European Union

During the past year, a number of cases involving designs were decided at European level, by both the courts and the EU Intellectual Property Office (EUIPO; formerly the Office for Harmonisation in the Internal Market). Not all of the decisions concern substantive or procedural matters of law directly relating to design matters; however, many are highly relevant to everyday practice and decision making in the field.

During the past year, a number of cases involving designs were decided at European level, by both the courts and the EU Intellectual Property Office (EUIPO; formerly the Office for Harmonisation in the Internal Market). Not all of the decisions concern substantive or procedural matters of law directly relating to design matters; however, many are highly relevant to everyday practice and decision making in the field.

Court cases

Litigation costs

Several decisions dealt with costs in proceedings before the EU courts. This is a common issue for rights holders, as the costs of litigation can be astronomical in many jurisdictions. Quotes of tens of thousands of euros were common in the past, when the amounts invoiced by law firms were often hard to understand. Fortunately, the EU courts have procedures for fixing costs. In a number of cases over the past year, the courts capped the amounts to be reimbursed by unsuccessful litigants by substantially reducing the original amounts claimed.

In Case T-608/11 the EU General Court dismissed an application and ordered the applicant to pay costs. This led to the decision in Case T-608/11 DEP, in which Schwan-Stabilo Schwanhäußer GmbH & Co KG (the intervener) sought to recover costs amounting to €20,982.08. Since the applicant failed to reimburse these costs, the intervener sought taxation of costs. The applicant did not reply within the timeframe set by the General Court. Nevertheless, the court determined that this was a case that – contrary to the intervener’s arguments – could not be characterised as exceptional; the written proceedings consisted of a single exchange of written pleadings, and the oral hearing lasted 10 minutes and was conducted without the applicant present. Taking this into consideration, the General Court held that the number of hours invoiced and sought to be recovered appeared excessive and held that the total amount to be reimbursed was €7,502.25.

In Cases T-10/08 DEP and T-11/08 DEP, Honda Giken Kogyo Kabushiki Kaisha (as intervener) sought to recover €36,067.60 from the applicant following dismissal of the application. The applicant refunded €4,100. The intervener sought taxation of costs. The court clearly stated that the number of hours invoiced (57.5 hours and 73.5 hours, respectively) was manifestly excessive. In doing so, the court went so far as to state that a professional is supposed to know the rules of court procedure, the study of which had been invoiced at six hours and 40 minutes. The court also commented on the time needed by professionals to analyse registrations presented in standard format and held the relevant hours to be excessive. The court therefore taxed the costs at €6,187.33 in one case and €8,088.45 in the other.

These taxations seem reasonable, considering that these rights are valid throughout the European Union. A decision on whether to litigate should always be based on sound knowledge of European case law. Applications to the EUIPO Boards of Appeal and the courts should be filed only if there is a realistic chance of success against the lower-instance decision.

Licensee rights

In a June 2016 decision (C-41/16P) the European Court of Justice (ECJ) clarified that the EU Community Designs Regulation allows the licensee of a registered Community design to bring infringement proceedings in relation to the design, even if the licence is not registered in the Community designs register. The licensee can also claim damages for its own losses in such proceedings.

3D trademark or 3D design?

Although not dealing with a registered Community design, the decision in Case T-629/14 is noteworthy, as it concerned the design of a vehicle. The General Court partially annulled a decision of the EUIPO Boards of Appeal, which had refused to register a three-dimensional (3D) shape as a Community trademark in Class 12 for vehicles for locomotion by air and water (see Figure 1).

Figure 1: 3D design for “vehicle for locomotion by air and water”?

The court held that while the design in question depicted an apparatus for locomotion by land, it did not represent “vehicles for locomotion by air and water”. It therefore departed significantly from the norms and customs of the sector for vehicles for locomotion by air and water, and consequently was not devoid of distinctive character for the purposes of the EU Community Trademark Regulation. However, the court dismissed the action in relation to all other goods, preventing Jaguar Land Rover Ltd from obtaining registration for the relevant goods (ie, vehicles for locomotion by land).

This would not have been an issue had the design been filed as a Community design. The characteristic features of the Range Rover Evoque, which the applicant cited in the proceedings, could have been protected had they been filed sufficiently early; the issues relating to the trademark application would not have arisen and protection could have been obtained for five to 25 years. Considering the amount of advertising that is customary in the automobile industry and the omnipresence of certain car models, such designs have a good chance of becoming well known. If the design is still relevant after 25 years – however unlikely this may be in today’s age of ever-shorter product lifecycles – such a well-known shape may be filed as a 3D trademark on expiry of the design in order to maintain protection. Due to the degree of distinctiveness obtained through use, trademark registration would then be possible.

However, obtaining protection as a registered Community design should always be the first priority, as it is far more cost efficient and easier to obtain than a 3D trademark registration.

EUIPO Boards of Appeal cases

Design legibility

In Decision R 949/2015-3 the Third Board of Appeal (which deals with Community design cases) addressed the legibility of the design. The prior design had been registered based on three blurry images. The configuration of the “foil material for packing and palletising” could not easily be made out. The board was therefore convinced that these images – being the only pertinent pieces of evidence submitted – did not support the contested decision’s finding of a lack of individual character, let alone permit a reliable comparison with the contested design in order to assess their overall impression on the informed user.

All of the images were of poor quality and did not enable the details of the prior design to be examined, making any comparison with the contested design impossible. The board therefore rejected the application for a declaration of invalidity as unfounded.

Technical function

In another decision (R 1341/2015-3) the board dealt with designs for light-emitting diodes (LEDs) (see Figure 2).

Figure 2: Contested LED design

The applicant for invalidity based its request on a lack of novelty and individual character, and on the claim that the appearance of the contested registered Community design was dictated solely by its technical function. This was supported by a 2011 US patent application (see Figure 3).

Figure 3: Prior US patent application

The invention was described as a self-contained illumination device for attachment to a container (eg, a bottle), which comprised a printed circuit board with LEDs attached to the central region of a liquid-impervious flexible pad. The central region was surrounded by an annular adhesive region which was arranged to attach the pad to the container in a liquid-tight manner. The pad comprised a base layer, plasticised paper or PVC covered by an adhesive layer and (before attachment to the container) a peripheral layer of release paper. The contested registered Community design showed an identical view.

The board made general comments about the nature of a good design, which involves two fundamental elements:

  • The product must perform its function; and
  • It should be pleasant to look at.

The sole purpose of certain products (eg, pictures and ornaments) is to please the eye; however, the visual appearance is irrelevant to other products (eg, the internal working parts of a machine). This is why Community design legislation denies protection to component parts that are not visible in normal use. For most products, the designer will be concerned with both the functional and aesthetic elements. For this reason, there is no objection in principle to granting design protection to products whose overall appearance is determined largely – but not exclusively – by functional considerations.

After discussing the designs in detail, the board concluded that each part of the contested registered Community design, no matter how it was modified in terms of appearance, would always provide a different – but not necessarily better – technical solution. The mere existence of a design alternative does not mean that a product’s appearance is dictated by anything other than technical considerations. Practically all of the registered Community design proprietor’s arguments concerning the features of the product were based simply on the claim that the designer had various options and various shapes and arrangements could be used. However, all of these features were mentioned in the detailed description of the invention in the patent. It was true that, in principle, design alternatives existed as to the size, shape and position of these features. However, it had to be considered that the features and the way that they were designed also secured technical effects that facilitated the product’s performance. The main concerns during their development were of a technical – not visual – nature.

The board therefore opined that it was difficult to see anything in the contested registered Community design that could have been influenced by anything other than the objective of designing a product that performed its function in the best possible manner. All of the essential features of the contested registered Community design had been chosen with a view to designing a product that performed its function. None of these features had been chosen simply to enhance the product’s visual appearance.

As Article 8(1) of the Community Designs Regulation denies protection to features of a product’s appearance that are dictated solely by the product’s technical function – as opposed to features that enhance the product’s visual appearance – and considering that the LED’s function was to illuminate liquid-filled bottles using pleasant, attractive lighting (as confirmed by the registered Community design proprietor and as evidenced in the US patent), all of the design’s features served only that particular function.

The board thus confirmed that the contested registered Community design subsisted in features of shape, arrangement and dimensions of an LED dictated solely by its technical function and therefore invalidated the registered Community design under Articles 25(1)(b) and 8(1) of the Community Designs Regulation. The appeal was therefore dismissed.

Overall impression of design

In Decision R2300/2014-3 the board decided on the overall impression created by shoe designs (see Figure 4).

Figure 4: Rival shoe designs

The applicant sought a declaration of invalidity for a registered Community design for the soles of shoes (see Figure 5).

Figure 5Contested shoe sole design

The board held that the subsequent design produced a different overall impression on the informed user. This was due to the prior designs evoking the appearance of fully assembled boots, while the subsequent design resembled a sole or insole. However, according to Article 6 of the Community Designs Regulation, the overall impression of the design is determined by the design in its entirety – not a part thereof.

This marked a change from the EUIPO’s previous practice. For example, in Decision R915/2013-3 it had held that the overall impression that was produced by the earlier design for a part of a chair (see Figure 6) was “essentially the same” as the contested Community design (see Figure 7).

Figure 6: Earlier chair design

Figure 7: Contested community design

This conclusion was based on the argument that the assessment was between the Community design and the prior design, with no consideration of the part that rested on the base and the legs.

The earlier decision makes it more difficult for designers to assess whether earlier designs may be infringed. However, it seems reasonable that design elements which form clearly visible parts of other goods should be protected. It would be unreasonable to deny protection on the grounds that these elements are not goods in and of themselves, but rather only parts or fittings of other goods.

However, in light of the subsequent decision, it is advisable to register each particular element of a design – rather than the whole object – if the different visible components are to be protected against infringers that copy only a part of the goods.

EUIPO’s interpretation of national law

The board also issued a decision (R1295/2014-3) concerning the EUIPO’s role in relation to national laws, ruling that the EUIPO is not limited simply to validating national law as submitted and stated by a party. On the contrary, the board may assess – of its own motion and by whatever means it deems appropriate – the contents of and conditions governing the application of the national law and verify whether the rules invoked properly apply. This is a significant ruling, as it puts the burden of challenging one-sided explanations of national laws on the EUIPO itself. If the EUIPO follows this decision in future, it will have to consider carefully how the local laws cited by a party actually apply to the case at hand.

Postal delays

On a procedural matter, the board ruled (R294/2016-3) that if four appeals are sent by registered mail from Paris to Alicante on the same day and take more than six days to arrive, with only one of the four arriving before expiry of the time limit, this suggests an irregularity in the postal service that the appellant could not reasonably have expected.


These are only some of the numerous decisions issued by the Third Board of Appeal in recent months. It handles a heavy caseload and is accordingly generating a growing body of case law that has clarified many important principles and served as guidance for practitioners and rights holders alike. Nevertheless, numerous questions remain to be answered and many more interesting decisions are likely to be issued in the years to come.

BEST Rechtsanwälte PartmbB

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Udo Pfleghar


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Udo Pfleghar studied and trained in Melbourne, Australia and Regensburg, Germany. He joined the Office for Harmonisation in the Internal Market (now the EU Intellectual Property Office) in 1999, where he worked as a senior examiner, litigator and instructor. After heading the Boehringer Ingelheim domain and trademark group, in 2009 he joined BEST Rechtsanwälte as a partner. He deals with questions relating to trademark, design and domain law, as well as data protection issues. Mr Pfleghar is a lecturer in law at the University of Applied Sciences in Frankfurt am Main and a panellist for ‘.eu’ alternative dispute resolution proceedings. He is a member of the European Communities Trademark Association Law Committee, MARQUES and other professional organisations.

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