1. Design Case Law
of the Court of Justice

2. 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

3. 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

4. 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

5. Jurisprudence of the CJ upon appeal from the GC5

6. C- 281/10 P PepsiCo/Grupo Promer Mon Graphic, 20. 10
C- 281/10 P PepsiCo/Grupo Promer Mon Graphic, (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

7. 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)

8. 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

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

10. 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)

11. Preliminary rulings of the CJ

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

13. 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.

14. 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

15. 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

16. 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.

17. Jurisprudence of the GC

18. 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

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

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

21. 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

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

23. 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

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