Earlier designs not invoked at the start of invalidation proceedings of a Community Design go down the drain

Registered
Community Designs offer the most waterproof protection for designs in the
European Union. This was once again made clear by the recent decision of the General
Court of the European Union in case T‑327/20.
The Court considered that during invalidity proceedings based upon an earlier design,
it is not allowed to submit (exhibits relating to) yet another earlier design because
this constitutes “new” evidence. Only “additional” evidence illustrating or
supporting the originally invoked design is admissible under European design
law, so the Court held in its decision of 27 April 2022.

Factual background

The contested Registered Community Design
(“RCD”) was granted to the Dutch company Easy Sanitary Solutions (“ESS”) in
2004, and involved a shower drain.

The invalidity proceedings leading up to
the present decision of the General Court started back in 2009, when the
Belgian company I-Drain – in the meantime acquired by Group Nivelles
(“Nivelles”) – lodged an invalidity procedure with the EUIPO based upon its
international design registration DM/059828 for shower drains.[1]
In 2010, when proceedings were already pending, Nivelles submitted new additional
documents relating to other earlier designs than the originally invoked
international design, including extracts of two catalogues showing very similar
designs to the contested RCD.

The case continued for over ten years with an
earlier appeal to the Court of Justice of the European Union, giving rise to an
important decision in 2017 establishing clearly that novelty of a design – as is
required for its protection – is independent from the specific sector to which
the design belongs.[2]

Decision of the General Court

In its present decision, the General Court
offers again valuable insights on Community Design law:

Firstly, the Court considers that new evidence
submitted after the invalidity proceedings have been lodged can be admitted if it
illustrates the way in which specific products incorporating the compared
designs are used, or if it supports a fact or allegation initially put forward at
the start of the invalidity proceedings – this is so-called “additional”
evidence. However, the formal admissibility of such “additional” evidence does
not allow the submission of new earlier designs that go beyond the mere
illustration or the support of what was put forward at the start of the
proceedings. In the present case, this means that the submission of new catalogue-extracts
during the invalidity proceedings constitute non-admissible “new” evidence, as
opposed to the aforementioned admissible “additional” evidence.

Secondly, the Court considers that the
assessment of a design’s individual character must be made by a one-to-one
comparison with one specific earlier design of the whole set of earlier designs
made available to the public, and not in relation to a combination of individual
elements from several earlier designs. An older design must therefore have a
“compact” or “complete” character and cannot be the result of a combination of
different products or designs.

Conclusion and key takeaways

Unless you are in for a cold shower, it is
vital for applicants seeking the invalidity of a RCD (i) to invoke all possible
earlier designs at the start of the invalidation proceedings and (ii) to
indicate the earlier designs individually and not as a set of earlier designs
or as a combination of individual elements from several earlier designs.