Earlier designs not invoked at the start of invalidation proceedings of a Community Design go down the drain

"The formal admissibility of such “additional” evidence does not allow the submission of new earlier designs that go beyond the mere illustration or the support of what was put forward at the start of the proceedings"

Registered Community Designs offer the most waterproof protection for designs in the European Union. This was once again made clear by the recent decision of the General Court of the European Union in case T‑327/20. The Court considered that during invalidity proceedings based upon an earlier design, it is not allowed to submit (exhibits relating to) yet another earlier design because this constitutes “new” evidence. Only “additional” evidence illustrating or supporting the originally invoked design is admissible under European design law, so the Court held in its decision of 27 April 2022.

Factual background

The contested Registered Community Design (“RCD”) was granted to the Dutch company Easy Sanitary Solutions (“ESS”) in 2004, and involved a shower drain.

The invalidity proceedings leading up to the present decision of the General Court started back in 2009, when the Belgian company I-Drain – in the meantime acquired by Group Nivelles (“Nivelles”) – lodged an invalidity procedure with the EUIPO based upon its international design registration DM/059828 for shower drains.[1] In 2010, when proceedings were already pending, Nivelles submitted new additional documents relating to other earlier designs than the originally invoked international design, including extracts of two catalogues showing very similar designs to the contested RCD.

The case continued for over ten years with an earlier appeal to the Court of Justice of the European Union, giving rise to an important decision in 2017 establishing clearly that novelty of a design – as is required for its protection – is independent from the specific sector to which the design belongs.[2]

Decision of the General Court

In its present decision, the General Court offers again valuable insights on Community Design law:

Firstly, the Court considers that new evidence submitted after the invalidity proceedings have been lodged can be admitted if it illustrates the way in which specific products incorporating the compared designs are used, or if it supports a fact or allegation initially put forward at the start of the invalidity proceedings – this is so-called “additional” evidence. However, the formal admissibility of such “additional” evidence does not allow the submission of new earlier designs that go beyond the mere illustration or the support of what was put forward at the start of the proceedings. In the present case, this means that the submission of new catalogue-extracts during the invalidity proceedings constitute non-admissible “new” evidence, as opposed to the aforementioned admissible “additional” evidence.

Secondly, the Court considers that the assessment of a design's individual character must be made by a one-to-one comparison with one specific earlier design of the whole set of earlier designs made available to the public, and not in relation to a combination of individual elements from several earlier designs. An older design must therefore have a “compact” or “complete” character and cannot be the result of a combination of different products or designs.

Conclusion and key takeaways

Unless you are in for a cold shower, it is vital for applicants seeking the invalidity of a RCD (i) to invoke all possible earlier designs at the start of the invalidation proceedings and (ii) to indicate the earlier designs individually and not as a set of earlier designs or as a combination of individual elements from several earlier designs.



[1] Based upon article 25(1)(b) j. articles 4 to 9 of Regulation 6/2002.

[2] Joined Cases C‑361/15 P and C‑405/15 P of 21 September 2017, where the CJEU held that “a Community design cannot be regarded as being new […] if an identical design has been made available to the public before the dates specified […], even if that earlier design was intended to be incorporated into a different product or to be applied to a different product.”

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