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It never rains, but it pours…(Brands & IP Newsnotes - issue 1)

27 September 2015

Registered designs are used to protect the appearance of products. In considering whether to allow registration, several factors come into play: what else is already out there (the ‘prior art’); who will use it (the ‘informed user’); and what ‘degree of freedom’ does the designer have in arriving at the particular design?

A recent case in the EU General Court in relation to an umbrella, Senz Technologies v OHIM - Impliva (Parapluies), serves as a useful reminder of the strength of Community designs. In seeking to invalidate the registered designs, the applicant argued the designs did not produce a different overall impression from that of an umbrella registered nearly 10 years earlier.

The Court held that Senz should have been aware of the umbrella patented in the US (n.b. in the US patents can cover designs) a decade earlier. In holding it was ‘prior art’, the Court stated that: “it would be imprudent for designers seeking to register designs in the EU not to check for the existence of prior art in one of the world’s major IP registers [namely the US Patent and Trademark office]”.

But despite the ‘prior art’, and the limited design freedom open to the designer (there are only so many ways an umbrella can look), the Senz umbrella did create a different overall impression from the earlier product. There were differences in the canopies that would be noticed by the informed user. The patented product had a flat surface at the top with curved lateral sides forming a regular octagon. The designs on the other hand had a pyramid shape on top and sides that formed an irregular octagon.

Designers should be mindful of what already exists and must carry our appropriate searches to establish ‘prior art’. But the Court will take into account technical constraints and minor differences may get the design over the line.

This article was first published in the Brands & IP newsnotes publication - issue 1.

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