In Biscuits Poult SAS v OHIM the EU General Court upheld an OHIM Board of Appeal decision that a registered Community design representing a chocolate cookie lacked the requisite individual character
In Biscuits Poult SAS v OHIM the EU General Court upheld an OHIM Board of Appeal decision that a registered Community design representing a chocolate cookie lacked the requisite individual character and was therefore invalid pursuant to Article 25(1)(b) of the Community Designs Regulation (6/2002/EC) ("the Regulation").
Background
The design in question was intended to be applied to "cookies" and was two-fold: a broken chocolate cookie revealing a molten chocolate centre; and a complete chocolate cookie.
In support of the application for a declaration of invalidity, it was contended by the intervener applicant (A Dutch bakery) that the contested design was not original and lacked individual character. The intervener also argued that its appearance was dictated by its technical function. The application was supported by reference to earlier designs (see below), the first three of which the General Court referred to:
The application for the declaration for invalidity was initially dismissed but the decision was later reversed by the Board of Appeal, declaring that the design was invalid for lack of individual character. The Board of Appeal reasoned that the layer of filling inside the cookie could not be taken into consideration when assessing the individual character of the design, as this filling would not be visible during the "normal use" of the product (one of the requirements for protection of a "component part" of a "complex product"). The Board of Appeal also considered that the outer appearance of the design was the same as the first three earlier designs and that the contested design did not produce on an informed, regular user of such cookies a different overall impression than that produced by the three earlier designs. This was of note when considering the broad margin of freedom given to the designer of this type of product.
The Dispute
The appeal against this decision was heard on 2 April 2014 and was based on the assertion that the Board of Appeal had incorrectly refused to consider the internal appearance of the contested design and had thereby failed to take account of the differences as compared to the earlier designs.
The applicant further submitted that a cookie could not be considered a "complex product" within the meaning of Article 3(c) of the Regulation and that therefore, the filling inside the cookie was not a component of the product. In the alternative, the applicant submitted that the layer of filling inside the cookie would indeed be visible when the product was put to its "normal use", as it would be broken at the time of normal use. As a result, the appearance of the filling should have been considered even under Article 4(2) of the Regulation.
It was submitted that, given all the characteristics of the contested design, including the appearance, lines, contours, colours, contrast between the inside and the outside, the golden surface, the number of chocolate chips on the surface and the texture, that the Board of Appeal ought to have acknowledged the design's individual character in contrast to the three designs above.
Held:
The General Court held that Article 4(1) of the Regulation was concerned with the protection of the appearance of a product, such as industrial or handicraft items. It was clear from the recitals of the Regulation that this protection was restricted to visible elements and to the impression produced on an informed user viewing the product's appearance. The Regulation only conferred protection on the visible parts of the products, which could then be registered as designs.
It was held that the applicant had misunderstood Article 4(2) and (3) of the Regulation. The concept of "normal use" was only relevant when assessing whether protection could be given to a design which was applied to or incorporated in a product which constituted a component of a complex product as within the meaning of Article 3(c) of Regulation. Indeed, under Article 3(c) of the Regulation, a design of a complex product could only be protected if the component part, once incorporated into the complex product, remained visible during normal use of that product and if the visible features of the component part fulfilled in themselves the requirements of novelty and individual character.
A cookie, such as the one portrayed in the contested design, was not a complex product within the meaning of Article 3(c) of Regulation, because it was not composed of multiple components which could be replaced permitting disassembly and re-assembly. Indeed, the applicant had acknowledged before the Board of Appeal that the chocolate filling layer was only visible if the cookie was broken. Consequently, the concept of "normal use" could not be applied and the non-visible characteristics of the product, namely the filling, could not be taken into account when determining whether the contested design could be protected.
The General Court also held that the smoother surface of the contested design as compared to the first and third designs (above) showed characteristics that were common to the conflicting designs and that the contested design did not convey requisite individual character. Given the designer's considerable freedom, the differences in the contested design were not liable to produce a different overall impression on an informed user and could not benefit the contested design. Further, the fact that the product in question would bear a closer resemblance to the contested design once it was broken open in order to be consumed was irrelevant.
The Board of Appeal's decision was upheld and the action was dismissed.
Background
The design in question was intended to be applied to "cookies" and was two-fold: a broken chocolate cookie revealing a molten chocolate centre; and a complete chocolate cookie.
In support of the application for a declaration of invalidity, it was contended by the intervener applicant (A Dutch bakery) that the contested design was not original and lacked individual character. The intervener also argued that its appearance was dictated by its technical function. The application was supported by reference to earlier designs (see below), the first three of which the General Court referred to:
The application for the declaration for invalidity was initially dismissed but the decision was later reversed by the Board of Appeal, declaring that the design was invalid for lack of individual character. The Board of Appeal reasoned that the layer of filling inside the cookie could not be taken into consideration when assessing the individual character of the design, as this filling would not be visible during the "normal use" of the product (one of the requirements for protection of a "component part" of a "complex product"). The Board of Appeal also considered that the outer appearance of the design was the same as the first three earlier designs and that the contested design did not produce on an informed, regular user of such cookies a different overall impression than that produced by the three earlier designs. This was of note when considering the broad margin of freedom given to the designer of this type of product.
The Dispute
The appeal against this decision was heard on 2 April 2014 and was based on the assertion that the Board of Appeal had incorrectly refused to consider the internal appearance of the contested design and had thereby failed to take account of the differences as compared to the earlier designs.
The applicant further submitted that a cookie could not be considered a "complex product" within the meaning of Article 3(c) of the Regulation and that therefore, the filling inside the cookie was not a component of the product. In the alternative, the applicant submitted that the layer of filling inside the cookie would indeed be visible when the product was put to its "normal use", as it would be broken at the time of normal use. As a result, the appearance of the filling should have been considered even under Article 4(2) of the Regulation.
It was submitted that, given all the characteristics of the contested design, including the appearance, lines, contours, colours, contrast between the inside and the outside, the golden surface, the number of chocolate chips on the surface and the texture, that the Board of Appeal ought to have acknowledged the design's individual character in contrast to the three designs above.
Held:
The General Court held that Article 4(1) of the Regulation was concerned with the protection of the appearance of a product, such as industrial or handicraft items. It was clear from the recitals of the Regulation that this protection was restricted to visible elements and to the impression produced on an informed user viewing the product's appearance. The Regulation only conferred protection on the visible parts of the products, which could then be registered as designs.
It was held that the applicant had misunderstood Article 4(2) and (3) of the Regulation. The concept of "normal use" was only relevant when assessing whether protection could be given to a design which was applied to or incorporated in a product which constituted a component of a complex product as within the meaning of Article 3(c) of Regulation. Indeed, under Article 3(c) of the Regulation, a design of a complex product could only be protected if the component part, once incorporated into the complex product, remained visible during normal use of that product and if the visible features of the component part fulfilled in themselves the requirements of novelty and individual character.
A cookie, such as the one portrayed in the contested design, was not a complex product within the meaning of Article 3(c) of Regulation, because it was not composed of multiple components which could be replaced permitting disassembly and re-assembly. Indeed, the applicant had acknowledged before the Board of Appeal that the chocolate filling layer was only visible if the cookie was broken. Consequently, the concept of "normal use" could not be applied and the non-visible characteristics of the product, namely the filling, could not be taken into account when determining whether the contested design could be protected.
The General Court also held that the smoother surface of the contested design as compared to the first and third designs (above) showed characteristics that were common to the conflicting designs and that the contested design did not convey requisite individual character. Given the designer's considerable freedom, the differences in the contested design were not liable to produce a different overall impression on an informed user and could not benefit the contested design. Further, the fact that the product in question would bear a closer resemblance to the contested design once it was broken open in order to be consumed was irrelevant.
The Board of Appeal's decision was upheld and the action was dismissed.