In this case, the CJEU clarified the test used to determine whether design features are 'dictated solely by their technical function' and, therefore, excluded from protection under Community Design law.
Regulation 6/2002 art.8(1) has now been interpreted as meaning:
Design features which have been designed solely for the purposes of a technical result, with no consideration to aesthetic appeal, will be excluded from protection.
In addition, the court confirmed that it is not necessary to base this assessment from the perspective of an “objective observer” but must take all relevant, objective circumstances into account.
Prior to this case, the court would consider if there were alternative designs to achieve the same technical result.
In these conjoined cases, the CJEU was asked by national courts to confirm the scope of the ‘repair clause’ and how Regulation 6/2002 art.110(1) should be interpreted. Audi and Porsche claimed Acacia, a manufacturer of replica alloy wheel rims, infringed their Community Designs. Acacia relied on the ‘repair clause’ defence on the basis that replacement parts of complex products are omitted from protection when used to repair a complex product in order to restore its original appearance. The CJEU held that the scope of the repair clause includes component parts such as alloy wheel rims irrespective of whether the component parts are dependent upon the whole appearance of the complex product.
Where the replacement parts are used to restore the original appearance of a complex product, the repair clause defence can apply, however, the scope does not extend to parts used for the purpose of customisation.
Further to this, the CJEU held that a duty of diligence is placed upon the manufacturer or supplier of replacement parts to ensure that they make users aware that they are not the holder of the design registration and that the part should only be used for the purposes of repair and not further customisation.
In this dispute, L'Oréal claimed RN Ventures had infringed its European patent and two Registered Community Designs for several electronic facial skin care devices.
The judge identified the informed user as the observant user of powered skin brushes. Importantly, when determining the scope of the design corpus, the judge confirmed that earlier designs that are too obscure to be known by the informed user (as per the exception in Article 7 CDR 6/2002) can be included as part of the design corpus. Further to this, it is not necessary to show that the informed user was aware of the prior art.
The court found that one of L'Oréal’s designs was infringed by RN Ventures, confirming the test for design infringement is one of overall impression not just a comparison of the distinctive features.
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18 December 2018