European Union (EU) - Novelty & Individual Character Requirements for European Designs

Article 4 of the European Community Design Regulation provides “a design shall be protected by a Community Design to the extent that it is new and has individual character.”

Article 5 provides “a design shall be considered to be new if no identical design has been made available to the public.”

Article 6 provides “a design shall be considered to have individual character if the overall impression it produces on an informed user differs from the overall impression produced on such user by any design which has been made available to the public.”

In the case of Mafin Spa’s Design v. Leng-D’or S.A., defendant’s application for a Declaration of Invalidity ([2005] E.C.D.R. 29) brought about a consideration of the validity of a Community Design registration for designs for a shell shape for snack foods in relation to the cited prior art consisting of a Community trademark registration and six Spanish trademark applications all for shapes for food products. It was held that the allegation that the design lacked novelty was unfounded since there were slight differences between the designs and the shapes in the trademark registrations. Nevertheless, the Community Design was held invalid since it did not possess the “individual character” required by Articles 4 and 6 of the Community Design Regulation. It was held that “The slightly different bases of the designs were not sufficiently different in appearance or in importance to change the impression given by the snack as a whole, since there are no specific features which could be said to be essential. This was especially so, taking into account that the degree of freedom of the designer is not limited, no specific shape being necessary for the snack to fulfill its function”.

In another case before the Patent Court of Appeal in Sweden (Daimler Chrysler’s Swedish Design Application [2005] E.C.D.R. 15), the Court applied the EC Directive 98/71 on the Legal Protection of Designs which applies the same requirements as in the European Community Design Regulation referred to above. The Court of Appeal held that the EC Directive would be applied notwithstanding the fact that the Swedish Act had not at the time been amended to reflect the EC Directive. Applying the EC Directive, the Court found the Daimler Chrysler design for an automobile (The Mercedes C Class) to be non-registerable since the only difference in the design from the prior S Class was in the shape of the front headlights and rear taillights. The Court held that the fact that the prior design and the design for which protection was sought were owned by the same owner was not relevant and the “litmus test” was whether the design could be registered by a competitor.