The European court ruled in Case T‑525/13 which concerns the following:
On 30 October 2006, Yves Saint Laurent SAS filed an application for registration of a Community design with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
The contested design, which is intended to be applied to ‘handbags’ in Class 03-01 of the Locarno Agreement, is represented according to six views as follows:
The contested design was registered under the number 613294-0001 and published in Community Designs Bulletin
No 135/2006 of 28 November 2006.
On 3 April 2009, the applicant, H&M Hennes & Mauritz BV & Co. KG, filed with OHIM an application for a declaration of invalidity in respect of the contested design, based on Articles 4 to 9 of Regulation No 6/2002 and on Article 25(1)(c) to (f) or (g) of that regulation. In its application for a declaration of invalidity, the applicant confined itself to claiming that the contested design had no individual character within the meaning of Article 6 of that regulation.
In support of its application for a declaration of invalidity, the intervener invoked, in order to substantiate the alleged lack of individual character of the contested design, the earlier design reproduced below:
By decision of 4 November 2011, the Cancellation Division rejected that application for a declaration of invalidity.
On 25 January 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Cancellation Division.
By decision of 8 July 2013 , the Third Board of Appeal of OHIM dismissed the appeal. After finding that the documents submitted by the applicant were capable of proving that the handbag which was the subject-matter of the earlier design had been made available to the public, the Board of Appeal examined the individual character of the contested design. It defined the informed user of that design as an informed woman, who was interested, as a possible user, in handbags. According to the Board of Appeal, the two designs at issue had features in common, in particular their upper contours and their handles in the form of straps attached to the body of the bags by a system of rings reinforced by rivets, but the differences as regards the shape, structure and surface finish played a decisive role in the overall impression produced by those goods. In that regard, the Board of Appeal found that the degree of freedom of the designer was high, but that, in the present case, it did not, from the point of view of the informed user, cancel out the significant differences in shape, structure and surface finish which differentiated the two bags.
In the present case, the Board of Appeal correctly found that, in the context of fashion items like handbags, the designer’s degree of freedom was high. Moreover, the applicant does not contest that assessment. However, it submits, in essence, that the Board of Appeal erred inasmuch as the ‘freedom of the designer’ test should have been an integral part of the analysis of the individual character of the contested design and that the Board of Appeal inverted the steps involved in that analysis. Accordingly, the applicant maintains that the Board of Appeal’s approach of, first, comparing the two designs at issue in order to conclude that they did not produce the same overall impression on the informed user and, second, examining the argument relating to the freedom of the designer, is incorrect. Furthermore, it takes the view that the differences between the designs at issue are not significant enough to produce a different overall impression on the informed user.
The Board of Appeal did not err in stating that the factor relating to the freedom of the designer could not on its own determine the assessment of the individual character of a design, but that it was, however, a factor which had to be taken into consideration in that assessment. Consequently, it correctly found that that factor was a factor which made it possible to moderate the assessment of the individual character of the contested design, rather than an independent factor which determined how different two designs have to be for one of them to have individual character.
Second, as regards the comparison of the overall impressions produced by the contested design and by the earlier design, the Board of Appeal stated, in paragraph 30 of the contested decision, that they differed as to three features which decisively influenced their overall visual appearance, namely the overall shape, structure and surface finish of the bag.
First of all, it pointed out that the body of the contested design had a perceptibly rectangular shape, on account of the presence of three straight lines that marked the sides and the base of the bag, which gave the impression of a relatively angular object. By contrast, the body of the earlier design had, according to the Board of Appeal, curved sides and a curved base and its silhouette was dominated by an impression of roundness. Second, the Board of Appeal took the view that the body of the contested design looks as if it is made from a single piece of leather without any visible division or seams except for on a short length at the lower corners. By contrast, the front and back of the earlier design were, according to the Board of Appeal, divided into three sections by seams, namely a curved upper section delimited by a collar and two lower sections of equal size delimited by a vertical seam. Third, the Board of Appeal stated that the surface finish of the contested design was totally smooth, apart from two faint seams at the lower corners. By contrast, the surface of the earlier design was, according to the Board of Appeal, covered with pronounced and raised decorative motifs, namely a collar edged with gatherings in the upper part of the bag, a vertical seam dividing the bag into two sections and pleats at the bottom of the bag. In respect of each of those three factors, the Board of Appeal concluded that the differences between the designs at issue were significant and therefore such as to markedly influence the overall impression of the informed user. In the case of the contested design, the Board of Appeal found that the impression produced would be that of a bag design characterised by classic lines and a formal simplicity whereas, in the case of the earlier design, the impression would be that of a more ‘worked’ bag, characterised by curves, the surface of which is adorned with ornamental motifs.
As regards the features that are common to the two designs at issue, namely their upper contour and the presence of a handle in the form of a strap or straps attached to the body by a system of rings reinforced by rivets, the Board of Appeal took the view that they did not suffice to confer on them, in the eyes of an informed user, the same overall impression. It stated in particular that the way in which those rings were used in the two bags was very different in that they were very visible and let light through in the contested design, which was not the case with regard to the earlier design, this being a detail which would be obvious to the informed user.
In that regard, it must be borne in mind that the assessment of the overall impression produced by a design on the informed user includes the manner in which the product represented by that design is used (see judgment of 21 November 2013 in El Hogar Perfecto del Siglo XXI v OHIM — Wenf International Advisers (Corkscrew), T‑337/12, ECR, EU:T:2013:601, paragraph 46 and the case-law cited). In the present case, it must be pointed out that the straps and the handle of the designs at issue manifestly lend themselves to different uses inasmuch as the contested design represents a bag to be carried solely by hand, whereas the earlier design represents a bag to be carried on the shoulder.
In that context and in the light of the foregoing considerations, it must be held that the differences between the designs at issue are significant and that the similarities between them are insignificant in the overall impression which they produce. Consequently, the Board of Appeal’s assessment must be confirmed inasmuch as it found that the contested design produced an overall impression on the informed user which was different from that produced by the earlier design.