A cookie is a cookie
It seems the OHIM register of industrial designs won’t be fattening up on baked goods anymore.
Attractive product design can contribute hugely to market success. This is especially notable in fields like fashion and furniture, but in other industries as well the design and visual presentation of a product can be crucial to staying a step ahead of the competition. But that does not mean that every external form of a product can or should be protected as an industrial design.
The Community Designs Regulation (6/2002) defines a design as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.” But that is not all. To be registered, an industrial design must also be “new” and have an “individual character.” A design is considered new when no design identical to it or differing only in immaterial details has been made available to the public, e.g. by being incorporated into products already present on the market, exhibited at trade fairs, and so on. A design is considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on an informed user by any other design which has been made available to the public.
Registration of a design in the Community system is fairly simple. Before registration, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) does not examine whether the design meets the conditions for newness and individual character. Consequently, registration of industrial designs sometimes borders on the absurd. Some designs are registered which fall well short of the requirements, but they can be removed from the register only when action is taken by another entity challenging the registration.
This problem can be seen in the judgment recently handed down by the General Court at the Court of Justice of the European Union in a case involving chocolate-chip cookies (Biscuits Poult SAS v OHIM, judgment of 9 September 2014, Case T‑494/12). The disputed design, which was registered as a Community design, looked like this:
It might seem that the average consumer, and even more so an informed user familiar with cookie design, would look at this design and say, “It’s just a cookie.”
The registration of this design was challenged by another company seeking cancellation of the registration. The applicant alleged that the design lacked novelty and individual character and that its appearance was dictated by its technical function. To support this, the applicant presented other designs that had been registered earlier than the disputed design:
Nonetheless, the Cancellation Division of OHIM dismissed the application to invalidate the registration, finding that the cookie design qualified for registration. On appeal, the OHIM Board of Appeal declared the Community design invalid, holding that it lacked individual character. The holder of the design then sought review by the General Court. It argued that the individual character of the design is primarily due to the chocolate oozing from the cookie, but also pointed to the contrast between the inside and the outside of the cookie, the golden surface, the number of chocolate chips on the surface, and the texture of the cookie. The court rejected this argument and held that the Board of Appeal had properly invalidated the design.
The court first addressed the issue of the chocolate filling dripping from the cookie. What was crucial here was the determination that the cookie could not be regarded as a “complex product,” defined under the regulation as a product “composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.” The individual character of industrial designs included in complex products is evaluated somewhat differently from designs for other products. If the filling were a component of a complex product, the filling itself could have an individual character, but it would have to “remain visible during normal use” of the cookie. The holder of the design admitted that the layer of creamy chocolate filling becomes visible only when the cookie is snapped or crunched on its way from plate to mouth. Therefore the cookie was not a complex product. The filling was unconnected with the external appearance of the snack and had to be ignored when determining whether the design had an individual character.
The court also stressed the “designer’s considerable freedom” in producing such goods. The somewhat smoother surface of the disputed design compared to earlier designs (particularly designs 1 and 3) and the difference in the number and size of the chocolate chips and the degree to which the chips protrude from the surface of the cookie (in prior designs 1–8) did not give the disputed design an individual character. The court found that “given the designer’s considerable freedom, those differences are not liable to produce a different overall impression on an informed user … in such a way as to benefit the contested design.” Moreover, “the irregular, rough surface on the outside of the cookie, its golden colour, round shape and the presence of chocolate chips are characteristics which are common to the conflicting designs and decisive for the overall impression produced on an informed user, so that the contested design cannot be regarded as having individual character.”
While it is easy to register a Community design, a design can be challenged after it has been registered. Thus a filing should be considered carefully to avoid subsequent allegations of a lack of novelty and individual character, followed by cancellation of the design. The ruling in the Biscuits Poult case appears correct. Industrial designs should protect only special visual solutions that are new and different.
Lena Marcinoska, Intellectual Property Practice, Wardyński & Partners
