JUDGMENT OF THE EUROPEAN GENERAL COURT (Second Chamber) in Luxembourg of 22 June 2010

on Community design – Invalidity proceedings – Registered Community design representing communications equipment – Earlier international design – Ground for invalidity – No individual character – No different overall impression – Informed user – Degree of freedom of the designer – Evidence that the earlier design was made available to the public – Article 4(1), Article 6(1)(b) and (2), Article 7(1) and Article 25(1)(b) of Regulation (EC) No 6/2002

In Case T‑153/08 an Action was brought against the decision of the Third Board of Appeal of OHIM of 11 February 2008 (Case R 1437/2006-3) relating to invalidity proceedings between a European and a Chinese company. The Court decided inter aliae that according to Article 6(1)(b) of Regulation No 6/2002, a registered Community design is to be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing the application for registration or, if a priority is claimed, the date of priority. The Cort decided further that article 7(1) of Regulation No 6/2002 states that a design is to be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Article 6(1)(b) of Regulation No 6/2002, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union.

In the present case, it had to be determined whether it is apparent from the evidence presented to OHIM that the design had been made available to the public before the date of priority claimed by the applicant for the contested design. In that regard, it is apparent from the extract from the specialised Spanish magazine El Instalador de Telecomunicación, which was submitted by the intervener to the Invalidity Division, that the conference unit called ‘Concentus’, the external appearance of which corresponds to that of the design was presented to the public at the Matelec trade fair which took place in Madrid in 2000. The other advertisements and press cuttings submitted by the intervener to the Invalidity Division refer to a conference unit bearing the same name and include photographs which, although they are taken from different angles and with different levels of detail, correspond to the conference unit reproduced in the extract from the magazine El Instalador de Telecomunicación. In those circumstances, it should be considered that the intervener established before OHIM that the design had been made available from 2000 at a trade fair and in the specialised press,and that the circles specialised in the conference units sector, operating in the European Union, follow the trade fairs and specialised reviews of that sector in the normal course of business.

Accordingly, it should be concluded that the intervener provided proof to OHIM that the design had been made available to the public before the date of priority claimed for the contested design. Accordingly, the design could be taken into consideration by the Board of Appeal and the present complaint must therefore be rejected.

In equating the design to the international design the Court decided inter aliae:

Since Article 6(1) of Regulation No 6/2002 refers to a difference between the overall impressions produced by the designs at issue, the individual character of a Community design cannot be examined in the light of specific features of various earlier designs. Therefore, a comparison should be made between, on the one hand, the overall impression produced by the contested Community design and, on the other, the overall impression produced by each of the earlier designs legitimately relied on by the party seeking a declaration of invalidity. The obligation to make a comparison between the overall impressions produced by the designs at issue does not preclude the possibility of taking into consideration, as representations of one and the same earlier design, features which were made available to the public in different ways, in particular, first, by the publication of a registration and, second, by the presentation to the public of a product incorporating the registered design. The purpose of registering a design is to obtain an exclusive right in particular to make and market the product incorporating it, which means that the representations in the application for registration are, as a general rule, closely related to the appearance of the product placed on the market.

In those circumstances, it should be ascertained whether, in the present case, the international design and the design as relied on by the intervener before OHIM, are actually representations of one and the same earlier design. In that regard, an examination of the different views, submitted to OHIM, of the international design, on the one hand, and of the earlier design on the other, does not reveal any features suggesting that the two designs differ in respect of the appearance of the product represented. Although it is true, in this context, that the representations of the international design do not include a view of the device with its cover raised and that the different views of the earlier design generally present the device in that position, the fact remains that the presence of a hinged cover – which therefore can be raised – is apparent from views 1.1 and 1.6 of the international design. Therefore, although the earlier design includes supplementary features by comparison with the international design, in respect of the inside of the cover and the upper surface of the body of the device, which is under the cover, it comprises all the aspects of the appearance of the international design.

In addition, the applicant merely challenges the evidence that the international design and the earlier design are identical, in general terms, without presenting either arguments relating to the specific characteristics differentiating them, or other facts which suggest that these are not actually two representations of one and the same design. In those circumstances, the conclusion must be that the Board of Appeal was entitled to find that the international design and the earlier design were different representations of one and the same earlier design (‘the earlier design’). Consequently, the present complaint must be rejected and, accordingly, the first plea in law must be rejected in its entirety.

The Court held further that according to Article 4(1) of Regulation No 6/2002, a design is to be protected by a Community design to the extent that it is new and has individual character. As has already been recalled, it is apparent from Article 6(1)(b) of Regulation No 6/2002 that a registered Community design is to be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing the application for registration or, if a priority is claimed, the date of priority. Article 6(2) of Regulation No 6/2002 also states that, in assessing that individual character, the degree of freedom of the designer in developing the design must be taken into consideration. Finally it is apparent from recital 14 in the preamble to Regulation No 6/2002 that, when assessing whether a design has individual character, account should be taken of the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs. In the present case, as is apparent from the examination of the first plea in law, the earlier design was made available to the public before 22 April 2004, the date of priority claimed for the contested design. In those circumstances, it must be examined whether, from the point of view of the informed user and taking account of the degree of freedom of the designer of a conference unit, the overall impression produced by the contested design differs from that produced by the earlier design.

With regard to the interpretation of the concept of informed user, the status of ‘user’ implies that the person concerned uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended. The qualifier ‘informed’ suggests in addition that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.

However, contrary to what the applicant claims, that factor does not imply that the informed user is able to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product’s technical function from those which are arbitrary. In the present case, the Board of Appeal found, that the informed user might be ‘anyone who regularly attends conferences or formal meetings at which the various participants have a conference unit with a microphone on the table in front of them’. That definition corresponds to the interpretation of the concept of informed user set out above. A conference or meeting participant uses a conference unit in accordance with its purpose, which is to facilitate, by virtue of the transmission of communications and the associated functions, such as voting or the identification of persons, the exchange of views and information between the participants. In the same way, due to his regular participation in conferences or meetings, the informed user knows the various models of conference units and the features which they normally have. Furthermore, to the extent that the user must familiarise himself with the different functions and the interface of a conference unit so that it can fulfil its function, he will show a relatively high degree of attention when he is faced with the products concerned.

In view of the degree of freedom of the designer the Court decided with regard to the first factor, it is admittedly true that, in order to fulfil its essential function, a conference unit must have, at the very least, a speaker and a microphone, directed in such a way that the user can hear the sound reproduced by the speaker and his speech can be captured by the microphone. Similarly, buttons which are accessible to the user are necessary, in particular, in order to turn the microphone on and to regulate the volume of the speaker. Furthermore, to the extent that conference units also have associated functions, features such as voting buttons, the screen and the card slot may also prove necessary from a functional point of view.

However, as OHIM and the intervener have contended, those restrictions concern the presence of certain features in the conference unit, but do not have a significant impact on their configuration and, therefore, on the form and general appearance of the conference unit itself. In particular, it does not seem that a hinged element would be necessary in order to ensure any of the device’s functionality. That conclusion is borne out by the design corpus, as submitted by the intervener to OHIM, which shows conference units of varying shapes and configurations that differ perceptibly from those used in the contested design. Therefore, depending on the model, the microphone is placed on a stem, or not, on the left, or the right or in the middle of the body of the device. In the same way, if the card slot is normally placed on the right, it is generally not integrated into the speaker of the conference unit but in the actual body of the device. In addition, the presence of any hinged element is the exception rather than the rule. By contrast, the applicant did not produce any evidence substantiating its assertion that technical or functional requirements considerably restrict the degree of freedom of the designer of a conference unit. In those circumstances, that assertion cannot be accepted.

With regard to the alleged general trend favouring small, flat, rectangular devices, often including hinged elements, it should be observed that the question whether a design does or does not follow a general design trend is relevant, at the most, in relation to the aesthetic perception of the design concerned and can therefore, possibly, have an influence on the commercial success of the product in which the design is incorporated. By contrast, it is not relevant in the examination of the individual character of the design concerned, which consists in verifying whether the overall impression produced by it differs from the overall impressions produced by the designs made available earlier, irrespective of the aesthetic or commercial considerations. Moreover, the applicant has not substantiated the existence of the trend which it invokes, since it did not present examples of conference units with the characteristics that it highlights. In addition, the plausibility of its assertion is called in question by the design corpus submitted by the intervener to OHIM. The material communicated shows conference units of various shapes, rectangular, triangular or round, of various sizes, most of which are not fitted with a hinged speaker or any other hinged element.

The applicant mentions further, in that context, laptops and mobile phones with hinged screens, and flat‑screen televisions. However, since the assessment of the individual character of a design must take into consideration the nature of the product in which it is incorporated, those examples are not relevant.A hinged screen allows the size of the device to be reduced, and size is an essential characteristic in the case of laptops and mobile phones. Similarly, a flat screen allows the depth of a television set to be considerably reduced and, therefore, makes it easier to position it. By contrast, a conference unit is generally not designed to be portable and the choice of a flat form does not have significant consequences with regard to the space necessary for its installation. Therefore, it does not seem that a conference unit would be subject to the same limitations as the devices referred to by the applicant. Having regard to the above, it must be concluded that the Board of Appeal did not err in finding that the degree of freedom of the designer of a conference unit was relatively wide.

The Court decided further on the comparison of the overall impressions produced by the two designs at issue, it must be considered that the overall impression produced by the contested design is determined by the following features:
–        a rectangular body, the upper surface of which slopes towards the user;
–        a hinged rectangular speaker covering a large part of the body’s upper surface and incorporating a card slot;
–        a panel covered by the hinged speaker when it is folded down, with a number of buttons and screens;
–        a hinged microphone on a stem, placed on the left side.
In addition, a stylised decoration is situated on the lid of the speaker. However, although that feature plays a part in the overall impression produced by the contested design, its role is less important than that of the features listed above. As the Board of Appeal noted in the contested decision, when the conference unit is in use, the speaker is raised in order to be able to fulfil its function. Consequently, the decoration at issue is on the back of the device and therefore outside the user’s immediate field of vision, which means that it will not have any major impact on the user’s perception. The user may, at most, perceive the same decoration on the backs of the devices of the other participants facing him. However, such a perception will generally take place at a distance, which means that the detail of the configuration of the lid of the speaker will be less visible. It should also be observed that, contrary to what the applicant claims, taking into account the reduced visibility of the lid of the speaker is not contrary to the rule that the overall impression produced by the contested design on the informed user should be assessed. That impression must necessarily be determined also in the light of the manner in which the product at issue is used, in particular on the basis of the handling to which it is normally subject on that occasion.

The other features highlighted by the applicant are not relevant. First, the slightly asymmetrical aspect of the position of the hinged speaker is considerably less striking than the presence of such a speaker in itself. Furthermore, even if it were accepted that the informed user perceives the asymmetry of the conference unit as a significant characteristic, this will be so, most of all, due to the lateral and therefore asymmetric position of the stem of the microphone.

Second, the form of the microphone head and the base of the microphone stem are minor elements of the appearance of a conference unit which will not attract the attention of the informed user, as the Board of Appeal noted in the contested decision.

With regard to the overall impression produced by the earlier design, it is essentially determined by the features listed above. The body of the unit is basically rectangular, and its upper surface slopes towards the user and is fitted with a hinged speaker. The speaker has the same rectangular form and also incorporates a card slot which has the same external appearance. The panel situated under the speaker corresponds to the panel in the same position in the contested design, in respect of both the shape of its different elements and their configuration. Like the contested design, the earlier design is fitted with a microphone on a stem, placed on the left side. As the Board of Appeal stated in the contested decision, the only difference between the two designs at issue which could have some relevance concerns the lid of the hinged speaker since, in the earlier design, it does not have the stylised decoration present in the contested design. However, first, that difference is not particularly pronounced, since the covers of both designs are embossed and the decoration of the contested design is highly stylised. Second, as noted above, the importance of that differentiating factor is reduced because of the reduced visibility of the conference unit’s cover once the device is in use. Therefore, it should be considered that the stylised decoration on the contested design cannot offset the similarities found and is not, consequently, sufficient to confer individual character on the design.

The other differences relied on by the applicant, in respect of the shape of the ventilation holes in the speaker, and the shape of the microphone head, the base of the microphone stem, the sides of the conference unit’s body and its rear flank, are immaterial in the overall impression produced by the two designs at issue. Those differences are not sufficiently pronounced to distinguish the two devices in the perception of the informed user, especially since they concern for the most part features of a conference unit which do not attract the attention of such a user. In view of the above, it must be concluded that the contested design and the earlier design produce the same overall impression on the informed user. Therefore, the Board of Appeal was correct to reach that same finding in paragraph 20 of the contested decision and to conclude that the contested design lacked individual character within the meaning of Article 6 of Regulation No 6/2002.


Community design and prior national figurative mark

In Case T‑148/08 the European General Court (Fifth Chamber) decided by judgment of 12 May 2010 on grounds for invalidity that it should be borne in mind that the proprietor of an earlier mark – whether a Community mark or a mark registered in a Member State – has the right to prevent the use of a subsequent Community design both where use is made in that design of a sign which is identical to the earlier mark and the goods or services covered by the design are identical to those covered by the earlier mark, and where use is made in the Community design of a sign bearing such similarity to the earlier mark that, in view also of the fact that the goods or services covered by the mark are identical or similar to those covered by the design, there is a likelihood of confusion on the part of the public (Article 5(1)(a) and (b) of First Directive 89/104; Paragraph 14(2)(1) and (2) of the german trademark act; and Article 9(1)(a) and (b) of Regulation No 40/94 (now Article 9(1)(a) and (b) of Regulation No 207/2009)).

 Given that the proprietor of an earlier mark – whether a Community mark or a mark registered in a Member State – has the right to prevent the use of a subsequent Community design in which use is made of a sign which is either identical to the earlier mark or similar to it, it is inconceivable that, in adopting Article 25(1)(e) of Regulation No 6/2002, the Community legislature intended to allow such a proprietor to submit an application for a declaration of invalidity of the design only where use was made in that design of a sign identical to the earlier mark, and not to allow such an application to be submitted where use was made in the design of a sign so similar that there would be a likelihood of confusion on the part of the relevant public. Moreover, the proprietor of a mark – whether a Community mark or a mark registered in a Member State – cannot rely on the provisions referred to above to prevent the use of a Community design which has been registered earlier and in which use is made of a sign identical or similar to the mark, since the proprietor of the Community design is able to defend itself against such a prohibition by applying for a declaration of invalidity in respect of the subsequent mark in question, where necessary, by way of counterclaim (see Article 4(4)(c)(iv) of First Directive 89/104; Paragraphs 13(2)(6) and 51(1) of the german german trademark act; and Articles 52(2)(d), 92(d) and 96(1) of Regulation No 40/94 (now Articles 53(2)(d), 96(d) and 100(1) of Regulation No 207/2009)).

If the proprietor of an earlier mark – whether a Community mark or a mark registered in a Member State – had the right to submit an application for a declaration of invalidity in respect of a subsequent Community design only where use was made in that design of a sign identical to its mark, and not where use was made of a sign similar to its mark, that proprietor would not be able to defend itself if the proprietor of the subsequent design in which use was made of a sign similar to the mark were ever to attempt to prevent use of the earlier mark on the basis of Articles 10(1) and 19(1) of Regulation No 6/2002. It can be inferred, however, from recital 31 in the preamble to Regulation No 6/2002, which states that that regulation ‘does not preclude the application to designs protected by Community designs of the … laws … relating to … trade marks’, that the rights conferred on a proprietor by a Community design do not in any way affect the rights which a proprietor of an earlier mark may have acquired by virtue of that mark. It follows from all the above considerations that the Board of Appeal did not err in law by interpreting Article 25(1)(e) of Regulation No 6/2002 as meaning that the proprietor of a distinctive sign may rely on that provision for the purposes of applying for a declaration of invalidity in respect of a subsequent Community design, where use is made in that design of a sign similar to its own. It follows that the first plea must be rejected as unfounded.

The Court held further that Community law, or the national legislation governing the earlier sign relied on in support of an application for a declaration of invalidity on the basis of that provision, must confer ‘on the right holder of the sign the right to prohibit’ the use of its sign in a subsequent design. In the case of an earlier sign in the form of a German mark, governed by the german trademark act this act confers on the proprietor of such a mark the right to prohibit the use of any sign in respect of which – because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign – there exists a likelihood of confusion on the part of the public. However, under Paragraph 25(1) of the german trademark act, the proprietor of an earlier mark may not exercise its rights under Paragraph 14, in particular, against third parties if, during the five years preceding the assertion of those rights, the trade mark has not been used in accordance with Paragraph 26 for the goods or services on which the proprietor relies for the purposes of exercising its rights, where, by that date, at least five years have passed since the trade mark was registered. In including that provision in the german trademark act, the German legislature used a power conferred on it under Article 11(2) of First Directive 89/104. Paragraph 25(2) of the german trademark act expressly leaves it to the party against whom the rights of the proprietor of an earlier mark are being invoked to require that the proprietor provide proof of genuine use of its mark. In the absence of such a request, that proof need not be adduced. It is apparent from those provisions that an earlier German mark, relied upon in support of the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002, has been registered for at least five years before the submission of the application for a declaration of invalidity of a Community design, the proprietor of that mark must, at the request of the proprietor of the Community design, adduce proof that it has made genuine use of its mark during the five years preceding submission of that application. Failing the production of such proof, the proprietor of the earlier German mark has no right, under the German legislation governing its sign, to prohibit its use in the Community design, which means that the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002 cannot apply.

Since no specific provision is made in Regulation No 6/2002 concerning the procedure for requesting proof of genuine use of the earlier sign, to be followed by the proprietor of the Community design in respect of which an application for a declaration of invalidity has been brought on the basis of the earlier sign, it may be inferred that that request must be submitted to OHIM expressly and in due time (see, by analogy, Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 38; Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraph 24; and Case T‑303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita) [2005] ECR II‑1917, paragraph 77). As a rule, the request must be submitted within the period of time granted by the Cancellation Division to the proprietor of the Community design at issue for submitting its observations in response to the application for a declaration that the design is invalid (see, to that effect and by analogy, FLEXI AIR, paragraphs 25 to 28). On the other hand, a request for proof of genuine use of the earlier sign relied on in support of an application for a declaration that a Community design is invalid cannot be made for the first time before the Board of Appeal. It is settled case-law that the request for proof of genuine use of the earlier mark relied on in support of an opposition to the registration of a Community mark, provided for under Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009), cannot be made for the first time before the Board of Appeal (see, to that effect, Case T‑364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraph 41, and Case T‑425/03 AMS v OHIM – American Medical Systems (AMS Advanced Medical Services) [2007] ECR II‑4265, paragraph 114).

According to that case-law, the request for proof of genuine use of the earlier mark introduces in the proceedings before the Opposition Division the specific preliminary issue of genuine use of the earlier mark and, in that way, changes the content of the opposition. It is for the Opposition Division to rule first on the opposition, as defined by the various procedural acts and requests of the parties, including, where appropriate, a request for proof of genuine use of the earlier mark. The Board of Appeal is competent solely to rule on appeals against decisions of the Opposition Divisions, not to give a ruling itself at first instance on a new opposition. Otherwise, the Board of Appeal would have to examine a very specific request, linked to new legal and factual considerations and arising outside the framework of the opposition proceedings, as submitted before and dealt with by the Opposition Division (PAM PLUVIAL,mentioned 69 above, and AMS Advanced Medical Services, paragraph above).

Those considerations also hold true, by analogy, where  the proprietor of a Community design, in respect of which an application for a declaration of invalidity has been brought on the basis of the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002, has the right to request that the proprietor of the earlier sign, relied on in support of the application, provide proof of genuine use of its sign. In this context, too, it is unacceptable that the Board of Appeal could be put in the position of having to rule on a dispute which is different from the dispute brought before the Cancellation Division, that is to say, a dispute the scope of which has been extended through the introduction of the preliminary issue of genuine use of the earlier sign, relied on in support of the application for a declaration of invalidity.

It should be pointed out in that regard that the examination of the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002 must be based on the perception by the relevant public of the distinctive sign relied on in support of that ground, as well as on the overall impression which the sign leaves in the mind of the public. A three-dimensional mark, however, is not necessarily perceived by the relevant public in the same way as a figurative mark. In the case of a three-dimensional mark, the relevant public perceives a tangible object which it can examine from a number of angles, whereas in the case of a figurative mark, the public sees only an image. The possibility cannot be ruled out, of course, that where two three-dimensional objects are similar, a comparison of one of those objects with an image of the other might also lead to a finding that they are similar. The fact nevertheless remains that the examination of the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002 involves a comparison between the Community design at issue and the distinctive sign relied on in support of that ground.

 On the other hand, a similarity between the design at issue and the sign relied on in support of the application for a declaration of invalidity cannot simply be presumed merely because that design is similar to another sign, even though that other sign is similar to the sign relied on in support of the application.Thus, by that line of argument, OHIM is in effect asking the Court itself to be the first to undertake a comparison of the design in dispute with the earlier mark, since no such comparison was made either by the Cancellation Division or by the Board of Appeal. However, it is not for this Court to rule on issues the merits of which were not examined by OHIM (see Case T‑163/98 Procter & Gamble v OHIM (BABY-DRY) [1999] ECR II‑2383, paragraph 51).


The General Court delivers its first judgment on the Community design

It annulled OHIM’s decision to dismiss the application for a declaration of invalidity against PepsiCo’s design for the shape of a ‘rapper’

The Community design was created by the Community (Council) Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), which defines the Community design as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.’ Designs which are novel and have individual character may be protected. The proprietor of a design may prevent any third party not having his consent from using it. The scope of that protection covers any design which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design must be taken into consideration. A Community design may be declared invalid if, among other reasons, it is in conflict with a prior design.

On 9 September 2003, PepsiCo filed an application for registration of a Community design at OHIM, the Community trade mark office which is also responsible for Community designs, for the shape of a ‘rapper’ (a small, flat or slightly curved disc on which colour images can be printed). The Community design was registered for ‘promotional item[s] for games’. In February 2004, Grupo Promer Mon Graphic, a Spanish marketing and promotion company, filed an application for a declaration of invalidity against that design. In support of that application, the company relied on the existence of a prior right: a Community design, filed on 17 July 2003, for ‘metal plate[s] for games’. OHIM dismissed the application for a declaration of invalidity, holding that the goods covered by the designs at issue concerned a particular category of promotional items, namely ‘rappers’ or ‘tazos’ (the Spanish name for ‘rappers’), and that, therefore, the freedom of the designer of those promotional items was severely restricted. Accordingly, the Board of Appeal concluded that the difference in the profile of the designs at issue was sufficient to conclude that they produced a different overall impression on the informed user. Grupo Promer Mon Graphic claimed that the Court should annul that decision.

The Court considers that a Community design is in conflict with a prior design when, taking into consideration the freedom of the designer in developing the Community design, that design does not produce on the informed user a different overall impression from that produced by the prior design relied on. In this case, the Court finds that OHIM properly found that the product in question belonged, within the broad category of promotional items for games, to the particular category of game pieces known as ‘pogs’, ‘rappers’ or ‘tazos’.

Similarly, OHIM was correct to find that the informed user could be a child in the approximate age range of 5 to 10 or a marketing manager in a company that makes goods which are promoted by giving away ‘pogs’, ‘rappers’ or ‘tazos’, the important point being that both those categories of person are familiar with the phenomenon of ‘rappers’.
OHIM was also correct to find that the designer’s freedom was severely restricted since he had to incorporate the common features of ‘rappers’ in his design. Moreover, the designer’s freedom was also limited in so far as those items had to be inexpensive, safe for children and fit to be added to the products which they promote.
By contrast, OHIM erred in finding that the two designs produce a different overall impression on the informed user. The Court considers that some of the similarities between the two designs were not the result of a restriction of the designer’s freedom. In particular, the central part did not have to be delineated by a circle; this could also have been done by a triangle, a hexagon or an oval. In addition, the designs are similar in that the rounded edge of the disc is raised in relation to the intermediate area of the disc between the edge and the raised central area, and the respective dimensions of the raised central part and the intermediate area of the disc, between the edge and the raised central part, are also similar.

Consequently, the Court annulled OHIM’s decision to dismiss the application for a declaration of invalidity.

Source: General Court of the European Union
Press Release No 31/10
Luxembourg, 18 March 2010



German Copyright Law

Press Release of the German Ministry of Justice, Berlin:

German Bundestag and Bundesrat adopted copyright law reform

On 5 July 2007 the German Bundestag passed the Second Act Governing Copyright in the Information Society. The Act constitutes the so-called “Second Basket” of copyright law reform. This draft bill  was approved on 21 September 2007 by  the German Bundesrat and shall enter into force on 1 January 2008.
Building upon the first reform enacted in 2003, the Second Basket will further adapt German copyright law to the “digital age” and new technological developments. The Act intends an appropriate balance between copyright holders’ interests in the safeguarding and exploitation of their intellectual property and the interests of the equipment industry, consumers and science in using the works of right holders.

Private copying of non-copy-protected material in any form will continue to be permitted. However, the new law contains a clarification: Up to now, it has been prohibited to copy materials that are produced in a manifestly unlawful manner. This prohibition will now be explicitly extended to material that is unlawfully offered on the Internet for purposes of downloading. In this way, the law will more clearly cover the use of illegal file-sharing networks. Thus the following will apply in the future: if it is obvious to the user of a peer-to-peer file-sharing network that a particular film or music recording is being offered unlawfully on the Internet – for example, because it is clear that no private Internet user owns the rights to offer a current feature film on the Internet – then the private copying of that material is not permitted.

The circumvention of copy protection will continue to be prohibited. This is binding under European Union law. Private copying is not permitted where copy protection measures have been implemented. Rights holders may protect their intellectual property themselves by employing such technological measures, and the legislator may not take this form of self-protection away from them. There is no “right of private copying” at the expense of rights holders. Neither may such a right be derived from basic rights: private copying does not create access to new information but rather merely duplicates information that is already known.

Copyright holders receive a lump-sum payment as compensation for permitted private copying. This lump-sum payment derives from a levy imposed on equipment and storage media and is distributed to copyright holders by collecting societies. Thus private copying and the levy system are inextricably linked, and this will continue to be the case. However, the Second Basket changes the method of determining the amount of remuneration. Up to now, remuneration rates have been stipulated by law in an annex to the Copyright Act. This list was last amended in 1985 and is out of date. This has led to numerous legal disputes – which continue to occupy the courts today – regarding the extent to which new equipment is subject to the levy system. Simply updating the remuneration rates by law would not adequately solve the problem; due to the rapid pace of technological developments in the digital age, the list would have to be revised within a brief period of time. Therefore, pursuant to the new law, remuneration rates will be negotiated between the involved parties themselves, i.e., between collecting societies and associations of equipment and storage media producers. The new law provides for expedited conciliation and decision-making procedures in the case of disputes. This market-oriented model is designed to facilitate a more flexible response to new technological developments and to allow agreements on remuneration to be reached more quickly. All types of equipment and storage media that are used to make permissible reproductions are  subject to the levy system. Equipment in which a memory chip has been installed which could theoretically be used for making digital reproductions, but which is actually used for completely different functions, is not subject to the levy system.

The act establishes a binding framework by which the involved parties are to determine the amount of remuneration, namely: the amount is to be determined according to the actual extent to which the equipment and storage media in question are typically used for making permissible reproductions. This information is to be ascertained through empirical market studies. To the extent that private copies can no longer be made no lump-sum payments will be provided. Consumers will therefore not suffer a double burden. At the same time, the interests of equipment and storage media producers have been taken into account. While the originally proposed maximum levy amount (5% of the sales price of equipment) was eliminated during deliberations in the Bundestag, the economic interests of equipment producers were nonetheless taken sufficiently into consideration. It remains the case that the legitimate interests of producers may not be prejudiced unreasonably and that the amount of the levy must be economically appropriate in relation to the price level of the equipment or storage media.

The act allows public libraries, museums and archives to provide access to their collections via electronic reading stations. This will enable these institutions to keep up with developments in new media while simultaneously enhancing the media skills of the general public. Another innovation is that libraries will be permitted by law to make and send (e.g., via e-mail) copies of copyrighted works upon request. This will strengthen Germany’s position as a location for science and research. These new opportunities will be subject to certain limitations in order to safeguard the legitimate interests of publishers. For example, the number of reproductions of a particular work that may be shown simultaneously at reading stations will, in principle, be linked to the number of copies in a particular institution’s collection. This amount may be exceeded only during peak use periods. Libraries may send copies via e-mail only if the publisher of a particular work does not itself offer the work online in a clearly apparent manner and on reasonable terms. These restrictions are necessary to protect the intellectual property of publishers and authors, because legislators may not establish regulations that make it impossible for publishers to sell their products on the market.

Up to now, it was not possible to conclude contracts regarding the exploitation of copyrighted works through a form of use that did not even exist at the time the contract was concluded – for example, regarding use via the Internet before it existed. If users wished to exploit works in this new way, they had to put significant effort into locating the authors or their heirs and reaching an agreement regarding the exploitation of such works. Under the draft bill, copyright holders will also be able to dispose contractually of their rights with respect to future use. This is in the interest not only of users and consumers but also of the copyright holders themselves. Their works will remain available for future generations in newly developed media formats. Copyright holders will also be adequately protected by the new regulations. They will receive a separate, reasonable remuneration when their works are exploited through a new form of use. In addition, users must notify copyright holders prior to engaging in this new form of use. Thereafter, copyright holders have a period of three months in which they may revoke this right. A parallel provision enables already existing, archived works to be exploited through new forms of use. The opening of archives is in the public interest, because this ensures that works from the recent past may continue to be used in new media formats and thereby remain a part of cultural life.

The Act also takes in account the distinctive characteristics of film. Typically, a large number of persons are involved in making a film. For this reason, up to now the statutory presumption is that, in cases of doubt, the film producer acquires the right to exploit the film through all known forms of use. This presumption will now be extended to cover unknown forms of use. In contrast to other media formats, however, the authors of a film have no right of revocation. This provides producers with sufficient security in the acquisition of rights and ensures that German films will retain their international presence in the future.