A community design cannot be regarded as being new if an identical design has been made available to the public even if that earlier design was intended to be incorporated in or to be applied to a different product

C-361/15 P

ESS v Group Nivelles

Design: Novelty and individual character

21 Sep 2017

The matter at hand

Easy Sanitary Solutions ('ESS') is the owner of a Community design relating to a shower drain. Group Nivelles submitted an application for a declaration of invalidity thereof, arguing that the design does not fulfil the requirements of novelty and individual character. In support of its application, Group Nivelles produced, inter alia, extracts from third party product catalogues depicting several individual components of one or more shower drains. The Invalidity Division of EUIPO granted the application, mainly because it found that the plate of ESS's shower drain, being the only visible part once the shower drain is installed, is identical to the one shown in the third party catalogues and, therefore, lacks novelty.

ESS successfully appealed this decision. Contrary to the Invalidity Division, the Board of Appeal found that the Community design is new, since it contains material differences as opposed to the shower drain depicted in the product catalogues. Group Nivelles brought an action before the General Court requesting the annulment of the decision on appeal. The General Court upheld Group Nivelles' appeal and annulled the decisions of the Board of Appeal. This led both ESS and EUIPO to request the ECJ to set aside the judgment of the General Court.

The judgment of the ECJ

One of the questions before the ECJ is the question of whether the General Court was right in requiring EUIPO, when assessing the novelty of the design, to combine several components of and earlier design in order to determine the entire appearance of the earlier design. According to the General Court, the EUIPO was required to do so to the extent that it was clear from the catalogue submitted by Group Nivelles that the cover plate shown in one of the illustrations in that catalogue was intended to be combined with the collectors and siphons that also appeared in that catalogue, in order to make up a complete drainage device for liquid waste.

The ECJ points out that “it is essential that the departments of EUIPO have an image of the earlier design that makes it possible to see the appearance of the product in which the design is incorporated and to identify the earlier design precisely and with certainty, so that they may (…) assess the novelty and individual character of the contested design and carry out a comparison of the designs at issue as part of that assessment. It is a prerequisite of an examination whether the contested design does in fact lack novelty or individual character that a specific and defined earlier design is available” (paragraph 64). The ECJ rules that “it is for the party who lodged the application for a declaration of invalidity to (…) identify and reproduce precisely and entirely the design that is allegedly earlier in order to demonstrate that the contested design cannot be validly registered” (paragraph 65). Since Group Nivelles only produced catalogues depicting individual elements of an allegedly earlier design, the ECJ concludes that it failed to present a complete reproduction of the design that was claimed to be earlier.

More importantly, the ECJ addresses the question of whether an earlier design incorporated in or applied to a product that is different from the one to which the contested design relates, is relevant for the purpose of assessing the novelty of the contested design. Having regard to the wording of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, the ECJ holds that “a Community design cannot be regarded as being new, within the meaning of Article 5(1) of [the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs], if an identical design has been made available to the public before the dates specified in that provision, even if that earlier design was intended to be incorporated into a different product or to be applied to a different product” (paragraph 83).

The ECJ further finds, contrary to the General Court, that for the purposes of examining the individual character of a design, it is not necessary for an informed user of the contested design to know the earlier design when it is incorporated in a product in an industry sector that differs from the relevant sector for the contested design, or is applied to such a product. Otherwise, “an applicant for a declaration of invalidity in respect of the contested design would have to prove not only that the earlier design had been made available to the public, (…), but also that the informed public of the design whose validity is contested knew that earlier design” (paragraph 132). “Such a requirement (…) would add a condition that neither the letter nor the spirit of Article 7(1) of [the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs] provides and would be irreconcilable with the principle arising from Article 10(1) of that regulation, according to which the protection granted by the Community design extends to ‘any design’ that fails to produce on the informed user a different overall impression” (paragraph 133).

Commentary

This is a very important decision ending a fierce debate that existed – at least in the Netherlands – as to whether a design could be new if an identical design already existed, but was applied to or incorporated in a different product than the (alleged) new design. Under the ‘old’ Benelux Designs Act in force until 1 December 2003, the Dutch Supreme Court had answered this question in the affirmative in a matter known as the Kinderkapperstoel (‘children barber chair’) case. This case concerned the design for a barber chair intended for children, consisting of a pre-existing pedal car mounted on the underframe of a barber chair. The Supreme Court held that this design was indeed new, because a barber chair is a different product than a pedal car. It was unclear whether this still applied after the amendment of the Benelux Designs Act (now part of the Benelux Convention on Intellectual Property) with effect from 1 December 2003 and under the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs. The ECJ has now finally answered this question (in the negative) as far as the regulation is concerned, which probably also decides the debate with respect to the Benelux Convention, considering that the latter is nearly identical in wording to the regulation and to the Designs Directive (98/71/EC) and that both the regulation and the Benelux Convention must be interpreted in accordance with the Designs Directive. The judgment of the ECJ furthermore means that the scope of protection of Community designs is not limited to the product category to which the protected design belongs, but extends to all product categories. In other words: the owner of the design registration for the pedal car can not only resist the registration of the design for the Kinderkapperstoel for lack of novelty, but can act against the use thereof as well.