Visible/Not Visible…the General Court, Cookies and Community Design protection
In this post, we want to echo a decision rendered by the General Court that despite having some time, has not received the attention which, in our opinion, deserves. We refer in particular to the GC Judgement of 9 September 2014, T-494/12, “Biscuit Poult SAS“. Biscuit Poult SAS applied for the registration as a Community design for “cookies” of the following image: The said application became the Registered Community Design number 1114292-0001 (available here). As seen in the picture, the design shows the cross section of a cookie in such a manner that both its outside (dough) and inside (a cocoa layer) are visible. A year after the grant, the Dutch company Banketbakkerij Merba BV started invalidity proceedings before the Office alleging that the registration at hand lacked novelty and individual character. The action was dismissed by the Cancellation Division, but subsequently upheld by the Third Board of Appeal. In the reasoning of the appeal before the Office, the Board found that the inner part shown in the registered design could not be taken into account when determining its validity as it was not visible during the normal use of the product (the cookie). Given the above, the analysis performed obviated the filling, and appraising the remainder of the features of the design the Court concluded it was invalid. Given the above, the question that needs to be answered is whether the inside of a cookie could be taken into consideration in order to determine the validity of a particular design registration. After due consideration of the matter the Court answered negatively. While the conclusion is the same as that of the Board of Appeal’s, the reasoning behind varies considerably. Thus, and as mentioned before, OHIM maintained that the inner layer of cocoa should be ignored as it was not visible during the normal use of the product. However the reference to the normal use of the product, or what is the same, to article 4.2 of the Regulation 6/2002 on the Community Design (the Regulation) applies only in case of complex products (would a cookie fall within the category of “complex product”?) The Court holds that a cookie is not a complex product. Therefore, the fact of not taking into account the inner part of the design at hand could not be based on the argument that that part is not visible in the normal use of the product. Sensu contrario, and to justify its findings the Court used the general criteria of visibility (relying on recitals 7, 12 and 14 of the Regulation altogether with Article 3) and concluded that, regardless of whether or not we are before a complex product the non-visible features of the product, could not be taken into account in determining whether the contested design could be protected. From the above, we understand that regardless of the nature of the product, any design that seeks protection for a non-visible part of the product that incorporates it is in a evident risk, as it was in the present case, of being cancelled.
Related Posts:
- The repair clause (“must match”): Is it applicable in cases of trademark infringement? – Brief Analysis of the Spanish case law
- The Spanish Supreme Court rules on “forum shopping”: Judgment no. 1/2017, of 10 January 2017.
- Article by Salvador Ferrandis on Designs in INTA Bulletin
- The Relevance of the Description in the Protection of a Community Design