CJEU increases scope for argument in Gautzsch v Münchener Boulevard Möbel
Community design law assesses the novelty and individual character of a design (and thus its eligibility for protection as a Community design, either registered or unregistered) by reference to prior designs.
However this test is not to be applied like a strict novelty or obviousness test in the law of patents. Prior designs are to be disregarded if in the normal course of business, they could not reasonably have become known to the circles specialised in the sector concerned, operating within the European Union (EU).
There have been a number of cases debating the appropriate definition of “relevant circles” for any specific technical field or market, but a new decision from the Court of Justice of the European Union (CJEU) has focussed on two other questions:
- Is it sufficient if images of the prior design were merely distributed to traders?
- Is a disclosure inevitably one which could reasonably have become known to the circles specialised in the sector concerned where it has been made only to one undertaking in those specialised circles, albeit without any explicit or implicit conditions of confidentiality, or if that disclosure took place in a showroom of an undertaking in, for instance, China which lies outside the scope of “normal market analysis”?
In the case of H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH (Case C 479/12), in a preliminary ruling on the interpretation of the Community Design Regulation, the CJEU has now answered these questions as follows (respectively):
- It depends on the facts, but even the mere distribution of images of a design can amount to such disclosure – you do not have to have seen the “real thing”
Thus, internet disclosures, if found to have been seen by the relevant circles, brochures and the like are just as good as prior designs.
- It depends on the facts, but even if disclosed without any explicit or implicit conditions of confidentiality, disclosure merely to one undertaking in that sector or only in the showrooms of an undertaking outside the EU, does not inevitably lead to a finding that the design may reasonably have become known to the circles specialised in the sector concerned, operating within the EU.
This second element in particular has the potential to increase uncertainty and the willingness to fight a case on novelty and individual character because it opens up a whole array of arguments on what would and would not, on the facts, amount to a disclosure which is sufficient to become known.
Even though the Community design law provides a 12 month “grace period” for disclosures of one’s own design before the opportunity to obtain registered protection is lost for that exact design, self-destruction remains a possibility through disclosure of similar designs by oneself, for example where a prototype is disclosed and the design is changed following test feedback. Accordingly the moral from this case is clear: only disclose prototypes under obligations of confidentiality; register designs before testing the market; be careful what pre-production photographs and other images are put into circulation by sales teams.
However, if accidents have happened, do not simply give up the fight as an owner: if leakage was limited, there is still a chance of salvaging the later design (and, equally, a risk of your own attack against a competitor’s later design, based on a limited circulation of your design, failing).