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WELCOME TO THE KINGDOM OF WELCOME TO THE KINGDOM OF

IRRATIONALITY!!!IRRATIONALITY!!! Giulio Zanetti

Turin, 8 November 2012

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INDUSTRIAL DESIGNSINDUSTRIAL DESIGNS

HistoryHistory

Definition:

“Aesthetic Shape of mass-produced products”

Protection forExpression of idea

Design embodied in the object

For what you see

the appearance of the whole or a part of a product resulting from the features of, in particular, the ...

lineslines

colourcolourss

shapeshape texturetexture

contourscontours

materialsmaterials ornamentationornamentation

What is a “design” under EU rules?

Examples of designs registered at OHIM (top 16 Locarno classes)

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Industrial

New

MAIN CHARACTERISTICSMAIN CHARACTERISTICS

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WW, no time/geo limits

Key moment: filing date (or priority)

Grace period: 6 months

NO nov. if prior disclosure (CERTAIN DATE) registered or used that is ... SAME (ie: idetical or very similar) = same overall impression

On INTERESTED CIRCLES

NOVELTYNOVELTY

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NO if dictated essentially by the function art 25.1 TRIPS

NO if contrary to public order, religion or morality

MAIN CHARACTERISTICSMAIN CHARACTERISTICS

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Functional or ornametal ?Functional or ornametal ?

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NOVELTYNOVELTY

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NOVELTYNOVELTY

Respect of Chinese design registrations before OHIMInvalidity division decision of 31.03.08 (ICD 4349) – RCD is declared invalid in light of

prior Chinese design

RCD 000649-0011

CN 3539443

Prior design

Example of design lacking NOVELTY

Later design which lacks

novelty

The “angry man” case

Community design

(for T-shirts)

Prior design

Individual characterBoard of Appeal: No individual character, because overall impression is similarGeneral Court: Yes, because facial expression express differentfeelings (angry vs thoughtful)

T-513/09 of 16 December 2010

Individual character (Art. 6 CDR)

vs Novelty (Art. 5 CDR)

A design has Individual Character if it produces on the informed user an impression that differs from that produced by an earlier design. The designer’s degree of freedom must be taken into consideration.

A design has Novelty if it is not identical to an earlier design. Novelty is not destroyed by differences that amount to

immaterial details

The “Crocs” case

Invalidity action by a competitor

Grounds of invalidity:

1. Lack of novelty2. Lack of individual character

Registered Design

The “Crocs” case: novelty

• Novelty- Sold in USA (‘not more than 10,000’, ‘in small areas of USA’)

- Displayed at a USA fair (‘dealing with leisure boats’, ‘not terribly attended’)

- Displayed on the web (‘quite unsophisticated at the time’, ‘difficult to access’, ‘not used to find information’)

Did these events (which took place several months before) amount to divulgation? Could they become known to the relevant circles in the Community?

The “Crocs” case: novelty (end)

• Novelty not OK:

- Sales: too many, clogs must have been seen by lots of people (who travel), these are fashion items (people pay attention)

- Exhibition: clogs are boat shoes, therefore a boat exhibition is attended (also) by people interested in clogs

- Website: an obvious source of information, clogs could be purchased there

Ohim Board of Appeal said:

Events amounted to ‘self-disclosure’

Events could be known outside USA, to interested circles in the Community

The “Crocs” case: indiv. character

Only difference is the REAR STRAP

An accessory, purely functional element, cannot have an impact on the overall impression of a design

Earlier design: the RED one!!!No Individual Character because same ‘overall impression’

The “Dog Snack” case

Registered Design (dog chew)Prior Design

Who is the ‘informed user’?How broad is the designer’s freedom?

What are the differences? What are the similarities?

Same ‘overall impression’R 1391/2006-3 of 25 January 2008

The “Lawnmower engine”

Registered Design(internal-combustion engine)

Prior Design

Problems: Who is the ‘informed user’? User of the component or the complex product?

The product is a ‘component’ of another product (here, a lawnmower)

Visibility of the product: assessment of indiv. character based on parts that have visibility in normal use

R 1337/2006-3 of 8 October 2007

The “Ferrari” case

Earlier design: a real F1 car Registered Design (a toy)

Conflict between the real product and a toy representing that product

Who is the informed user? A grown up collector? A boy playing with toys?

What is the overall impression?Very similar

Design is invalid

R 84/2007-3 of 25 January 2008

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Thank you!!!

gzanetti@idlo.int