4 July 2017 – Community design representing an electronic wristband – Judgement of the Court of Justice of the EU (General Court), case T 90/16

The judgement concerns an action against a decision of the Board of Appeal of EUIPO in proceedings for a declaration of invalidity of a Community design registered for “measuring instruments, apparatus and devices”, actually consisting of an electronic wristband, on the ground of that the contested design was devoid of individual character.

Significantly, the General Court shared the contested decision that stated that “the features of the designs which were claimed but did not appear in the registered representations of the designs did not come within the protection covered by each registration and could not be taken into account. The Board of Appeal thus implicitly rejected the explanations concerning the features of the prior design which the applicant had produced before it on the ground that, in his explanations, the applicant claimed that the design had features which did not appear in the representations of that design”. (Nevertheless, in this regard the Court also specified that “it is possible to take into account, in order to compare designs, the products actually marketed and corresponding to those designs, at least for illustrative purposes, in order to confirm the conclusions already drawn from the assessment of the designs as described and represented in the applications for registration”).

Also, the General Court endorsed the contested decision setting forth that “the degree of freedom of the designer of a design is determined by, inter alia, 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. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned”. In the present case, “the Board of Appeal correctly found that the degree of freedom of the designer was high, and not very high”, because “the degree of freedom of a designer of an electronic wristband was limited by the technical constraints which apply to those wristbands, namely the need to be ergonomic in order to fit the wrist and to contain measuring instruments” and, “in order for a wristband to be able to fulfil its function properly, it had to be relatively small, thin and light and to fit easily around the wrist”.

Furthermore, the General Court stated that “the greater the freedom of the designer in developing a design, the less likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression on an informed user. Conversely, the more the freedom of the designer in developing a design is restricted, the more likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs being compared, which do not display significant differences, will produce the same overall impression on an informed user”. “However, the factor relating to the freedom of the designer cannot on its own determine the assessment of the individual character of a design. It makes it possible only to moderate the assessment of the individual character of the contested design, but does not determine how different the two designs have to be in order for one of them to have individual character”.

With regard to the assessment of individual character, the General Court confirmed that “in accordance with the case-law, the individual character of a design results from an overall impression of difference, or lack of ‘déjà vu’, from the point of view of an informed user in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions”.  In the present case, “the comparison between the designs had to be based on the designs as they were described and reproduced in the respective applications for registration”. “Even if the button on a wristband had a functional purpose…, it could still be designed and situated on the product in various ways and … numerous configurations of that button were possible”, “in so far as that button could be placed on a wristband in different ways and could have different shapes and sizes”.

Moreover, still endorsing the contested decision, the General Court reaffirmed that “the overall impression produced by a design on the informed user must necessarily be determined also in the light of the manner in which the product in question is used”, stating that “when using an electronic wristband, the informed user attaches more importance to the part of the wristband which displays the data than to the clasp of that wristband”.

Finally, the General Court set forth that “, with regard to the national judgment invoked by the applicant, it must be recalled that the legality of decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 6/2002, as interpreted by the Courts of the European Union, and not on the basis of national decisions, even where the latter are based on provisions analogous to those of that regulation”. – Full judgement