Design for conference unit held to lack individual character

European Union
In Shenzhen Taiden Industrial Co Ltd v Office for Harmonization in the Internal Market(OHIM) (Case T-153/08, June 22 2010), the General Court has held that a registered Community design for "units for conference systems" was invalid.
 
Chinese company Shenzhen Taiden Industrial Co Ltd holds the registered Community design 241/903-0001, filed on August 11 2004, with a claimed priority date of April 22 2004. The design was intended to be applied to "communications equipment".
 
On September 2 2005 Bosch Security System BV applied for a declaration of invalidity of the design on the grounds that it was not new and lacked individual character. In support of its application, Bosch relied on an earlier international design (Registration DM/055655), which was to be applied to "units for conference systems". Bosch also submitted a brochure, press cuttings and advertisements dating from 2000 and 2001 showing the design of a conference unit which, according to Bosch, was identical to the Community design at issue.
 
The Invalidity Division of OHIM rejected the invalidity claim on September 15 2006. However, on February 11 2008 the Third Board of Appeal of OHIM allowed Bosch's appeal. In particular, the board found that the Community design was new, since it was not identical to the earlier international design. However, the board concluded that the Community design lacked individual character, as the differences between the two designs were not sufficiently noticeable to produce a different overall impression on the informed user. Taiden appealed to the General Court.
 
The court first confirmed that, for the purpose of assessing the individual character of the design at issue, the informed user was "anyone who regularly attends conferences or formal meetings at which the various participants have a conference unit with a microphone on the table in front of them".
 
The court then agreed with the board that the degree of freedom of the designer of a conference unit was relatively wide. The court found that the speaker, microphone, buttons, screen and card slot did not have a significant impact on the general appearance of a conference unit. Additionally, Taiden had not produced any evidence that technical or functional requirements restricted the degree of freedom of the designer, or that there was a trend favouring small, flat, rectangular devices on the market at issue.  
 
The court concluded that the Community design and the earlier design produced the same overall impression on the informed user, the sole difference being the lid of the hinged speaker. However, the importance of that factor was reduced because of the limited visibility of the conference unit’s cover when the device is in use.
 
The decision in Shenzhen Taiden v OHIM is only the third decision issued by the General Court on registered Community designs. In order to assess the individual character of the Community design at issue, the court compared the two designs in a very practical and concrete manner by considering the conditions of use of the products.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, France

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