The EU General Court has dismissed an appeal against a decision in which a registered community design for drink cans was declared invalid. The full text of the decision can be found here. The case concerns the effect of a written description of a registered design, the requirement of a registered design to constitute a unitary object and the requirement of a registered design to possess individual character.
EU registered design rights protect the appearance of a product. Applications for registration do not undergo substantive examination; provided the basic application details are correct and comply with EU practice, registration may be obtained within weeks. Applications may include a written description explaining the design but this is optional.
Article 3(a) of the Community Design Regulation ("CDR") states that a design means "the appearance of the whole or a part of a product". This means only a single unitary object may be the subject of a design registration. However, several individual products may be protected through a design registration if they are aesthetically coordinated with one another, are functionally connected and are usually marketed together, for example a chess board and pieces or a cutlery set with a knife, spoon and fork.
Article 6 of the CDR provides that designs must have individual character in order to be validly registered. In other words, a design will be validly registered if the overall impression it produces on the informed user is different from the overall impression of other previously disclosed designs. If the overall impressions are the same, the registration will be invalid.
In 2004, Ball Beverage Packaging Europe Limited ("BBP") obtained an EU design registration for drink cans ("the Contested Design"). The Contested Design, shown below, was accompanied by the written description "group of cans for drink, all having a sleek but high appearance with reduced neck, preferably made of thin sheet metal, especially for filling volumes of 250 ml, 300 ml or 330 ml, respectively":
In 2011, Crown Hellas Can SA ("CHC") filed an application for a declaration of invalidity of the Contested Design. CHC argued that the Contested Design produces the same overall impression as the following competing products which had been disclosed at various points between 1995 and 2003:
The EUIPO's Invalidity Division found in favour of BBP and upheld the validity of the Contested Design. It deemed the Contested Design to be a group of three cans and considered this to be a distinguishing feature when making the comparison with each of the earlier designs.
CHC appealed to the Board of Appeal which overturned the earlier decision. In particular, the Board of Appeal found that CHC's written description (portraying the Contested Design as a group of three cans) should be disregarded, the three cans in the Contested Design do not comprise a unitary object, and the overall impression of the Contested Design is the same as the prior designs cited by CHC. In the Board of Appeal's view, the Contested Design is not a unitary object comprising three cans but rather a single can in three different sizes. It follows that the individual character test involves a comparison between the Contested Design as a single can and each of the prior designs.
BBP appealed to the General Court but was unsuccessful.
With regard to the written description, the General Court pointed to Article 36 of the CDR which states that a description shall not affect the scope of protection of a design. Its purpose is simply to explain the representations. The General Court therefore disregarded BBP's written description and agreed with the Board of Appeal that the Contested Design should be defined as a single can in three different sizes.
On the question of whether the Contested Design is a unitary object, the General Court found that, regardless of how beverage cans are marketed, the three cans are not linked by aesthetic and functional complementarity. As such, they are not a unitary object. This, again, points towards the Contested Design being a single can in three different sizes.
The General Court went on to assess the individual character of the Contested Design. It held that the informed user would be a person in the drinks industry who is responsible for the bottling of beverages. The General Court also found that the freedom of the designer of drink cans is limited only to the extent that such products are usually cylindrical and the lid and base are typically round as a result. Ultimately, the General Court agreed with the Board of Appeal that the designs in question are cylindrical, smooth walled cans which are slightly bevelled at the base and end. The differences are insignificant to such a degree that the overall impression of the Contested Design on the informed user must be deemed to be the same as the overall impression of the earlier designs. Having come to that conclusion, the General Court found that the Contested Design lacks individual character and is invalidly registered.
The General Court's decision serves as a warning that owners of EU registered design rights should not rely on written descriptions to define the scope of protection. This should ideally be implicit from the representations of the design. The decision also highlights the importance of filing design applications correctly. Although the outcome on individual character might not have been any different, BBP would have been better served had it filed a separate application for each can rather than trying to obtain protection for all three in one.