Scope of prior art in design law finally clarified

The issue
has been controversial for many years: is the so-called ‘prior art’ in design
law limited to the product and the sector concerned or not? On 21 September
2017, in Joined Cases C‑361/15 and C‑405/15, the Court of Justice of the European Union (CJEU) finally
clarified the approach that should be followed when assessing the novelty and/or
the individual character of a design over earlier designs and products.

Joined Cases C‑361/15 and C‑405/15
(Easy Sanitary Solutions (ESS) v.
Nivelles) relate to the validity of a Community design (RCD) for a shower drain filed by
ESS. Nivelles had contested its validity, citing a lack of novelty and
individual character over earlier drainage systems for industrial use. ESS considered
the earlier prior art to be irrelevant, arguing i.a. that the industrial drain originates
from a different sector and, moreover, has another use than the shower drain. The
invalidity proceedings, initiated before the EUIPO, went all the way up to the
CJEU.

The CJEU held that a Community design cannot be regarded as
new if an identical design has been
made available to the public before the date of application of the Community
design (or the priority date in case of priority), regardless of the sector,
i.e. even if the earlier design had been incorporated into, or applied to, a
different product.

In its decision, the CJEU referred to Article 10(1) of Regulation No 6/2002, which ensures protection by a Community
design for ‘any design’ that does not produce a different overall impression on
the informed user. The CJEU further noted that both Article 36(6) and
Article 19(1) of Regulation No 6/2002 imply that a registered
Community design confers the exclusive right to its holder to use this design for
all types of products, not only for the product indicated in the application
for registration.

The fact that the
protection granted to a design is not limited to the product(s) into which it
is intended to be incorporated or to which it is intended to be applied, means
that the assessment of the novelty of a design must also not be limited to
those products. Otherwise, the subsequent registration of a Community design,
which would be obtained despite the earlier disclosure of an identical design
intended to be incorporated in a different product or to be applied to such
different product, would allow the holder of that subsequent registration to
prohibit the use of that same design for the product that was the subject of
the earlier disclosure. Such an outcome would be absurd.

This result is not called into question
by the rule that novelty is not destroyed when the events that are argued to
have led to a disclosure could not, in the normal course of business, reasonably
have been known to the ‘circles specialised in the sector concerned’, operating
within the European Union. Indeed, the phrase ‘circles specialised in the
sector concerned’ only appears in the context of an exception and must
therefore be interpreted restrictively. Moreover, the purpose of the exception that
certain events cannot constitute a disclosure to the public is to ensure that
events that are difficult to verify and/or occur in a third country cannot
constitute such disclosure, and not to make a distinction between different
business sectors within the European Union. This rule ánd its reference to ‘the
sector concerned’ are therefore not relevant to the determination of the scope
of the prior art.

For the purpose of assessing the individual character of the design, according
to the CJEU, the same
reasoning applies and the sector concerned is not relevant either.

Indeed,
if the sector were to be relevant for the assessment of individual character,
this would again be irreconcilable with the principle set forth in Article 10(1)
of Regulation 6/2002, according to which the scope of protection granted by a
Community design extends to ‘any design’ that fails to produce a different
overall impression on the informed user.

Moreover,
there is no reason to require the informed user of the product to be aware of
the earlier design when it is
incorporated in a product in an industry sector that differs from the relevant
sector for the contested design, or is applied to such a product. Otherwise, an
applicant for a declaration of invalidity in respect of the contested design
would have to prove not only that the earlier design had been made available to
the public, but also that the informed public of the contested design knew that
earlier design. Such a condition is not set by Regulation No 6/2002.

This decision is very important and will cause a
shift in the case law of the Benelux where, following the famous
‘Kinderkapperstoel’ decision of the Dutch Supreme
Court¹, the opposite view has been predominant. However, registrants
of design rights should not feel disheartened, since the CJEU’s decision also
strengthens their possibilities to use the protection of the Community design
against products different from their own. The knife cuts both ways, but a broad scope of protection is certainly
nice to have.

¹Decision of 10 March 1995, confirming novelty for a ‘child’s
coiffure chair’ over an identical toy car.