Time’s up for Smartwatch appeal (Brands & IP Newsnotes - issue 7)

In the last edition of IP Newsnotes, we reported on the General Court’s dismissal of an invalidation action brought against a Registered Community Design held by Nike for electronic wristbands (see here). The action had been brought by an individual, Mr Thomas Murphy, on the basis of a prior design held by him. Apparently not one to give up easily, Mr Murphy appealed the decision to the Court of Justice of the European Union (CJEU) which has just delivered its verdict.

In an unusual move, the CJEU dismissed the appeal without a hearing, issuing only an Order based on the Advocate General’s Opinion. Mr Murphy appealed the General Court decision on three points and was given short shrift on all three.

The most significant point of appeal related to a principle claimed by Mr Murphy that an earlier design which represents a significant advance over the prior art may benefit from more extensive protection. If applied, this principle would result in the subsequent Nike design needing to show greater differences from Mr Murphy’s design in order to possess individual character. However, Advocate General Wathelet, whose opinion was reproduced in the CJEU’s Order, stated that the existence of such a principle was “not apparent” from the PepsiCo/Grupo Promer judgments relied on by Murphy. The AG did not refer to the UK Court of Appeal case of Procter & Gamble v Reckitt Benckiser where this principle had been adopted, but in the ruling under appeal the General Court had expressly stated that it was bound to consider decisions of the Courts of the European Union but not decisions of national courts. It remains to be seen whether the UK courts will adopt the approach of the EU courts in any future cases on this point.

Mr Murphy’s other points of appeal (that the General Court had incorrectly assessed his prior design and that it had disregarded the degree of design freedom) were rejected as “manifestly inadmissible” as he was seeking a fresh assessment of facts and evidence, whereas an appeal must be limited to points of law. Murphy’s appeal was therefore dismissed in its entirety.