The European Design Regime

1. Introduction

In 1993, the Commission of the European Union issued proposals for a directive for harmonization of design laws within the member countries of the EU and for the creation of an EU-wide design regime that would co-exist with the harmonized national design laws in a manner analogous to that in which national trademark laws co-exist with Community trademark rights. The proposal included adding a design registration function to the Community Trademark Office – officially the Office for Harmonization in the Internal Market (Trade Marks and Designs) – commonly referred to as OHIM.27

However, such plans initially fell afoul of the problem of what, if any, protection should be given to spare parts and their use in repairs, particularly for cars, this also being the main point of contention between Parliament and the Council having regard to the directive. The Council wished to have them covered. Parliament wished to include provisions that would permit the use of articles covered by a registered design to repair “complex products” as long as the source of the repair part is indelibly marked on it and fair compensation for use of the design has been offered to the right holder. There were also significant differences between national governments. Thus the adoption of a Union-wide single registration system was delayed for at least a few years. Since when adopting a directive one can confine what is included to that on which there is agreement and leave the rest to national law, whereas this option is not open when adopting a regulation that will establish an EU-wide right, it was easier to deal with the directive first. When the harmonization directive was adopted in 199828 it essentially left the issue of the use of component parts for the repair of a complex product to national law until at least 2004.29

Agreement was ultimately reached on a regulation to establish an EU Design Right, and this was published in the Official Journal on January 5, 2002. Parts of it came into effect on March 6, 2002; the remainder came into effect on April 1, 2003. Both the directive and the regulation are discussed below.

2. The Harmonization Directive

For the reasons noted above, the first step towards European integration with respect to designs was the adoption of the directive for harmonization of national laws. Such harmonization was for the most part effected by the due date of October 28, 2001, or shortly thereafter.

The directive provides for protection for designs by way of registration. However, it is specifically stated that this protection is without prejudice to other forms of rights, such as unregistered design rights, trademarks, patents, utility models, unfair competition laws and copyrights.30 No distinction is drawn between aesthetic and functional designs, the only requirements for protection being that the design is new, has individual character and does not subsist in features which are dictated solely by technical function. 31

Additionally, design protection shall not, with the exception of units intended to form part of a modular system, subsist in features of a product which must necessarily be reproduced exactly to permit the product to which the design is applied to be “mechanically connected to or placed in, around or against another product so that either product may perform its function.”32 On the other hand, the definition of “design” specifically provides that this can refer to the appearance of the whole or of a part of a product.33

In order to meet the requirement that a design must be new and have individual character,34 there must have been no disclosure of the design such that it could reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community before the filing date of the application for protection or where appropriate the priority date of such an application.35 Disclosures in confidence do not destroy the novelty of the design. Furthermore, a one-year grace period is provided for disclosures made by the designer, his successor in title or a third person as a result of information provided by the designer or his successor in title or is the result of “an abuse in relation to the designer or his successor in title”.36 This grace period runs back from the filing date of the application or where priority is claimed from the priority date. Designs differing from the prior art in “immaterial details” may not be protected.37 To have individual character, the design must differ from prior designs in “the overall impression it produces on the informed user”, taking into consideration “the degree of freedom of the designer in developing the design.”38

Initial protection is to be for a five-year period from the date of filing the application for protection, renewable by further five-year periods up to a maximum duration of twenty-five years.39

The owner of a registered design secures the exclusive right to use the design including making, offering, putting on the market, importing, exporting or using a product into which the design is incorporated or to which it is applied.40 Such rights do not, however, apply to any product that was put on the market by the owner of the right or with the owner’s consent anywhere within the European Union. 41 Additionally, the rights cannot be used to control acts done privately for non-commercial purposes, experimental acts and acts done for citation or teaching purposes as long as these are compatible with fair trade practices and do not unduly prejudice the normal exploitation of the design and that in such uses mention is made of the source of the design.42

Matters as to ownership of rights in designs are left to national law.43

3. The Regulation

3.1 Introduction – Registered and Unregistered Rights

The regulation was adopted on December 12, 2001, and published in the Official Journal on January 5, 2002.44 Implementing regulations were issued as Commission Regulation 6/2002 on October 21, 2002.45

The regulation provided for two types of protection. An unregistered right that came into effect on March 6, 2002, and a registered right which came into effect on April 1, 2003, with pre-filing being possible form January 2003 onwards.

The regulation provides for unitary design right protection throughout the European Union, although not precluding national rights, and has several similarities with the Community Trade Mark Regulation, including use of the same office in Alicante, Spain, but also draws on provisions that were included in the unimplemented Community Patent Convention.

The regulation creates two distinct Community design rights which are directly applicable throughout the European Union: 1) a right obtained by registration at the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) at Alicante in Spain which will have a maximum duration of twenty five years from filing an application for it46 and 2) an unregistered right which will have a duration of three years from the date on which the design was first made available to the public within the EU.47 The provisions relating to the unregistered right came into effect on March 6, 2002; those relating to the registered right on April 1, 2003.

The reason given for the two types of right is that:
A community design should, as far as possible, serve the needs of all sectors of industry in the Community.
Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance. On the other hand, there are sectors of industry which value the advantages of registration for the greater legal certainty it provides and which require the possibility of a longer term of protection corresponding to the foreseeable market life of their products.48

Whereas a registered design right will give rights similar to those given by a patent, the unregistered right will be infringed only if copying is proved.49 These two rights will co-exist with national design rights and other relevant national rights such as copyright, unregistered design rights, trademarks, patents, utility models, typeface rights and rights under unfair competition law.50

3.2 Criteria for Protection

As with the Directive, the basic requirements for protection are that the design is new, has individual character and does not subsist in features which are dictated solely by technical function.

Designs capable of protection by either of the Community Design Rights relate to the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation.51

The term “product” is itself defined broadly as any industrial or handicraft item including packaging, get-up, graphic symbols and typographic typeface, but does not include computer programs. The definition specifically includes parts intended to be assembled into a multi-component product of which the components…can be replaced permitting disassembly and reassembly. Such component parts are, however, only capable of protection if they remain visible during the normal use of the product within which they are incorporated and as so seen meet the requirements for novelty and individual character discussed below.52 Furthermore, in view of the continuing political difficulties over protection for spare parts for the time being, protection as a Community design shall not exist for a design which constitutes a component part of a complex product … for the purpose of the repair of a complex product so as to restore its original appearance.53 The result seems to be therefore that the designer of, say, a new bumper for an automobile has the right to prevent competing automobile manufacturers from using such a bumper in their products without authorization but not to stop the production and use of such bumpers to repair its own automobiles

Whether registered or unregistered, the basic requirement for protection is that the design is new and has an individual character .54 Novelty is defined in slightly different terms from many national statutes in that designs which differ in only immaterial details from a prior disclosure will not be regarded as being new. Individual character means that the overall impression of the design is such that it produces on the informed user a different overall impression from that of any prior design that has been made available to the public.

Appeals from determinations of eligibility by OHIM lie to the EU General Court in Luxembourg.

Despite the apparently broad definition of what is protectable, there is a specific prohibition on protection for features of appearance of a product which are dictated solely by its technical function55 or by features which must be exactly reproduced to permit the product in question to fit with another product to enable either of these products to perform its function. This prohibition does not apply, however, to mutually interchangeable products that are to be used in a modular system.56

3.3 Novelty Requirements

The dates at which the requirements of novelty and individual character are to be determined are the dates of filing or validly claimed priority57 with respect to registered design rights and the date on which the design itself was first made available to the public for the unregistered right.58 In considering questions of novelty and individual character, all designs made available to the public59 prior to the relevant dates are to be taken into account, whether by publication, use or otherwise except for 1) situations where the events in question could not reasonably have become known in the normal course of business to the circles in the sector concerned operating within the E.U.60 and 2) for registered rights only where the disclosure was by the designer him or herself or someone obtaining the design from him or her within the twelve month period prior to the filing of the application for the registered right.61 The effect of these provisions is to allow a designer a one year period within which a newly launched design is protected by the unregistered right before he or she has to incur the costs of registration. Furthermore, the first exclusion goes beyond the provision in the European Patent Convention which discounts a disclosure if made in confidence or, for a six month period only if made in evident abuse of the applicants’ rights, and apparently excuses, for example, chance oral disclosures at dinner parties, etc., particularly if they occur outside the E.U.

3.4 Individual Character

Article 6 of the Regulation requires that to be protected either as a registered or unregistered design it must have “individual character.” This is defined as follows:

1. 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:
(a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;
(b) in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.

2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

In, Antrax IT Srl v OHIM,62 the General Court, after noting that small differences may not generate a different overall impression if the degree of freedom is high, but may be sufficient when the degree is restricted went on to reverse an Appeal Board decision that design registrations for particular parts of radiators were invalid because the Board had provided insufficient reasons for its decision. In doing so, however, the General Court pointed out that when considering the degree of freedom open to a designer, simply keeping in line with general trends was not a relevant consideration and that one had to look at the degree of actual saturation of the art that existed.

3.5 Informed User

OHIM officials initially indicated that what is meant by an informed user is someone intermediate between an ordinary user and an expert. In its first decision on the question of who is an informed user,63 the Court held this to be someone who is particularly observant and has some awareness of the prior art. In Grupo Promer/PepsiCo, the European Court of Justice endorsed the Advocate General’s view that “the concept must be understood as lying between that of the average consumer, applicable in trade mark matters who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise. For some types of product it has been suggested that such a person might be a retailer of the product in question.64 In making a determination of overall impression, the degree of freedom of the designer in developing the design shall be taken into consideration. 65

The impressions of an “informed user” are relevant not only in determining individual character, but also in determining infringement.

In Samsung v. Apple, [2012] EWCA 1339, the English Court of Appeal summarized the requirements of an informed user as set out in EU court decisions as follows:
He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzen paragraph 46).
However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);
He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);
He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);

He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCo paragraph 55).

Sir Robin Jacob sitting in the English Court of Appeal added the comment:
I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyze details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59).

4. Scope of Protection

The scope of protection afforded by both registered and unregistered design rights is defined in similar terms to the definition of individual character, giving rise to speculation that no right can infringe any other right, an issue which the courts will decide in due course. The definition of the scope of protection is

any design which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.66

It should be noted that this definition is not tied to any particular product. Thus, despite the fact that for registered protection a product will have to be indicated, it appears that protection will extend to all products incorporating the design. For example, a design originally produced for a car would be infringed by a tea-cozy of the same shape.

As noted above, however, to establish infringement of an unregistered right it is necessary to show that copying occurred. This is not required for registered rights.67

5. Procedure for Registered Design Protection

To the extent that it is practicable, procedure relating to registration of community designs will follow that which has already been established for community trademarks. Unfortunately and confusingly, both the basic law establishing Community Design Rights and the subsidiary legislation regulating the filing of application for registration of such rights are both set out in Regulations and the sectional breaks in both are referred to as Articles . As noted above, the basic legislation is set out in Council Regulation 6/2002. The implementing legislation is set out in a Commission regulation, currently referred to as C(2002) 3687.

Applications for a registered design right will be able to be filed at OHIM or at the central industrial property office of any of the member states or at the Benelux Design Office.68 The application will be able to be in the language of any member state, but the applicant will have to specify a second language which he or she accepts as a possible language of the proceedings.69 At present, the possible second languages are English, French, German, Spanish and Italian. Provision is made for the filing of a description explaining the design and in some cases for the supply of a sample at the applicant’s option.70 Applications covering multiple designs will be permitted, in general subject to all of the designs being classified in the same class.71 Such multiple designs may, however, be dealt with separately for purposes of licensing and certain other matters.72 Provision is made for electronic filing or filing by fax.73

Examination will be confined to formal matters and questions of whether that for which protection is sought complies with the definition of a design or whether protection for it is contrary to public policy or accepted principles of morality only.74

Similar to the European Patent Convention, provision is made for restitution in interregnum to assist those who, in spite of all due care required by the circumstances having been taken, fail to comply with a time limit in dealing with OHIM75 and for protection of the applicant’s position when there is an interruption of the proceedings.76 Furthermore, registered mail from OHIM is deemed to take ten days to arrive.77

Normally, once examination is completed, the design will be registered and published.78 However, the applicant may request that publication be deferred for a period of up to thirty months from its filing date or priority date if priority is claimed.79 In such a case, a party who can show that the right holder has taken steps with a view to invoking against him a Community design right shall have right of access to the file and in any case, institution of legal proceedings for infringement of an unpublished right is subject to the defendant being given the information contained in the register and in the file.80 If publication is deferred, the publication fee must be paid no later than three months prior to the end of the period for which examination has been deferred.81

Once registered, a design may still be subject to an action for a declaration of invalidity brought before OHIM.82 Grounds on which a registered design may be declared invalid include:
1) That what is registered does not comply with the definition of a design ;
2) That the design lacks novelty or individual character; or is dictated by the technical function of the design or its interconnections;
3) That a court has determined that the owner of the registration is not the rightful owner;
4) That the design conflicts with a prior community design or EU national design application83;
5) That the design incorporates a sign and the owner of rights in that sign has the right to prohibit its use84;
6) That the design infringes another’s copyright;
7) That the design breaches the provisions of Article 6ter of the Paris Convention relating to protection of badges, emblems and escutcheons.85
The procedure to be followed is set out in the Commission Regulation.86

Decisions made by examiners will be subject to appeal.87 Such appeals will be made to a Board of Appeal within OHIM. Actions against appeal board decisions may be brought before the European Court of Justice within two months of the decision being appealed.88

6. Representation before OHIM on Design Matters

Article 78 (1) of the Community Design Regulation provides that the following persons may represent before the Office in proceedings concerning registered Community designs:
legal practitioners subject to the further conditions specified in Article 78 (1) (a),
professional representatives who are entered on the list of professional representatives maintained by the Office under Article 89 of the Community Trade Mark Regulation,
persons who are entered on the special list of professional representatives in design matters referred to in Article 78 (4) of the Community Design Regulation.

The requirements for entry into the special list for representatives who are admitted to practice before OHIM only in design matters have not yet been published.89

A general authorization on behalf of a particular applicant is possible.90

Ladas & Parry has several attorneys who are admitted to act before OHIM on design matters.

7. Term of Registered Protection

Once registered, protection will run initially for a period of five years and will be subject to the possibility of renewal for four further five year periods providing for a possible maximum duration of twenty-five years.91

8. The Register

It is possible to record assignments, licenses and enforcement measures (apparently security interests) on the register.92 In cases where a license has been recorded, and the owner of the registration seeks to surrender it, OHIM will delay action until three months after it is satisfied
that the owner of the registration has notified the licensee.93 It is specifically provided that a registered Community Design may be given as a security or be subject to rights in rem.94
Furthermore, such design may be levied in execution95 or when requested by a competent national authority, a notice of the insolvency of the owner may be recorded.96

9. Enforcement

As noted previously, registered rights give protection against anyone using the design in question, even if the publication of the design has been deferred, whereas unregistered rights give protection only against copying. The protection given by registered rights is itself subject to some limitations. These include:
A. acts done privately and for non-commercial purposes;
B. acts done for experimental purposes;
C. acts of reproduction for the purpose of making citations or teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source;
D. Paris Convention-type exclusions for ship- or aircraft-board use and repair;
E. application of the EU’s normal free flow of goods provisions where the product in question was put on the market within the EU by the owner of the design right or with his consent; and
F. prior user rights for anyone who can establish that before the date of filing the application or a validly claimed priority date he had in good faith commenced use of the design in question within the EU or made serious and effective preparations to that end.97

Enforcement of design rights is by certain designated courts in each member state which will be designated as Community Design Courts.98 Such courts have EU-wide subject matter jurisdiction over matters of infringement. Actions can be brought in a design court in the country where the defendant has an establishment; if the defendant has no establishment in the EU, actions can be brought in the courts in a country where the plaintiff has an establishment. Failing that, actions can be brought in the Community Design Courts in Spain. Additionally, actions can be brought in the Community Design Courts in a country where infringement occurs, but in this case subject matter jurisdiction is limited to acts of infringement in that country. Where national law permits, Community Design Courts also have jurisdiction over acts of threatened infringement. They have the power to issue preliminary injunctions. There is, however, no uniform procedure for such courts and they apply national procedural rules. An example of this occurred in August 2011 when the Dusseldorf Landegericht issued a preliminary injunction ex parte against Samsung’s German subsidiary preventing sale of its Galaxy 10.1 tablet computer as being an alleged infringement of a Community Design Right owned by Apple. An injunction was initially issued against Samsung Korea as well, but lifted as a result of concerns as to whether Samsung Korea had an establishment in Germany.

Community Design Courts have the power to revoke a community design right if its validity is successfully challenged in the course of an infringement action. Otherwise, challenges to the validity of registered Community design rights have to be brought before OHIM.99 Any decision on such an issue is subject to an appeal to an OHIM Board of Appeal and ultimately to the European Court of First Instance and, if a question of law is involved, to the European Court of Justice in Luxembourg. The validity of unregistered design rights may be challenged in Community Design Courts.

The Regulation does not preclude simultaneous national and Community protection for the same design. It does, however, contain provisions relating to attempts to enforce such rights. If brought between the same parties on a national right that is for protection of the same design that has already been the subject of litigation on the basis of a Community design (apparently registered or unregistered), the court shall reject the action based on the national right and that where actions on national rights and community rights are brought before courts of different countries, the second court to be seized of its action shall of its own motion decline jurisdiction.100

End Notes

27Under EU law, directives are issued, today usually by the European Council and Parliament acting jointly, to direct the member states of the EU to bring their laws into conformity with what has been adopted by the EU. Regulations on the other hand are directly applicable. Some, nowadays normally issued by the Council or the Council and Parliament acting jointly, are effectively primary legislation. Others, typically issued by the Commission are in the form of secondary legislation aimed at implementing primary legislation adopted by the Council and Parliament.

28Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (hereinafter referred to as the Directive ).

29Directive Articles 14 and 18. Article 14 confines the rights of countries to amend their national laws on the spare parts issue to amendments whose “purpose is to liberalize the market for such parts.” In September 2004, the Commission issued a proposal to abolish design protection for component parts of complex products (such as spare parts for cars) used to repair that product so as to restore its original appearance. COM(2004) 582 final. However, this has not yet been enacted. Even without enactment, however, several countries have adopted laws consistent with the Commission’s proposal including Belgium, Hungary, Ireland, Italy, Latvia, Luxembourg. Netherlands, Poland, Spain, and the UK. In several others, but not France, the de facto situation is similar to the Commission’s proposal.

30Directive, Article 16. Article 17 specifically provides that questions of whether there can be dual protection for the same design under a design protection law and copyright is to remain a matter for national law.

31Directive Article 7(1).

32Directive Article 7(2).

33Directive Article 1:
‘design’ means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;
‘product’ means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.

34Directive Article 3.

35Directive, Article 6(1).

36Directive, Article 6(2).

37Directive, Article 4.

38Directive, Article 5. In Case T-11/08, (Kwang Yang Motor Co., Ltd), the General Court noted (in the context of a design application for an internal combustion engine) that or a design constituting a component part of a complex product, like that in the present case, it is necessary to determine whether that component part remains visible during normal use of the complex product and whether the visible features of that component part produce on an informed user an overall impression different from that produced by another design which was made available to the public before priority date.

39Directive, Article 10.

40Article 12. The Article includes a provision to permit continuation of acts that were lawful prior to the amendment of national law to comply with the directive even if they become unlawful after the directive is implemented.

41Directive, Article 15.
42Directive, Article 13.

43Directive Article 11(1).

44Council Regulation (EC) 6/2002 (hereinafter referred to as the “Council Regulation”).

45Commission Regulation (EC) 2245/2002 of October 21, 2002 (hereinafter referred to as the Commission Regulation).

46Council Design Regulation Article 12.

47Council Design Regulation Article 11. It has been hypothesized that the actual disclosure need not be in the EU if it has the effect of making the design available to the public in the EU, for example at a trade show outside the EU which large numbers of interested parties from the EU attend. It remains to be seen whether the courts take this view.

48Council Design Regulation Recitals 15 and 16.

49Council Design Regulation Article 19.

50Design Regulation Article 96, it being specifically required that a design protected by a Community design shall not be excluded from protection under the law of copyright of Member States if copyright law is otherwise applicable, recital 32 of the Design Regulation, specifically noting that in the absence of complete harmonization of copyright law, it is important to establish the principle of cumulation of protection under the Community design and under copyright laws…. This means that there will for example be two separate unregistered rights in existence in the United Kingdom: the UK right with a term of ten years from first sale, but only if the design is owned by a “qualified person” and the EU right for a period of three years open to everybody.

51Council Design Regulation Article 3.

52Council Design Regulation Article 4(2).

53Council Design Regulation Recital 13, after noting that the Commission was given a period of three years after the implementation of the Design Directive to provide a recommendation on how to solve the spare parts issue which delayed the implementation of both the Design Regulation and the design Directive, addresses the issue in the following terms:
Under these circumstances, it is appropriate not to confer any protection as a Community design for a design which is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the design is dependant and which is used for the purpose of repair of a complex product so as to restore its original appearance, until the Council has decided its policy on the issue on the basis of a Commission proposal.
This is implemented in Article 110 which states
Until such time as amendments to this Regulation enter into force…, protection as a Community design shall not exist for a design which constitutes a component part of a complex product … for the purpose of the repair of a complex product so as to restore its original appearance.

54Council Design Regulation Article 4(1).

55In its decision in Funnels of April 4, 2008, the Invalidity Division found that a design was not barred from protection as being purely functional when in order to achieve the desired function it was not necessary for the design to have the shape, proportions, structure and handle of the registered design in suit.

56Council Design Regulation Article 9.

57Council Design Regulation Article 41 provides for a six month priority period from applications filed in a Paris Convention or World Trade Organization country on normal Paris Convention terms. Council Regulation Article 44 provides for a six month period in which priority may be claimed from an official or officially recognized exhibition falling within the terms of the Convention on International Exhibitions. When exhibition priority is claimed, the applicant has three months from filing to file a certificate from the authority responsible for the protection of industrial property at the exhibition certifying that the design was incorporated in or applied to a product disclosed at the exhibition and the date on which the product was first disclosed. Commission Regulation Article 9.

58Council Design Regulation Articles 5 and 6.

59In its Bottle of July 4, 2007, the Invalidation Division of OHIM held that a sale between two professional organizations (bottlers) sufficed to destroy novelty and that it was not necessary for the product to have been on sale more generally for novelty to be destroyed. The case was affirmed on appeal, as case T450/08.

60In Green Lane Products Ltd. v. PMS International Group PLC [2008] EWCA Civ 358, the English Court of Appeal held that the sector concerned is that which includes the prior art and that the circles concerned operating within the community is capable of including all individuals who conduct trade in relation to products in the sector concerned, including those who design, make, advertise, market, distribute and sell such products in the course of trade in the Community. In its decision Toys of March 3, 2009, it was held that a Hong Kong design registration was relevant prior art, in part because of the fact that the Hong Kong Toy Fair is the world’s largest and so European toy manufacturers have an interest in what is going on in Hong Kong. In its decision of 23 July,2008, in Biscuits the Invalidity Division held that advertisements and sales in Japan are events that could have become known in the normal course of business to the circles operating in the sector concerned in the Community.

61Council Design Regulation Article 7.

62Joined Cases T-83/11 and T-84/11, 13 November 2012 .
63Case T-9/07Grupo Promer Mon Graphic SA v. OHIM ( Metal Rappers ). The design was for metal plates for games and the Court agreed with OHIM that both a 5-10 year old child and a marketing manager could be regarded as the informed user in this case. On further appeal, the European Court of Justice noted, first, that Regulation No 6/2002 does not define the concept of the ‘informed user’. However, the Court found that concept must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.

In Case T153/08 Shenzen Taiden Industrial Co Ltd v. OHIM ( Communications Equipment ) the court held that the informed user was a person who spoke at conferences, etc. (the design was for a table top microphone). Because such users had to familiarize themselves with the equipment provided, they would show a relatively high attention to the details of the products. They would not, however, know which features were dictated by function and those which were arbitrary.

64In its decision R1516/2007-3 Cans, the Invalidation Division found when dealing with a design for oil cans that such a user was a professional in the trade sector distributing such goods. In R860/2007 Inverter generators, the informed user was found to be someone who habitually purchases such an item and puts it to its intended use and has become informed on the subject by browsing through catalogues of such generators, visiting relevant stores, downloading information from the internet, etc., but not technically experienced or particularly interested in the technical design of inverter generators.

65This provision was apparently included to enable designers in crowded fields, such as textiles, to obtain protection for designs that might have relatively small differences from the prior art as well as to take account of issues relating from technical requirements for the products.

66Council Design Regulation Article 10. This definition focusing on overall impression has caused some concern about the scope of protection of the unregistered right since in this case, it may be difficult to focus the court on individual features of design, which in the case of a registered right might themselves for the subject of individual registrations.

In reversing a first instance decision of infringement, the English Court of Appeal applied a tough test as to when the overall impression would be the same noting:

if design protection is too wide, even for a strikingly innovative design, you are likely to discourage innovation and investment. Different designs will be caught or under the threat of being caught. Merely drawing inspiration from prior designs will become dangerous.
and
The Judge was concerned about the possibility that “a poor quality imitation would escape infringement.” I am not so concerned. We are here considering monopolies in designs, not trade marks. A “poor quality” imitation if it does not convey the same impression as the “original” will fail on its own design merits, or rather the lack of them. If it conveys the “same impression” then it can hardly be a “poor quality imitation” and will succeed for the same reason as the “original.”
Procter & Gamble Company v Reckitt Benckiser UK Limited [2007] EWCA Civ 936

67Council Design Regulation Article 19(2).

68Council Design Regulation Article 35.

69Council Design Regulation Article 98.

70Council Design Regulation Article 36.

71 This possibility may provide a way to deal with the problem of what to do about component parts in a single article.

72Council Design Regulation Article 37.

73Commission Regulation Articles 66 and 67.

74Council Design Regulation Article 47.

75Council Design Regulation Article 67.

76Commission Design Regulation Article 59.

77Commission Design Regulation Article 48.

78Council Design Regulation Articles 48 and 49.

79Council Design Regulation Article 50.

80Council Design Regulation Articles 50 and 74(2). The reason for providing for deferred publication is given in Recital 26 as being that

The normal publication following registration of a Community design could in some cases destroy or jeopardize the success of a commercial operation involving the design. The facility of a deferment of publication for a reasonable period affords a solution in such cases.

It is understood that this provision is regarded as being particularly important by fabric designers.

81Commission Regulation Article 15.

82Council Regulation Article 24.

83The EU General Court has considered what is meant by conflict in Case T-9/07 Grupo Promer Mon Graphic SA v. OHIM ( Metal Rappers ) where it was held that there is a conflict if taking into consideration the freedom of the designer in developing the Community design, the design does not produce on the informed user a different overall impression from the prior design relied upon. In considering the degree of freedom of the designer, technical considerations and health and safety and product liability, considerations should be taken into account. Nevertheless, the court found sufficient similarity between what it regarded as the most visible features where the designer had a high degree of freedom to overrule OHIM and find that the design under consideration invalid for conflicting with the earlier RCD. OHIM appealed to the ECJ. On October 20, 2011, the ECJ affirmed the General Court holding that the central circular shape, the raised edge and the similar dimensions of the designs at issue were not the result of a constraint on the designer’s freedom, and agreed with the General Court that the relevant factors were constraints of the features imposed by the technical function of the product or an element thereof or by statutory requirements applicable to the product. The ECJ also ruled, contrary to arguments by OHIM that the General Court has jurisdiction to conduct a full review of the legality of OHIM’s assessment of the particulars submitted by an applicant.

In its decision Sportswear of June 18, 2008, the Invalidity Division held that a conflict arises where the Registered Community Design falls in the scope of protection of the prior community design because the prior Community Design confers on the holder the exclusive right to use the prior design and prevent third parties … from using a design that falls within the scope of that protection. A community design application filed on the same date as the design under consideration is not prior art for purposes of considering novelty or individual character. Garbage containers decided 23 June 2008.

84 In Case T-148/08 Beifa Group Co. Ltd. v. OHIM ( Instruments for writing ), the EU General Court noted that the question of whether an owner of a sign could prevent its use could depend not only on the registration of that sign as a trademark but also whether the mark had been used to the extent required for it to be enforceable. The court also held that identity with the protected sign was not essential if they were sufficiently similar for there to be likelihood of confusion. However, in this case, the OHIM Board had based its decision an a figurative mark and that should not be the basis for invalidating a three dimensional design registration.
In Case T153/09 Jose Manuel Baena Group SA v. OHIM ( ornamentation ), the EU General Court reversed an OHIM decision that a prior registered CTM should preclude registration of a design because it created the same overall impression. Both the CTM and the design depicted goblin-like characters. The use was on clothing. One goblin looked angry; the other relaxed. The Court took the view that the informed user, children and young people would notice the difference.
In its decision in OOO Business-Alliance v. Vitec Global Ltd ( Graphic Symbols ) of 26 November 2008, [2009] ECDR 67, the Invalidation Division revoked a community design on this ground after considering whether the design was confusingly similar with a prior trademark registration that the owner of the trademark had the right to prohibit use of the design.

85Council Regulation Article 25.

86Commission Regulation Articles 28 to 33 includes provisions permitting an infringer to participate in such proceedings, the possibility of awarding costs, and the languages to be used. The requirements for oral proceedings and the possible use of an expert by OHIM are set out in the Commission Regulation Articles 42 to 46. Extensions of time may be possible as long as consent is obtained from any other party to the proceedings. (Commission Regulation Article 57(2)) In its decision Theft alarms of 22 April 2008, the Invalidity Division noted that it was confined in its determination to consideration of evidence submitted by the parties, but concluded that it did not necessarily have to accept that evidence as being true, especially if it was uncorroborated evidence of facts known only to one of the parties even if the veracity of the evidence was not challenged by the other party.

87Council Regulation 6/2002 Article 55.

88Council Regulation Article 61. Although the regulation refers to the European Court of Justice, in practice appeals must initially be brought before the European General Court (formerly known as the Court of First Instance under the provisions of Article 225 of the Treaty Establishing the European Community (formerly known as the Treaty of Rome). Appeals must be lodged with the court and not OHIM. Time limits will be strictly enforced. Case T09/10 (Chaff Cutters). A further appeal may lie to the European Court of Justice itself. See Procter & Gamble Company v. OHIM [2002] ETMR 22.

89See Communication No 10/02 of the President of OHIM of 28 June 2002 concerning professional representation in the framework of the Community Design Regulation.

90Commission Regulation Article 62.

91Council Design Regulation Articles 12 and 13.

92Commission Regulation Article 24.

93Commission Regulation Article 27.

94Council Regulation Article 29.

95Council Regulation Article 30.

96Council Regulation Article 31. It seems, however, that this can only be done when an action has been brought before the courts of an EU state in which the center of the debtor’s main interests is situated.

97Council Design Regulation Articles 20, 21 and 22. The prior user right is personal, confined to the purpose for which the use had been effected or for which the preparations were made, does not permit the granting of licenses and is transferable only with the business or part of the business in connection with which the prior use occurred or the preparations were made.

98Council Design Regulation Article 80 requires member states to designate specific courts in each country to act as Community Design Courts by March 6, 2005. Until this is done, national courts that normally handle design cases under national law will have jurisdiction over cases relating to Community Design Rights. Council Design Regulation Article 82 provides that if the defendant is domiciled or resident in a member sate, the action shall normally be brought before the Community Design Court (CDC) in that country; if this is not the case and the defendant has an establishment in member state then brought in the CDC in that country, if none of these apply then jurisdiction is in the CDC in the country in which the plaintiff is domiciled, resident or established and if none of these apply, in the CDC in Spain. An additional option is to bring the action in the court of the country in which the infringement occurred. Under Article 90, provisional relief may be requested of any court in a member state, but the relief may be confined to what is available under national law.

99Design Regulation Articles 24, 80 and 81.

100Design Regulation Article 95.