Registered Community designs can be used to protect the appearance of products throughout the European Union.  In order to be valid, these registrations must have individual character, i.e. they must be sufficiently different from existing designs.  The legal test is that they must produce an overall impression on the informed user that differs from the overall impression produced on the informed user by any existing design.

In Muratbey Gida Sanayí ve Tícaret AŞ v EUIPO (Case T‑662/20), the General Court considered an appeal against a decision of the European Union Intellectual Property Office’s Board of Appeal.  The decision had invalidated Muratbey’s registration for a cheese with a helical shape for lacking individual character compared to an existing design.

Muratbey argued that the existing design used to invalidate its registration should not have been taken into consideration based on Article 7(1) of the Community Design Regulation. This provision states that the designs that are relevant for assessing novelty and individual character do not include any designs which “could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union”.

In the present case, the relevant existing design was published in the figures of European and PCT patent applications.  These patent applications were entitled “Helical food product”.  Muratbey argued that these patent applications could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, specifically the sector concerned with cheese.

The General Court noted that Muratbey (who had the burden of proof) had not provided evidence capable of rebutting the presumption that the required disclosure had occurred to the relevant sector.  In any case, the Court stated that patent databases are freely accessible and so patent publications must be regarded as being wholly accessible to the circles specialised in the sector concerned in all countries.  Further, circles specialised in the sector operating within the EU would normally conduct reviews of their sector making it all the more plausible that patent databases are consulted.  Accordingly, the EUIPO was correct to conclude that the figures in the patent applications are relevant for the assessment of individual character.

Existing Design	Registration

As required by the Community Design Regulation, the assessment of individual character has to take into account the designer’s degree of freedom – the greater the designer’s degree of freedom the less likely it is that minor differences between the two designs will be sufficient to produce a different overall impression.

The Court, possibly mindful of an upcoming festive cheese board, noted “that cheeses may feature varying degrees of consistency, ranging from hard cheeses to soft cheeses or even to cheese spreads or liquid cheeses. Moreover, they are capable of featuring different textures, depending in particular on their composition and on their degree of maturity, and colours, and may even incorporate other ingredients such as fruits or spices.  Furthermore, cheeses may be presented in different sizes and cuts… cheese products may feature different, ordinary geometric shapes, such as pops, slices, circular shapes or even grated or more creative forms, particularly where soft cheeses are concerned”.  Following this celebration of the variety of cheeses available, the Court concluded that the degree of freedom for the designer of cheese products was “rather broad”.

The Court then noted the differences in the designs.  The registration is more elongated and has a relatively thinner shape, it has the presence of a flat end with three strings, and a yellowish colour compared to the colourless earlier design.  However, the Court concluded that these differences are relatively minimal and could not provide a different overall impression, especially given the relatively high degree of freedom enjoyed by the designer of cheese.  Accordingly, the General Court upheld the EUIPO’s decision that the registered Community design was invalid.

As reinforced by this judgment, registered Community designs can be invalidated by earlier patent applications.  It is therefore important to avoid any delays in filing for design protection, especially where the existence of relevant or related patent applications is known.