OHIM cancels first Community design registrations

The Office for Harmonization in the Internal Market (OHIM) has issued its first decisions regarding challenges made against registered Community designs, for which it started accepting registrations in January 2003. It had only published guidelines for such proceedings the day before it issued its first decision.

Design applications are not examined for novelty and individual character, or most other grounds of invalidity set out in the Council Regulation on Community Designs. The OHIM merely examines whether (i) the formal requirements for printing the design are met, and (ii) the fees are paid. Thus, any challenge of a Community design involves an application for invalidation after the design has been published and registered. Due to the unitary character of the regulation, a declaration of invalidity extends to the whole European Union.

The first case decided by the Invalidity Division was Eredu S Coop v Arrmet SRL, which involved an aesthetic, non-technical design. The Invalidity Division placed great emphasis on the overall impression gained from a visual comparison of the design and the prior art. The prior art consisted of a Spanish national design application that had been published in April 2003. This destroyed the novelty of the registered Community design. The division ruled that there was no significant difference in the overall impression of the later design against the prior art. Thus, the division declared the design invalid.

In the case of Sola v RIDI Leuchten GmbH, the division upheld the validity of a ceiling light design. Miguel Soriano Sola applied for the invalidation of RIDI Leuchten GmbH's Community design on the basis of his own earlier registered Community design for ceiling lights. The division found that RIDI's design differed from the prior art in its essential features, which were important for the informed user.

The division also rejected two invalidation actions involving the same parties, namely José Mallent Castello and 3M Innovative Properties Company (USA). Castello alleged that two of 3M's designs for "skin antiseptic dispensers" were invalid against his prior Spanish utility model. The division examined the 3M designs for novelty (Article 5) and individual character (Article 6). It found that the utility model design was not identical to the 3M Community designs, as the earlier design had a "cylinder shaped head" whereas the later designs had a "wedge shaped head". Although the division did not say so specifically, it would appear that this difference was more than "immaterial" (Article 5.2).

In examining the individual character of the 3M designs, the division took the perspective of the informed user, who is familiar with:

• the type of products that relate to the design;
  
  
• the functionality of the design; and
  
  
• the degree of freedom available to the designer.

In these cases, the basic structure of both medical devices was a consequence of their functionality and the informed user would focus his or her attention on the features not necessarily implied by this function. The division concluded that the overall impressions produced by the 3M designs were different from that of the prior art. Accordingly, it rejected the claim for invalidity.

The division has upheld another five requests for invalidation to date, including four brought by the same party - Commercial Opera SA.

Chris McLeod, Hammonds, London