Decision of the General Court of the December 1, 2021 reaffirms that neither market preferences nor commercial or aesthetic considerations are considered to limit freedom of design, Julia Schefman Explain.
To qualify for registered design protection in the EU, a design must meet the requirements of novelty and individual character of the design. A design or model is considered to have individual character if “the overall impression it produces on the informed user differs from the overall impression produced on that user by any design or model made available to the public before the date of filing of the application for registration”. When assessing individual character, the court considers four determining factors: 1) the sector; 2) the informed user; 3) their degree of knowledge of the state of the art and level of care when comparing designs; and, 4) designer freedom in design development. Ultimately, the court assesses whether the overall impression produced by the contested design differs from the impression produced by the earlier design.
Background to the Barbie head design dispute
In May 2014, Jieyang Defa Industry Co Ltd filed a Community design application falling within class 21.01 of the Locarno Agreement covering games and toys. The design consisted of a doll’s head with facial features and a neck hole (for attachment to a body) but no hair. In response, Mattel Inc.owner of the famous Barbie brand, filed an application for invalidity of the contested design in August 2017. MattelChallenge cited a lack of novelty and individual character based on his previous Defa Doll and Barbie CEO Sculpture designs. To illustrate the lack of novelty, Mattel provided a 2008 catalog that included a photo of a Barbie doll.
In July 2019the European Union Cancellation Division Intellectual Property Office (EUIPO) confirmed Mattelapplication, declaring the contested design invalid for lack of individual character. Jieyang Defa Industry’s subsequent appeal was dismissed by the third Appeals Chamber in December 2020. It also found that the contested design lacked individual character and that both designs produced the same overall impression on the informed user. Jieyang Defa Industry appealed against this decision before the General Court.
Freedom of design and the judgment of the General Court
In its assessment, the General Court of the European Union subscribed to the definition of informed user established by the Appeals Chamber. It defines the informed user as any member of the general public, for example a child, an adult who buys the doll for a child or an adult who collects such dolls. Moreover, the informed user would know the specific characteristics of the dolls and their heads.
Next, the Court considered the relevant degree of freedom when designing doll heads. In other words, the extent to which the designer is constrained in his design; for example, by legal requirements or the technical functions of the product. A greater degree of freedom resulting in minor differences is less likely to be considered sufficient to produce an overall impression different from that of the earlier design, and vice versa.
Jieyang Defa Industry sought to argue that it was tied to beauty standards and market preferences when designing its doll’s head. However, the Court held, consistent with previous case law, that aesthetic and commercial considerations do not limit a designer’s degree of freedom for such designs. Thus, the Court endorsed the Appeals Chamber that the designer “enjoyed a great deal of freedom” in the development of doll heads and was not limited by market preferences.
By comparing the overall impressions produced by the designs, the Appeals Chamber had found many similarities between the two models, such as fair skin, an oval-shaped face, and slightly curved brown eyebrows. She also found some differences, as the contested design had a hairline but no hair and contained a hole. However, the Board decided that these differences were not sufficient to produce a significantly different impression as the knowledgeable user would understand the reason for the hole (to attach the doll’s head to the body) and the head would eventually be covered with hair .
Furthermore, design protection does not extend to constituent elements of a design that cannot be seen in normal use and the hole in the head and the shape of the hairless skull would not be visible in this context.
EU The General Court upheld that assessment of the similarities and the board’s conclusion that the designs gave the impression of an identical face. Even if the informed user was found to be attentive at a relatively high level, the Court ultimately concluded that any small differences in the facial features of the doll heads would not affect the overall impression given by the designs.
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