Community design has so far been treated skeptically. In particular, the scope of the earlier design’s protection from a new and slightly modified design’s perspective has been put in question. However, recent court decisions have negated these concerns and established a much wider concept of the protection of the Community design.
These changes have been induced by the judgment of the General Court (case No. T-357/12) of 4 February 2014 regarding Sachi Premium-Outdoor Furniture, Lda vs The Office of Harmonization for the Internal Market (OHIM).
The dispute began in 2010 when Gandia Blasco, SA filed an invalidity application to OHIM asking to reject Sachi’s armchair design registered in 2009:
Gandia Blasco, SA stated that, according to articles 4-9 of the Council Regulation (EC) on Community designs, the contested design is confusingly similar to the earlier armchair design registered in 2003:
Although the invalidity application was rejected on the grounds that the later design is new and has a individual character, Gandia Blasco, SA filed an appeal. OHIM’s Boards of Appeal annulled the earlier decision on the basis that the subsequent design produces the same overall impression on an informed user as the earlier design does. Also, the contested design has some of the previous design’s key features. The only difference between the designs is the addition of the three pillows (excluding minor changes, such as the number of plates of the seating plane and the connection with the back), yet, this dissimilarity was found to be insignificant.
Sachi appealed against this decision to the General Court, however it supported the decision made by the Boards of Appeal. The General Court rejected Sachi arguments, namely the impact of the pillows on the overall impression on the user and the restricted designer’s degree of freedom subject to the individual attributes of the prevailing fashionable designs. According to the court, the creation of products such as armchairs does not limit the designer’s freedom.
This decision posits a fairly broad concept of a protection of a Community design. A design cannot be recognised as new if it differs from an earlier design only in terms of a few added elements. It is advisable to register fundamental designs that can prevent registration of new designs which could produce a similar overall impression on the informed user.