Baena case: gnomic utterance awaited

On the right, a Community trade mark; on the left,
an apparently valid later registered Community design

"Take that expression off your face - if you want to keep your design" wrote Class 99 team captain David Musker (here), when relating the lamentable tale of the General Court's ruling in Case T-513/09 José Manuel Baena Grupo, S.A. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Herbert Neuman and Andoni Galdeano del Sel. David wrote then:

"As with several earlier General Court and OHIM decisions, the citation was taken "as a whole" and no thought was given to comparing like with like - since the design has no mouth, surely the fair comparison is to compare that part of the citation without a mouth to the design? In the context of an infringement, the implication of the General Court's approach is that one could take the entirety of a design, add something and thus avoid infringement. Is that right? What do you think, dear readers?".

Since most dear readers did not take the trouble to think or -- if they did -- they didn't take the trouble to tell Class 99, the unsuccessful party has had to take the step of appealing to the Court of Justice of the European Union, whose gnomic utterance we eagerly await.

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Stop press: I've just noticed that there are two separate appeals in this case. In Case C-101/11 P the appellants are Herbert Neuman and Andoni Galdeano del Sel while in Case C-102/11 P the appellant is OHIM itself.

Take that expression off your face - if you want to keep your design

The General Court has taken its fourth substantive Community Design appeal decision, Baena Grupo v OHIM T-513/09, on these two rather angry gnomes (or "lutins grognant"as the French text has it) - here, in French (Spanish also available).
The case has had a rather erratic history. The citation, on the right, is a published Community Trade Mark (CTM 1312651), and at first instance the Community design (RCD 426895-0002, on the left) was invalidated over the citation considered as a prior right, as being a mis-use (i.e. an infringement) of the trade mark.
The Appeal Board overturned that in Decision R 1323/2008-3 (here, in Spanish), ruling that "use" of an earlier mark in this context did not cover use of something similar (in contrast to the well-known MIDAS decision?) but held it invalid nonetheless, this time on the basis of lack of individual character over the citation considered as prior art.
What did the General Court say? They reversed the Board of Appeal, despite what one might reasonably think to be the overall similarity between the two. The twin bases were: firstly, the identity of the informed user - a teenager or a younger child (the latter was quite important), and secondly, the importance of the angry facial expression (and perhaps pose also) in the citation, as being the thing which would stick in the memory of that informed user.
From a UK point of view, it therefore makes an interesting contrast with the approach in Procter & Gamble v Reckitt Benckiser, firstly because this "informed user" is not stated to be attentive or particularly interested in design issues (and is hence pretty undiscriminating), and secondly because of what seems to be quite a strong role for the doctrine of "imperfect recollection", held in P&G to have lesser significance in design cases.
As with several earlier General Court and OHIM decisions, the citation was taken "as a whole" and no thought was given to comparing like with like - since the design has no mouth, surely the fair comparison is to compare that part of the citation without a mouth to the design? In the context of an infringement, the implication of the General Court's approach is that one could take the entirety of a design, add something and thus avoid infringement. Is that right? What do you think, dear readers?

Copied design cancelled

Alicante News brings word of a rare success in cancelling a Community design (RCD 001595737-0001) on the basis of an earlier national European copyright. The reasons for the relative underuse of copyright as a ground of attack are probably threefold - firstly, copyright in designs is a matter of unharmonised national law which varies widely across Europe, secondly, OHIM (with its allergy to hearings and live witnesses) is ill suited as a forum for assessing copying and thirdly, where the copyright work is already published, it is available for a straightforward prior art-based attack.
But in this case, the designs (of textiles) are the kind of thing that is going to be protected by copyright in most places, and the opponent managed to file evidence of a chain of correspondence from the original Belgian designer of the copyright work to the RCD applicant. In any event, the designs do appear so close that the inference of copying is pretty well unavoidable.

Getting that colander habit

In Case R 887/2008-3 Normann Copenhagen ApS v Paton Calvert Housewares Limited, 11 August 2009, OHIM's Third Board of Appeal dismissed Normann Copenhagen's appeal against the Cancellation Division's decision that the registered Community design for its lovely collapsible colander (right) was invalid since it was not new.

Of note is the Board's assessment of the identity of the 'informed user' of a colander. In case you ever wondered:

"27 ... The informed user against whom individual character of the contested RCD should be measured is therefore whoever habitually purchases such an item and generally kitchen utensils and puts them to its intended use and has become informed on the subject by browsing through catalogues, visiting the relevant stores, downloading information from the Internet shops, ...

28 The informed user is generally not technically experienced or particularly interested in the technical design of colanders. He will therefore not pay attention to every detail of the device. Instead, he will undertake an overall view including inter alia the attractiveness of the design and the practicability of the device".

I wonder how many people habitually purchase colanders.

Colour and priority

An interesting OHIM invalidation case is reported in the latest Alicante News. The contested RCD was in colour. A cited RCD (monochrome but otherwise identical) was filed later but claimed an earlier priority - from a colour Chinese application.
On priority, OHIM found that the cite validly claimed priority since all elements were present within the priority document. On conflict with the cite, they found that the monochrome cite covered all colours. Thus, the RCD infringed the cite, and was invalid. They compare the case with their earlier decision (also reported in Alicante News) finding a colour design lacked priority from a monochrome priority application.
These decisions set up a complex legal pattern, given that (a) some countries don't allow colour any part in design registrations, and (b) some don't issue colour copies of priority documents. Nonetheless, if OHIM's analysis is correct (and I am not wholly convinced) then there are clear benefits to filing in monochrome except where the colour really does make a significant difference to the design.