Case T-68/10

Sphere Time

v

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

(Community design – Invalidity proceedings – Registered Community design representing a watch attached to a lanyard – Prior design – Disclosure of prior design – Individual character – Misuse of powers – Articles 4, 6, 7 and 61 to 63 of Regulation (EC) No 6/2002)

Summary of the Judgment

1.      Community designs – Grounds for invalidity – No individual character – Disclosure by the designer or his successor in title

(Council Regulation No 6/2002, Art. 7(2))

2.      Community designs – Grounds for invalidity – No individual character – Informed user –Meaning

(Council Regulation No 6/2002, Art. 6(1))

3.      Community designs – Grounds for invalidity – No individual character – Design not producing on the informed user an overall impression different from that produced by the prior design

(Council Regulation No 6/2002, Art. 6(1))

4.      Community designs – Grounds for invalidity – No individual character – Design not producing on the informed user an overall impression different from that produced by the prior design – Global assessment of all the elements of the prior design

(Council Regulation No 6/2002, Art. 6(1))

1.      The objective of Article 7(2) of Regulation No 6/2002 on Community designs is to offer a designer or his successor in title the opportunity to market a design, for a period of 12 months, before having to proceed with the formalities of filing.

Thus, during that period, the designer or his successor in title may ascertain that the design concerned is a commercial success before incurring the costs relating to registration, without fear that the disclosure that takes place at that time may be successfully raised during any invalidity proceedings brought after the possible registration of the design concerned.

Therefore, for Article 7(2) of Regulation No 6/2002 to be applicable in the context of invalidity proceedings, the owner of the design that is the subject of the application for invalidity must establish that it is either the designer of the design upon which that application is based or the successor in title to that designer.

(see paras 24-26)

2.      The status of ‘user’ within the meaning of Article 6(1) of Regulation No 6/2002 on Community designs 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.

In relation to promotional items, the concept of informed user includes, firstly, a professional who acquires them in order to distribute them to the final users and, secondly, those final users themselves. The fact that one of the two groups of informed users perceives the designs at issue as producing the same overall impression is sufficient for a finding that the contested design lacks individual character.

(see paras 51, 53, 56)

3.      A design representing a lanyard, the strips of which are joined at one end, then overlap and form a loop at the other end, with a round watch attached to the lanyard at the place where the two strips of the lanyard move away from each other and with two concentric rings around the edge of the watch, the outer ring having a gap in the top part in which the knob for setting the time is placed, lacks individual character for the purposes of Article 6 of Regulation No 6/2002 on Community designs.

That design and the SYMBICORT design produce the same overall impression on the informed user, the SYMBICORT design also showing a lanyard with essentially the same proportions, to which is attached, in the same place, a round analogue watch, the edge of which is surrounded by two concentric rings, the outer ring being broken by a gap on the same side, in which a knob for setting the time is placed.

No significant difference can be held to exist in relation to the relative length and width of the lanyards of the designs at issue.

Next, the fact that the lanyard of the SYMBICORT design is represented in black is not significant, given that no colour has been claimed for the contested design. Similarly, inasmuch as the contested design represents a promotional item, it is reasonable to hold that, when it is used, it will carry a trade mark. Consequently, the presence of the SYMBICORT mark in the SYMBICORT design does not amount to a significant difference either.

Finally, the details of the watch cases and the watch faces of the two designs are not sufficiently striking to have any influence on the overall impression produced by the designs. That is a fortiori the case since the watch’s hands and the rectangular element affixed to the face of the watch are not among the elements that are protected by the contested design.

(see paras 70, 79, 81-84)

4.      In the assessment in invalidity proceedings of prior designs, their graphic representations should not be examined in isolation and exclusively: instead all the elements presented should be subject to a global assessment allowing the overall impression produced by the design at issue to be determined in a sufficiently precise and certain manner. Indeed, in relation, in particular, to a design that has been used directly in trade, without being registered, it may be the case that there is no graphic representation of the design showing its relevant details, comparable to the representation appearing in an application for registration. In those circumstances, it would be unreasonable to require the applicant for invalidity to provide such a representation in all cases.

(see paras 73-74)