The EU General Court recently ruled that a Registered Community Design for a rectangular-shaped floor marking was invalid, as the multiple views in which it was depicted did not show a single design. 

The court’s decision is a warning about the pitfalls of relying on illustrations showing multiple views of the purported design with differences that cannot be reconciled or explained away by features such as colour, shade, light, angle, and perspective (Case T-25/23: Orgatex GmbH & Co. KG v EUIPO (ECLI:EU:T:2024:725) (23 October 2024)).

Background

Under Article 25(a) of the Community Design Regulation (the "Regulation"), a design cannot be registered as a Registered Community Design ("RCD") if it does not correspond to the definition in Article 3(a) of the Regulation.

Article 3(a) defines a design as the "appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation".

Facts

The applicant obtained an RCD for the following rectangular-shaped design for the indication “Floor Markings”, which was represented as follows:

An intervener applied for a declaration of invalidity, arguing that the RCD did not meet the definition of a design in Article 3(a) of the Regulation. 

The Cancellation Division of the EUIPO dismissed the application. On appeal, the Board of Appeal ("BoA") overturned the decision, ruling that the design was invalid. Contrary to the applicant’s and Cancellation Division’s interpretation of the views filed (that View 1.1 showed the front, and Views 1.2, 1.3 and 1.4 showing the rear), the BoA ruled that Views 1.1 and 1.2 showed the front, and Views 1.3 and 1.4 the rear. In any event, neither ‘hypothesis’ showed a single design. 

The applicant appealed. 

General Court’s decision

The General Court upheld the BoA’s decision and found the RCD to be invalid for the following key reasons. 

General remarks

The court confirmed earlier case law that the design applied for must be capable of being represented in a way that enables that design to be clearly identified. It explained that this must include views of the product which are consistent, showing the appearance of one and the same product that an examiner can clearly identify as the design applied for. The court referred to this as the ‘unicity of design’.

The court stated that where there are inconsistencies or contradictions between the views filed by the applicant, these might be judged to show different products, and therefore more than one design. This can happen where the views constitute different embodiments or versions of the same concept, or when the lines, colours used to identify the design, or disclaimers of certain features, are not consistent between those views. Where these are irreconcilable and cannot be explained away, the views are ‘insolubly inconsistent’ and there is no unicity of design.

Separately, the court rejected the applicant’s argument that in EU law, there existed a principle of interpretation of a design that favoured the applicant during invalidity proceedings. A presumption of validity was already present in infringement proceedings, so that in invalidity actions, a strict examination of invalidity was necessary, including as a matter of legal certainty and sound administration.

Assessment

The court agreed with the BoA that the correct hypothesis was where Views 1.1 and 1.2 showed the front of the design, and Views 1.3 and 1.4 showed its rear, but that on either hypothesis the views filed showed “at least two” different designs, not one.

A. Hypothesis A: Views 1.1 and 1.2 show front, Views 1.3 and 1.4 show rear

The court agreed with the BoA that this hypothesis appeared logical and plausible in light of common experience. This was because each pair of views featured both a top and perspective view and used different colours for the framing elements and the transparent inner window. 

On this hypothesis, the court found there were insoluble inconsistencies in the contour lines which were not convincingly explained away by the applicant. In some views the lines appeared clearly, but in other views they were either faint or non-existent. The lines also had different shading, which was not due to differences of perspective or lighting.

B. Hypothesis B: View 1.1 shows front, Views 1.2, 1.3 and 1.4 show rear

The court found that this hypothesis was hardly logical or plausible in the light of common experience, as it would only show a single view of the front face and three views of the rear.

In any event, this hypothesis still showed insoluble inconsistencies with regards to:

• Shading (shadow effects) in the framing elements, the transparent inner window and the contour lines. These differences could not be explained away by the mere presence or absence of a light source or lighting effect, or the differing angle of some of the views. As there was no light source, the court concluded that three different shades of grey had been used.
• Contour lines. These appeared with different intensities and visibilities and depth, both within and across views. These differences could not be explained by factors such as viewing distance, or, as the applicant had claimed, the presence of transparent adhesive strips – even if these were featured in the product as marketed, these strips did not appear anywhere in the views as filed on the register. 

Owing to the multiple insoluble inconsistencies between the views, the General Court therefore concluded that the views filed did not represent a unitary design.

Takeaways

This decision is a helpful reminder of the following key practical points for EU design applicants:

• Choose representations carefully: Whether it’s through design drawings, illustrations, computer-generated images or photographs, design applicants should ensure that the choice of design representation is able to show the fundamental elements - lines, contours, colours, shape, texture, materials or ornamentation - in a consistent way.
• Is more than one view necessary? Avoid the use of multiple views unless these are necessary to capture the full scope for which protection is sought. Using multiple views where one would suffice may otherwise create entirely avoidable discrepancies that an examiner might question.
• Consider the use of lighting and colour: Consider if lighting, shading and colour is needed in order to clearly represent the scope of protection of a design in a way that simple black and white line drawings would not. Make sure the presence (or absence) of lighting, shading or colour is explicit and consistent between views, to avoid unnecessary inconsistencies being implied. 
• Drawing the lines: For line drawing illustrations, make sure that each specific type of line is reflected identically throughout. Avoid creating unnecessary differences in the visibility, depth and consistency of lines of the same type.
• Overall reflection: Design applicants should take a final look at their representations, and compare these to the design released to market. Where elements such as colour, shading or depth change (or do not change) based on the angle from which the design is viewed, or the proximity to the design, make sure that this is reflected in the representation.