes of assessing individual character, the EUIPO customarily applies a four step test, namely:
• analysis of the sector in which the design is intended to be incorporated;
• identification of the informed user of the product;
• the designer’s degree of freedom developing the design; and
• the overall impressions produced on the informed user by the contested design and by any earlier design which has been made available to the public.

Taking these steps in turn in relation to the Design:

1. The sector
   The sector is the e-cigarette and vaping market.
2. informed user
   The informed user is an individual familiar with the product mainly because of their own interest in the product as someone who uses e-cigarettes.
3. The designer’s degree of freedom
   The greater the designer’s degree of freedom in designing the Design, the greater the differences between the conflicting designs needed to produce a different overall impression. The functional purpose of the product embodying the Design does not itself imply a limitation of the designer’s freedom.
   IDS did not put forward any arguments regarding the extent of design freedom. The EUIPO concluded that the designer’s freedom in creating the Design was at least average as for cases for e-cigarettes.
4. Overall impression
   The EUIPO considered that the prior design and the Design shared similarities specifically in relation to shape and finishes, the sole difference being the Design has an engraved element on the opening. However, the EUIPO found the engraving to be less obvious than the evident similarities, leading it to conclude that both the prior art and the Design gave the same overall impression on the informed user. The Design was therefore found to be invalid for lack of individual character.