Community design for watch on lanyard held to be invalid

European Union
The General Court has issued its decision in Sphere Time v Office for Harmonisation in the Internal Market (OHIM) (Case T-68/10, June 14 2011), which involved a registered Community design intended to be used for watches on a lanyard.
 
The design, registered by Sphere Time, had been held to be invalid by both the Invalidity Division and the Third Board of Appeal of OHIM following an application for invalidity filed by Punch SAS. 
 
In support of its claim that Sphere Time’s design was not new and lacked individual character within the meaning of Article 4 of the Council Regulation on Community Designs (6/2002), Punch had submitted watch designs by Fuzhou Eagle Electronic Co Ltd and Great Sun Technology Corp. While the Invalidity Division relied on the design of the former company, the board found that Sphere Time’s design lacked individual character based on the design of the latter company (the SYMBICORT design, shown below).
 

Before the General Court, Sphere Time claimed that:
  • the prior disclosure of the SYMBICORT design had not been proven;
  • Sphere Time's design did not lack individual character; and
  • the board had misused its powers under Article 61(2) of the regulation.
First, the General Court dismissed Sphere Time's argument that, under Article 7(2)(b) of the regulation, the date to be taken into consideration when assessing whether the SYMBICORT design had been disclosed prior to Sphere Time’s design was not the date on which the application for the registration of Sphere Time’s design was filed (ie, April 14 2005), but April 14 2004. The General Court noted that, for the grace period under Article 7(2)(b) to apply:

the owner of the design that is the subject of the application for invalidity must establish that it is either the creator of the design upon which that application is based or the successor in title to that creator”.

As Sphere Time was not the creator of the SYMBICORT design, the date to be taken into consideration was the date on which Sphere Time had filed its application for the registration of its design.
 
On this basis, the General Court concluded that the shipping invoices provided by Punch were sufficient to demonstrate that the SYMBICORT design had been disclosed to the public, within the meaning of Article 7 of the regulation, prior to the date on which Sphere Time had registered its design. The fact that the invoices in question were copies issued by a competitor (who obviously had an interest in having Sphere Time's design declared invalid) did not mean that the invoices could not be taken into account. There was no reason to cast doubt on the credibility of the invoices as:
  • there were no indications that they had been tampered with; and
  • they had not been supplied specifically for the court case, nor were they addressed to Punch.
With regard to individual character, Sphere Time claimed that the board had wrongly concluded that its design produced the same overall impression as the SYMBICORT design on the informed user. Sphere Time argued that the informed user, as referred to in Article 6(1) of the regulation, was a professional (who would look closely at the specific character of a given lanyard), and not an ordinary consumer. In contrast, the General Court held the informed user to be both a professional buyer (who distributes watches to end users), and the average consumer. The fact that the board did not mention professional buyers did not affect the legality of its decision, as it was sufficient that the designs in question produced the same overall impression on one of the two groups of users.
 
In addition, Sphere Time claimed that:

  • the board had not taken into consideration all relevant elements of its design; and 
  • by merely comparing the watch screens, the position of the watch on the lanyard and the colour of the two designs, the board had ignored the fact that the freedom of the designer of an analogue watch was limited, while the freedom in relation to the design of the lanyard and the attachment clip was extensive.
Furthermore, Sphere Time claimed that the attachment clip of Sphere Time's design was not represented by dotted lines, as stated in the board's decision. Therefore, the board had erred in not taking this part of the design into consideration when comparing the two designs.
 
Referring to Paragraph 11.4 of the Examination Guidelines for Community Designs (which, among other things, state that dotted lines may be used to indicate elements of a design for which no protection is sought), the General Court first determined which elements were actually protected by Sphere Time's design. Having established that the representation of Sphere Time's design in the board's decision was not relevant with regard to the scope of protection offered by that design, the General Court concluded that the attachment clip in Sphere Time's design was represented by dotted lines, as were the hands of the watch and the rectangular element affixed to the watch face (which are not clearly visible in the picture shown above, but can be seen in the larger pictures reproduced in the Community Design Bulletin and the Community design database). Thus, these elements did not form part of the elements protected by Sphere Time's design and, therefore, were irrelevant with regard to the comparison of the two designs.
 
Focusing on the remaining elements of Sphere Time's design, the General Court concluded that:

  • Sphere Time had exaggerated the degree of freedom of the designer in relation to the lanyard; and
  • the designer was not, to a significant degree, subject to restraints with regard to the shape and general appearance of the watch.
Therefore, the board had not erred in its assessment of the designer’s degree of freedom.
 
Sphere Time also claimed that the representation of the SYMBICORT design submitted by Punch did not provide a basis for concluding that it had a lanyard allowing the watch to be worn around the neck, as the loop connecting the lanyard was not depicted. However, the General Court stated that the graphic representation of a prior design should not be examined in isolation and exclusively. Based on the graphic representation of the SYMBICORT design and the text on the invoices supplied by Punch, it could not be denied that the function of such a lanyard was to allow an object to be worn around the neck. Despite the incomplete graphic representation, the board had correctly held that the SYMBICORT design did entail a lanyard allowing the watch to be worn around the neck.
 
Having compared the overall impression produced by Sphere Time's design (taking into consideration the lanyard, the watch and the two concentric rings around the edge of the watch) and the SYMBICORT design, the General Court concluded that the two designs produced the same overall impression on the informed user. Hence, the board had correctly found that Sphere Time's design was invalid due to lack of individual character within the meaning of Article 6 of the regulation.
 
Finally, the General Court dismissed Sphere Time's argument that the board had misused its powers. The court pointed out that the concept of misuse of powers refers to cases where an administrative authority uses its powers for a purpose other than that for which they were conferred on it.
 
Based on the above reasoning, the General Court held that the comparison between the two designs carried out by the board was a sufficient basis for its decision. The General Court dismissed Sphere Time's action in its entirety and upheld the board's decision.
 
Christian Kragelund and David Telyas, Gorrissen Federspiel, Aarhus

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