Watching out for individual character (Brands & IP Newsnotes - issue 6)

In December 2012, Nike Innovate CV was granted a Registered Community Design for “measuring instruments, apparatus and devices” for the following design for an electronic wristband:

Nike electronic wristband images from Community Design No. 002159640-0002, accessed via DesignView

In August 2013, an individual by the name of Thomas Murphy filed for a declaration of invalidity of Nike’s design on the basis of the following prior design held by him for “Flexible LCD watch bands” which had been registered in November 2004:

Flexible LCD watch bands images from Community Design No. 000264379-0001, accessed via DesignView

Mr Murphy argued that the Nike design infringed Article 6(1)(b) of the Community Designs Regulation, submitting that it lacked individual character as the overall impression on the informed user did not differ from that produced by Murphy’s prior design. Neither the Invalidity Division of the EU Intellectual Property Office (EUIPO) nor the EUIPO Board of Appeal agreed with Mr Murphy. The case came before the General Court upon Mr Murphy’s appeal of the Board of Appeal decision.

The informed user

For a design to have sufficient individual character to warrant registration, the overall impression it produces on the “informed user” must differ from the overall impression produced by any design which has been made available to the public before the filing or priority date (Article 6(1)(b) Community Designs Regulation).

The Board of Appeal had found that the “informed user” of the Nike design was anyone who habitually purchases electronic wristbands and puts them to their intended use and has become informed on the subject by browsing through relevant catalogues, visiting relevant stores and downloading information on the internet. Mr Murphy did not disagree with this definition or that the Nike design consisted of an electronic wristband.

Degree of freedom of the designer

Murphy did, however, disagree as to the degree of design freedom afforded to the designer of such electronic wristbands. Article 6(2) of the Designs Regulation states that, in assessing individual character, the degree of freedom of the designer in developing the design must be taken into consideration. The Board of Appeal had found that the degree of freedom of the designer was high whereas Murphy argued that the degree of freedom was in fact very high.

The General Court considered the constraints which applied to designers of electronic wristbands, finding that designers would be limited by the need for wristbands to be ergonomic in order to fit the wrist and to contain measuring instruments. In order for a wristband to be able to fulfil its function properly, it had to be relatively small, thin and light and to fit easily around the wrist. These technical constraints had led the Board of Appeal to conclude that the degree of freedom of the designer was high rather than very high, and the General Court agreed with this conclusion.

Assessment of individual character

The Court went on to consider the overall impression produced by the respective designs and whether they differed sufficiently to give the Nike design the requisite individual character for registration.

The Court reiterated the position from earlier case law that the overall impression produced by a design on the informed user must be determined in light of the manner in which the product is used. When using an electronic wristband, the informed user attaches more importance to the part displaying the data than to the clasp. On that basis, although the clasps in Murphy’s design and the Nike design were similar, this similarity alone was not sufficient to make the designs as a whole similar. Indeed there were a number of differences between the two designs, namely that (i) the Nike design was larger and thicker than Murphy’s design, (ii) Nike’s design featured a large oval button on the surface of the wristband which was not present in Murphy’s design, (iii) the internal components of the Nike design were visible, giving it a more technical aspect than Murphy’s design, which appeared as opaque and elegant, and (iv) the Nike design had less ornamentation than Murphy’s design, on which the image of a diver and a line running along the wristband were clearly visible. These differences led the Court to conclude that the overall impression produced by the Nike design on the informed user will be clearly different to that produced by Murphy’s design, even taking account of the high degree of freedom afforded to the designer of electronic wristbands.

Significant advance on the prior art

Murphy relied on case law of the UK Court of Appeal to argue that his prior design enjoyed a higher degree of protection because it was a significant advance over the prior art in existence at the time of its registration in 2005. However, the General Court did not accept this argument, stating that it was bound to consider decisions of the Courts of the European Union but not decisions of national courts. It therefore concluded, contrary to the position of the Court of Appeal, that the new and unusual character of Murphy’s design did not prevent the informed user from perceiving the differences in subsequent designs. Murphy’s design should therefore not be afforded any greater degree of protection such that there was nothing to alter the Court’s findings on individual character.

On the basis of the above findings, the General Court ruled that Murphy’s application for a declaration of invalidity of the Nike design be rejected.