Honda Community design decisions issued

European Union

The Invalidity Division of the Office for Harmonization in the Internal Market has issued two decisions in relation to requests by Honda Motor Co Ltd to invalidate registered Community designs. The decisions emphasize the substantiation requirements under the two prongs of the Community design registration test - that is, novelty and individual character.

In the first case, Honda Giken Kogyo Kabushiki Kaisha (also trading as Honda Motor Co) applied for the invalidation of Community design 000163290-0002 for an internal combustion engine owned by Kwang Motor Co. Honda claimed that the design did not fulfil the requirements of novelty and individual character as set out in Articles 4, 5 and 6 of the Community Design Implementation Regulation. Honda claimed that, excluding the parts that were not visible in normal use of the engine and the features having a shape solely dictated by the technical features of the product, the design was identical to a prior art design and produced the same overall impression on the informed user.

The Invalidity Division rejected Honda's claim. It held that with regard to novelty, features of a complex product that are not visible during normal use are to be left aside when considering novelty and individual character; with regard to individual character, the degree of freedom of the designer is limited because the internal combustion has to fulfil its function. However, it found that the general impression of the design differed from the prior design. Accordingly, the Invalidity Division rejected Honda's application.

In another case, the Invalidity Division declared registered Community design 000171178-0005 for inverter generators invalid due to lack of individual character.

In this application, Honda requested the invalidation of a Community design owned by Wuxi Kipor Power Co Ltd. Honda claimed that the design lacked both novelty and individual character. In particular, Honda claimed that the characteristic feature of the design was the approximately cubic shape of the generator housing and the flattened section/bevel formed on the upper corners, and there was conspicuous division into sections of bright and dark. Although these features had individual character, they were identical to Honda's known generators.

In respect of novelty, the Invalidity Division held that, in contrast with the prior design, the registered Community design was for a generator mounted on wheels and the upper corners of the cubic form were rounded, whereas they were slanted in the prior design. Therefore, the design fulfilled the requirement of novelty. In respect of individual character, the variation in the shape of the corners and the mounting did not alter the fact that both designs produced the same overall impression on the informed users. The design lacked individual character. Therefore, the registered Community design was declared invalid.

Nan Zhang, Queen Mary Intellectual Property Research Institute, London, on behalf of McDermott Will & Emery UK LLP

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