Simple Sanitary Options v Group Nivelles returns to the CJEU (case C-419/22 P)

Kat readers serious about EU design legislation possible keep in mind the textbook case in regards to the validity of a design for a bathe drain. This case, which reached the Court docket of Justice (CJEU) in 2017, mentioned whether or not the identical public shall be thought-about when analyzing novelty, and particular person character a design, respectively.

This design is now returning to the CJEU, this time with a query of admissibility of extra prior artwork, which was produced after lodging the appliance for invalidity. Whereas awaiting the choice, allow us to keep in mind all the varied rulings this design has went by way of.

The idea for the case is Group Design No 000107834-0025, which was registered by Simple Sanitary Options in 2004. The applying acknowledged that it was a design for a “bathe drain” (to the higher proper).
In 2009, the predecessor of Group Nivelles filed an utility for invalidity of the design. The invalidity applicant, relying on Artwork. 25(1)(b) Design Regulation, claimed that the contested design will not be new, devoid of particular person character, and its options are dictated by their technical capabilities.

Group Nivelles relied on its earlier design No DM/059828. After a spherical of observations within the invalidity case, Group Nivelles additionally submitted excerpts from two Blücher product catalogues (to the underside left). The Blücher catalogue exhibits a drain cowl, which is used for industrial functions when draining liquid waste. This drain cowl was not, nevertheless, equivalent to design No DM/059828.

The Invalidity Division concluded that the contested design was invalid, because it was equivalent to the product proven within the Blücher catalogue. Simple Sanitary Resolution appealed. The EUIPO’s Board of Enchantment (BoA) annulled the choice, concluding that the contested design was not equivalent to the Group Nivelles’ product and thus was new. Group Nivelles appealed to the Basic Court docket (case T-15/13).

The Basic Court docket annulled the BoA’s determination. Surprisingly, the Basic Court docket discovered that whereas the contested design was not novel (because it was equivalent to the product from {the catalogue}), on the similar time it did have particular person character. In so discovering, the Basic Court docket relied on the character of the 2 merchandise. Whereas the sooner product was utilized to a canopy plate for an industrial drainage channel, the contested design was registered for a bathe drain (usually used at one’s dwelling).

Thus, an knowledgeable consumer of bathe drains wouldn’t pay attention to earlier designs for merchandise, that are used for industrial functions. A canopy plate for an industrial drainage channel wouldn’t destroy the person character of a bathe drain. It will solely be related when analyzing novelty, the check for which is cross-sectoral.

Although this ruling was sharply criticised by students and practitioners (together with The IPKat’s put up right here), the Basic Court docket’s strategy in reality mirrored the one taken within the earlier drafts of the Design Regulation.
As Ruhl and Tolkmitt remind us, Member States had deliberate to make use of totally different classes of prior designs for analyzing novelty and for analyzing particular person character. It will be then conceivable {that a} design would have particular person character and never be new on the similar time – as was discovered within the Basic Court docket’s ruling. This is able to in flip justify analyzing each novelty and particular person character. This strategy was not, nevertheless, maintained within the Design Regulation as lastly adopted.
EUIPO and Simple Sanitary Options appealed to the CJEU (Joined Instances C-361/15 P and C-405/15 P). In 2017, the CJEU dismissed the enchantment and maintained the Basic Court docket’s ruling to annul the BoA’s determination. Nevertheless, the CJEU additionally pointed to a number of errors of legislation made by the Basic Court docket. The CJEU held that the Basic Court docket had erred in legislation when it required the knowledgeable consumer to be truly conscious of the prior design. It thus disagreed with the strategy by which there have been totally different classes of the related public for establishing novelty and particular person character, respectively. The enchantment having however been dismissed, the case was referred again to the EUIPO.

In 2018, whereas reviewing the file, the Rapporteur of the BoA realised that the 2009 utility for invalidity was primarily based solely on the Group Nivelles’ design No DM/059828. The Blücher catalogue, in opposition to which the contested design was examined in 2009-2017, had not been indicated within the utility for declaration of invalidity. This meant that the that the one related prior artwork is the design No DM/059828.

In 2020, the BoA issued its determination, now sustaining the validity of the contested design (case R 2664/2017-3). The BoA acknowledged that accepting the Blücher catalogue as prior artwork would broaden the subject material of the invalidity utility and be inconsistent with Artwork. 63(2) Design Regulation.

If in contrast with design No DM/059828 (and never with the Blücher catalogue), the contested design offered important variations. The BoA noticed that the contested design “produces the general impression of a chic, important and minimal bathe drain with a embellished closed cowl plate and lateral elongated slots”, whereas the prior design is characterised by extra standardised options. The BoA concluded that the contested design possessed particular person character and was legitimate.

Group Nivelles appealed to the Basic Court docket (case T-327/20). Whereas the claimant additionally disagreed with the BoA’s findings on particular person character, the essence of the case considerations the admissibility of the Blücher catalogue.

Based on Group Nivelles, proceedings have already given rise to a closing determination, particularly the choice of the Invalidity Division and that of BoA from 2012. These two procedures led to the conclusion that each one the info and all of the proof had been considered. In subsequent proceedings, the query of the admissibility of the info and the proof produced by the events was not raised or referred to as into query (para. 31 of case T-327/20).

This argument was rejected by the Basic Court docket. First, the Basic Court docket reminded that the CJEU’s ruling to annul the BoA determination has an ex tunc impact, which signifies that the 2012 BoA determination “by no means existed” and has not at all grow to be closing.

Second, EUIPO should solely look at the sooner designs recognized within the invalidity utility. Accepting extra designs would run in opposition to the respectable curiosity of the design holder in being half to a dispute, the topic of which is evident from the outset.

Group Nivelles has appealed the choice to the CJEU (case C-419/22 P). No extra data is obtainable on the grounds for interesting, however it certainly considerations the admissibility of extra prior artwork, which was produced after lodging the appliance for invalidity. Within the meantime, the contentious design will expire in only one yr.

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