Application for Declaration of Invalidity Rejected at EUIPO

The European Union Intellectual Property Office (EUIPO) rejected an Application for Declaration of Invalidity filed against the Registered Community Design of our Client. Our Client, Classik International, is a Partnership Firm based in Nashik, Maharashtra, and primarily deals in pet apparel, clothes, and other pet products. They had a design for “Clothing of Pets” registered in the EUIPO since August 6, 2018. The applicant of the Invalidity Application, MPS Holding BV, a company based in the Netherland contended that our client’s design lacked Novelty and Individual Character. They demanded that our Client’s design registration be declared invalid for infringing their prior registered designs. The Invalidity Division of the EUIPO not only rejected the application but also awarded a cost of EUR 400 to our Client.

EUIPOMPS Holding BV, the Applicant had been involved in the design, manufacture, and production of apparel for animals since 2007 and manufactured “Medical Pet Shirts”, a full-body bandage to protect an animal’s wounds. They had two Registered Community Designs, namely, “Medical Foreleg Sleeves” and “Animal Clothing”. The Applicant contested that the contested design of our Client had the same characteristics as that of their previously registered designs. They argued that the contested design lacked novelty as it depicted each and every element constituting the prior designs of the Applicant concerning the features, shape, composition, and colors. They also contended that the contested design lacked individual character due to the extensive designer’s freedom and the relatively low level of attention of the informed user in the concerned sector, as a result of which insignificant differences between the designs are likely to go unnoticed.

Our Client, the Holder of the contested design responded to the Applicant’s allegations by arguing that the designs were not identical and differed in their overall impression and particular appearance. They also contended that the prior designs could neither claim protection on a generically shaped product, nor could protection be claimed for features exclusively dictated by their technical functions. They also submitted a graphical comparison of the designs and pointed out the unique aspects of the shape, composition, colors, and features of the contested design. Furthermore, representation was also made stating that the features of the prior designs were either known even earlier than when the designs were disclosed or were merely functional in nature.

ON LACK OF NOVELTY

The EUIPO ruled out any possibility of lack of novelty based on the Applicant’s contention that several elements and features of the contested design were similar to the prior designs of the Applicant. A side-by-side comparison of the designs was done which showed that the contested design differed from each of the Applicant’s prior designs in several features. The EUIPO pointed out several visible differences between the contested design and the prior registered designs. The differences pointed out lied in the length and appearances of the sleeves, necklines, closure on the upper back of the apparel, rear opening, the cut around the animal’s tail, etc.

As a result of this assessment, the EUIPO found that the contested design was not identical to the prior designs as contested by the Applicant. Hence, the Applicant’s argument that the contested design lacked novelty was rejected.

ON LACK OF INDIVIDUAL CHARACTER

To assess the individual character of the contested design, the Invalidity Division adopted a four-stage examination laid down by the EUIPO. The examination involved assessing the area of the products in which it is to be used, the degree of knowledge and level of attention of the informed user of these products, the product designer’s degree of freedom when developing the design, and the overall impressions produced on the informed user by the contested design.

The EUIPO listed down the important visual characteristics of the contested design. It held that from the standpoint of the informed user and taking into account the designer’s freedom in the contested design and the other circumstances of the case, the contested design produced a different overall impression from that of the prior designs. As a result, it was concluded that the contested design did not lack individual character.

Thus, the EUIPO held that the facts and evidence submitted by the Applicant did not support the ground for invalidity under Article 25(1)(b) of the CDR. The Application was therefore rejected and a cost of EUR 400 was awarded to our Client.

Author: Aparthiba Debray, a 5th Year student of B.A. LL.B. (Hons.) of Institute of Law (Nirma University),  an intern at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

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