This further decision of the Third Board of Appeal, the only Board hearing Design cases, specifies the key requirements of “novelty”, “individual character” and “features solely dictated by its technical function” which, according to Articles 4, 5 , 6 and 8 CDR, every Community design must comply with to be held valid.

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In this case the Board upheld the precedent decision of the Invalidity Division which declared the registered Community design (RCD) for an under-water-motive device invalid. In fact, the applicant challenged the RCD successfully by a former version of the current product the RCD should have protected.

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The original product called “ZS01” had been made available to the public in 2002. The RCD was filed August 25, 2004 and corresponds to an updated version of the “ZS01” called “ZS05”. The updating concerned only the handle element.

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The Invalidity Division considered this difference to be sufficient for “novelty” but not to produce a different overall impression. Therefore, the RCD lacked “individual character”. On appeal, the RCD owner argued that the difference in the handle (six different features were enumerated) is also sufficient to fulfill the requirement of “individual character”, because the handle merits greater attention being the area where the designer enjoys the greatest margin of freedom whereas the design of the other elements are dictated by their technical function.

On account of this, the Board found that “novelty” and “individual character” overlap to some extent, although they are presented as separate requirements in Articles 4 to 6 CDR.

If two designs are identical except in immaterial details, they will produce the same overall impression on the informed user, and vice versa, if two designs produce a different overall impression on the informed user, they cannot be identical. Nevertheless, there are certain differences between the two requirements.

The test for “novelty” is essentially of an objective nature, i.e. whether two designs are identical or not. The only area where difficulties of interpretation might arise is in relation to the term “immaterial details”.

The test for individual character is likely to give rise to slightly more subjective appraisals. The Board is required to take into account the overall impression on the informed user with regard to the degree of freedom of the designer in developing the design. This means that if the designer had relatively little freedom in developing the design, especially on account of technical constraints, even small differences in relation to earlier designs may be sufficient to endow the design with individual character.

Additionally, the Board assessed that the comparison must be made between the whole of the senior design and the whole of the RCD, because the RCD concerned the underwater motive device as a whole and not merely the handle). The argument of technical function of the other elements was refused by the Board since the shape of the body and the propeller shroud could differ significantly without compromising their technical function, e.g. a more elongated or bulbous body and a broader or narrower propeller shroud.

As a result, the Board found that the RCD lacked “individual character” and upheld the invalidation of the RCD. Interestingly, the Board – in answering the enumeration of different handle features – stated that the appellant could have sought design protection for the handle alone, since it is a component part of a complex product which remains visible in normal use according to Articles 3 (c) and 4 (2) (a) CDR.

The question of whether the handle in the earlier design and the redesigned handle produce the same overall impression on the informed user might have well received an affirmative answer according to the Board.

Although the outcome of these invalidity proceedings is generally no good news for long term product designs that are modified from time to time (because the precedent design enjoys no privilege in comparison to other prior art), this decision provides useful guidance for future applications with regard to the protection of designs when a product version is updated.