General Court confirms that RCD for advertising article is valid

European Union

In Argo Development and Manufacturing Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-207/13), the General Court has dismissed Israeli company Argo Development and Manufacturing Ltd’s action against OHIM. Argo claimed that the Third Board of Appeal of OHIM had wrongfully decided that London-based company Clapbanner Ltd's registered Community design (RCD) for advertising articles was valid.

On March 20 2010 Clapbanner filed an application for registration of the RCD depicted below, intended to be applied to “advertising articles” in Class 20-03 of the Locarno Agreement. The product to which the design is applied is a cardboard signboard, divided into pleats, which can be folded like an accordion. Unfolded, it can be used to convey a message. Folded, it can be used to produce a sound effect, for instance by slapping it against one’s hand. These products are used at large group events, such as sporting events.

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On April 20 2011 Argo applied to OHIM for a declaration that the design was invalid. In support of its application, Argo relied on earlier Community designs (Nos 796 446-0001 to 794 446-0004) in respect of advertising articles:

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Design No 796 446-0002                                               Design No 796 446-0004

The Invalidity Division granted the application under Article 25(1)(b) of the Community Designs Regulation (6/2002), read in conjunction with Article 6 thereof, holding that the RCD lacked individual character.

On May 18 2012 Clapbanner filed an appeal, which was upheld. In particular, the Board of Appeal found that the contested design had individual character and that the overall impression produced by the contested design differed from that produced by the earlier designs, considering:

  1. the nature and purpose of the product - the contested design related to lightweight cardboard signboards that may be folded like an accordion and are used at group events where they are held above the user’s head and/or to produce a sound effect;

  2. the informed users, who are both the persons who use the signboards at group events, as well as the bodies that buy and distribute these signboards to the end-users;

  3. the degree of freedom of the designer, who had some creative freedom in respect of the handles of the signboards, whilst the creative freedom as regards the signboards’ other features was very limited;

  4. the role of the handles - the aspect of the handles will play an essential role from the informed user’s perspective, and the aspect of the handles in the contested design differed from the aspect of the handles in the earlier designs.

Argo appealed. In support of its action, Argo put forward four pleas in law. The General Court rejected all of them, finding that the contested design possessed individual character.

First, the General Court confirmed the Board of Appeal’s decision as to the nature and purpose of the product to which the contested design was applied and the definition of the informed user. Regarding the degree of freedom, the General Court – referring to Grupo Promer Mon Graphic v OHIM (Case T-9/07) and Kwang Yang Motor v OHIM (Case T-11/08) – held that this was determined by, among other things, the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product to which the design is applied. On that basis, and bearing in mind the nature and purpose of the cardboard signboards, the General Court found that the Board of Appeal was justified to consider that:

  1. the rectangular shape of the cardboard signboard and its division into accordion-like foldable pleats constituted two features in relation to which the designer had a very limited to non-existent degree of freedom; and

  2. the handles were the only part of the signboards in relation to which the designer had some creative freedom.

Consequently, the aspects of the handles played an essential role in the overall impression produced by the designs at issue on the informed user. These were thus compared side-by-side (in contrast to trademark law). Because the aspects of the handles differed (in shape, position and application) and these differences were visible during the various stages of use of the cardboard signboards (before use, unfolded and folded) and bearing in mind the very limited degree of freedom of the designer for the other features of the cardboard signboards, the General Court, like the Board of Appeal before it, concluded that the contested design produced a different overall impression on the informed user than the earlier designs.

The decision of the General Court underlines that the validity of any CRD is examined on its own merits. No matter how insignificant certain details may seem on the surface, a careful examination of the underlying product, the informed user, the sector standards and (importantly) the degree of freedom of the designer may turn those details into deal makers - or deal breakers. Consequently, a meticulous examination of these circumstances is advised before applying for a RCD and/or initiating invalidity proceedings. In addition, the General Court confirmed – once again – that bad faith does not constitute a ground for invalidity of a RCD.

Sebastiaan Brommersma, Klos Morel Vos & Schaap, Amsterdam

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