We are pleased to announce a significant victory for IP Cyprus in the realm of EU design protection.
We successfully invalidated the Registered Community Design (RCD) 006385118-0001 concerning ball-point pens. The invalidation (INVALIDITY No ICD 117 494 ) was based on the lack of individual character, as the contested design had been used in trade prior to the application of the contested mark.
Key Aspects of the Case
Both the contested and prior designs exhibited remarkable similarities, including:
Hexagonal Barrel: Approximately two-thirds of the length of both designs consists of a hexagonal barrel, with a rounded, textured grip over the lower portion. The contested design features a more textured grip than the prior design.
Metal Components: Both designs incorporate metal tips, metal end caps with black plugs at the ends, and metal clips, giving them a sleek and professional appearance.
Rulers and Cut-Out Windows: Each design includes rulers, with the earlier design featuring one ruler and the contested design featuring rulers on two sides of the hexagonal barrel. Both designs also have an elongated cut-out window on another side.
Overall Shape and Proportions: The designs share the same overall shape and proportions, as well as the arrangement of their visible components.
Analysis of Differences
While there are some differences, such as the length of the cut-outs on the barrels, the texture of the grips, and the number of rulers, these differences were deemed minor. They do not significantly impact the overall appearance when the designs are compared side by side. Additionally, for designs with similar shapes and characteristics, a difference in color is generally insufficient to create a different overall impression on the informed user, especially when the designer’s degree of freedom in developing the contested design is broad.
Legal Basis and Decision
According to Article 6(1)(b) of the Community Design Regulation (CDR), a design must have individual character, meaning it must produce a different overall impression on the informed user compared to any design that has been made available to the public prior to the filing date of the application.
In this case, the overall impression conveyed by the contested design was found not to differ from that of the prior design. The similarities in shape, proportions, and arrangement of components outweighed the minor differences noted above. The informed user would perceive both designs as essentially the same, leading to the conclusion that the contested design lacks the required individual character.
Conclusion
This outcome reaffirms the importance of ensuring that new designs genuinely stand out from existing ones, both in terms of appearance and overall impression. IP Cyprus is committed to upholding the principles of design protection, ensuring that our clients’ innovations are shielded from undue imitation.
This case highlights the meticulous attention to detail and expertise required in navigating the complexities of design law. We are proud to have achieved a successful outcome for our client, reinforcing the high standards of intellectual property protection that we strive to maintain.
If you have any questions or require assistance with design registration or protection, please contact IP Cyprus for expert advice and guidance.
