Design Case Law of the Court of Justice

Cecilia Wikström Chair: Théophile Margellos Dr. Catherine Jenewein Former Legal Secretary to Judge Azizi, General Court, Court of Justice of the European Union; Patent Lawyer, European Patent Office Prof. Charles Gielen NautaDutilh N.V. University of Groningen Dr. iur. Henning Hartwig Bardehle Pagenberg Cecilia Wikström Chair: Théophile Margellos Member of European Parliament Chairperson OHIM Boards of Appeal

Jurisprudence on Design Court of Justice of the EU (CJ and GC) an Overview Dr. Catherine Jenewein Former Legal Secretary to Judge Azizi General Court, Court of Justice of the EU Patent Lawyer, European Patent Office

Court of Justice 2 preliminary rulings 2 judgments on appeal Judgments of the CJ & GC on designs Court of Justice 2 preliminary rulings 2 judgments on appeal General Court 9 judgments so far & more coming up

Jurisprudence of the CJ upon appeal from the GC 5

C- 281/10 P PepsiCo/Grupo Promer Mon Graphic, 20. 10 C- 281/10 P PepsiCo/Grupo Promer Mon Graphic, 20.10.2011 (circular promotional item/metal rappers) Contested RCD (Pepsico) (promotional items for games) Earlier RCD (Grupo Promer) (metal plates for games) Same overall impression on informed user

C- 281/10 P Informed user: familiar with the phenomenon of rappers → no difference whether child from 5-10 years old or marketing manager in a company that makes goods which are promoted by giving away “pogs”, “rappers” or “tazos” Restricted designer's freedom Same overall impression (similarities of only minor importance)

On the concept of the informed user C-281/01 P Between average consumer applicable in trade mark matters no specific knowledge in general no direct comparison between trademarks in conflict and sectoral expert with detailed technical expertise → particularly observant user because of his personal experience or his extensive knowledge of the sector in question

Joint appeals C-101/11 P and C-102/11 P Neumann and Galdeano del Sel/Baena Grup (seated figure), 18.10.2012 Contested RCD Earlier CTM Different overall impression on informed user

C-101/11 P and C-102/11 P Informed user: young people purchasing t-shirts, caps, ... Significant freedom of the designer of silhouettes Different overall impression on informed user (facial expression + position)

Preliminary rulings of the CJ

C-488/10 Celaya Emparanzoy Galdos Internacional SA v Proyectos Integrales de Balizamiento SL 16 February 2012 Opinion of AG Mengozzi, 8 November 2011

C-488/10 Interpretation of Article 19(1) CDR “A registered CD shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it [...]” CJ: “any third party”: includes the third party holder of a later RCD. Answer to first question unconnected with intention or conduct of the third party, holder of a later Community design.

C-168/09 Flos SpA/Semeraro Casa e Famiglia SpA, 27.1.2011 Interpretation of Directive 98/71/EC on the legal protection of designs - Article 17 Obligation concerning cumulation of design protection with copyright protection National law precluding copyright protection or rendering it unenforceable for a certain period in the case of designs which entered the public domain before the entry into force of the law = PRECLUDED Principle of the protection of legitimate expectations

C-32/08 FEIA/Cul de Sac Espacio Creativo e.a., 2 July 2009 Opinion of AG Mengozzi 8 November 2011 On the question of the right to the Community design (unregistered) in the case of a commissioned work Article 14 CDR – Right to the CD Question of applicability of Article 14(3) CDR to commissioned designs Interpretation of Article 14(1) CDR

C-32/08 Answers from the CJ: Article 14(3) CDR does not apply to commissioned CDs. Right of the CD vests in the designer, unless it has been assigned by way of contract to his successor in title.

Jurisprudence of the GC

Same overall impression T-153/08 Shenzhen Taiden/OHIM – Bosch Security Systems (communications equipment), 22 June 2010 Contested RCD Earlier International Designs Same overall impression

Earlier trademark (German) T-148/08 Beifa Group/OHIM – Schwan- Stabilo Schwanhäußer (instruments for writing), 12.5.2010 Earlier trademark (German) Contested RCD BOA decision annuled New appeal before GC: T- 608/11

T-68/10 Sphere Time v OHIM – Punch (watch attached to a lanyard), 14 June 2011 Contested RCD Earlier RCD Same overall impression

Same overall impression T-10/08 Kwang Yang Motor/OHIM – Honda Giken Kogyo (internal combustion engine with the vent on the top), 9 September 2011 Contested RCD Earlier design (USA) Same overall impression

Same overall impression T-11/08 Kwang Yang Motor/OHIM – Honda Giken Kogyo (internal combustion engine) 9 September 2011 Same overall impression

Same overall impression T-246/10 Industrias Francisco Ivars v OHIM – Motive (mechanical speed reducer) 6 October 2011 Contested RCD Earlier RCD Same overall impression

Same overall impression T-83/11 and T-84/11 Antrax It/OHIM – THC (heating radiators), 13 November 2012 Same overall impression