Case T-153/08

Shenzhen Taiden Industrial Co. Ltd

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community design – Invalidity proceedings – Registered Community design representing communications equipment – Earlier international design – Ground for invalidity – No individual character – No different overall impression – Informed user – Degree of freedom of the designer – Evidence that the earlier design was made available to the public – Article 4(1), Article 6(1)(b) and (2), Article 7(1) and Article 25(1)(b) of Regulation (EC) No 6/2002)

Summary of the Judgment

1.      Community design – Grounds for invalidity – No individual character – Comparison between the overall impression produced by the contested design and that produced by the earlier design – Taking into consideration, as representations of one and the same earlier design, of features made available to the public in different ways

(Council Regulation No 6/2002, Arts 6(1) and 25(1)(b))

2.      Community design – Grounds for invalidity – No individual character – Informed user – Concept

(Council Regulation No 6/2002, Arts 6(1) and 25(1)(b))

3.      Community design – Grounds for invalidity – No individual character – Comparison between the overall impression produced by the contested design and that produced by the earlier design – General design trend – Irrelevant

(Council Regulation No 6/2002, Arts 6(1) and 25(1)(b))

4.      Community design – Grounds for invalidity – No individual character – Comparison between the overall impression produced by the contested design and that produced by the earlier design – Determination of the overall impression in the light of the manner in which the product is used

(Council Regulation No 6/2002, Arts 6(1) and 25(1)(b))

1.      Since Article 6(1) of Regulation No 6/2002 on Community designs refers to a difference between the overall impressions produced by the designs at issue, the individual character of a Community design cannot be examined in the light of specific features of various earlier designs. Therefore, a comparison should be made between, on the one hand, the overall impression produced by the contested Community design and, on the other, the overall impression produced by each of the earlier designs legitimately relied on by the party seeking a declaration of invalidity. The obligation to make a comparison between the overall impressions produced by the designs at issue does not preclude the possibility of taking into consideration, as representations of one and the same earlier design, features which were made available to the public in different ways, in particular, first, by the publication of a registration and, second, by the presentation to the public of a product incorporating the registered design. The purpose of registering a design is to obtain an exclusive right in particular to make and market the product incorporating it, which means that the representations in the application for registration are, as a general rule, closely related to the appearance of the product placed on the market.

(see paras 23-25)

2.      The status of ‘user’ implies that the person concerned uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended. The qualifier ‘informed’ suggests in addition that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them. However, contrary to what the applicant claims, that factor does not imply that the informed user is able to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product’s technical function from those which are arbitrary.

(see paras 46-48)

3.      The question whether a design does or does not follow a general design trend is relevant, at the most, in relation to the aesthetic perception of the design concerned and can therefore, possibly, have an influence on the commercial success of the product in which the design is incorporated. By contrast, it is not relevant in the examination of the individual character of the design concerned, which consists in verifying whether the overall impression produced by it differs from the overall impressions produced by the designs made available earlier, irrespective of the aesthetic or commercial considerations.

(see para. 58)

4.      The overall impression produced by the contested design on the informed user must necessarily be determined also in the light of the manner in which the product at issue is used, in particular on the basis of the handling to which it is normally subject on that occasion.

(see para. 66)