General Court confirms that chocolate cookie design is invalid

In Biscuits Poult SAS v Office for Harmonisation in the Internal Market (OHIM) (Case T-494/12), the General Court has upheld a decision of the Third Board of Appeal of OHIM finding that a registered Community design was invalid due to the fact that it lacked individual character.

On March 25 2009, the applicant, Biscuits Poult SAS, filed an application for registration of a Community design with OHIM. The design in respect of which registration was sought, intended to be applied to ‘cookies’, was represented as follows:

The design was registered as Community design No 1114292-0001 and published in Community Designs Bulletin No 75/2009 of April 22 2009.

On February 15 2010, the intervener, Banketbakkerij Merba BV, applied to OHIM for a declaration that the design was invalid pursuant to Article 25(1)(b) of the Council Regulation on Community Designs (6/2002), alleging that the design was not new and lacked individual character, and that its appearance was dictated by its technical function within the meaning of Articles 5, 6 and 8 of the regulation.

In support of its application for a declaration of invalidity, the intervener provided, to support its contention that the contested design was not new and lacked individual character, the earlier designs set out below:

By decision of February 28 2011, the Cancellation Division of OHIM dismissed the application for a declaration that the contested design was invalid.

On April 22 2011 the intervener filed an appeal with OHIM against the decision of the Cancellation Division. By decision of August 2 2012, the Third Board of Appeal of OHIM declared that the contested design was invalid pursuant to Article 25(1)(b) of the regulation on the ground that it lacked individual character within the meaning of Article 6 of the regulation. The board held that the layer of filling inside the cookie could not be taken into consideration for the assessment of the individual character of the contested design, as it did not remain visible during normal use of the product. Further, the board considered that the outer appearance of the contested design was the same as the three earlier designs below:

Lastly, the board held that the contested design did not produce on an informed user who regularly consumes that type of cookie a different overall impression from that produced by the three earlier designs, given the broad margin of freedom of the designer of this type of product.

On August 2 2012 the applicant filed an appeal with the General Court, claiming that the board had incorrectly refused to consider the internal appearance of the contested design, thereby failing to take account of the differences as compared to the earlier designs, which gave the contested design individual character.

The applicant submitted that a cookie cannot be considered to be a “complex product” within the meaning of Article 3(c) of the regulation and that, therefore, the filling inside the cookie is not a component of such product.

In the alternative, the layer of filling inside the cookie was visible when the product is put to normal use, since it would be broken at the time it was put to normal use, which was a normal use of the cookie. Moreover, this type of representation of a cookie reflected the advertising practices prevalent in the relevant sector. Accordingly, the appearance of the filling ought to have been taken into consideration even under Article 4(2) of the regulation. Given all the characteristics of the design, including its appearance, lines, contours, colours, the contrast between the inside and the outside, the golden surface, the number of chocolate chips on the surface and its texture, the board ought to have acknowledged the contested design’s individual character in relation to the earlier designs submitted by the intervener.

The General Court stated that the protection of a design for the purposes of Article 4(1) of the regulation consists in the protection of the appearance of a product. The protection of an industrial design was thus restricted to the visible elements.

The applicant’s argument to the effect that the layer of chocolate filling inside the cookie became visible during “normal use” of the cookie was based on a misunderstanding of Article 4(2) of the regulation. Under this article, the design is protected only if the component part, once it has been incorporated into the complex product, remains visible during normal use of that product. Since the chocolate filling was to be considered as a non-visible characteristic of the cookie, which did not relate to its appearance, it could therefore not be taken into account in the determination of whether the contested design could be protected.

Against this background, the court found that the board had not erred in stating that the non-visible characteristics of the product, which do not relate to its appearance, could not be taken into account in the determination of whether the design could be protected.

In conclusion, the General Court stated that the irregular rough surface on the outside of the cookie, its golden colour, round shape and the presence of chocolate chips were characteristics which were common to the conflicting designs and decisive for the overall impression produced on an informed user. Therefore, the contested design could not be regarded as having individual character.

The smoother surface of the contested design as compared to the earlier designs, together with the differences relating to the number, specific dimensions and somewhat prominent presence of the chocolate chips on each of those earlier designs and on the contested design did not confer individual character on the latter. Given the designer's considerable freedom, those differences was not liable to produce a different overall impression on an informed user in such a way as to benefit the contested design.

Against this background, the General Court stated the board had been right in finding that the contested design was invalid due to its lack of individual character, and dismissed the action.

Nina Ringen, Rønne & Lundgren, Copenhagen