CHRONOLOGY OF ACTIVITIES IN REGISTRATION OF A COMMUNITY DESIGN BAGS – REGISTER FIRST, THEN ADVERTISE
It must be admitted that the fashion industry is one of the most difficult and susceptible to complicated processes of obtaining, enforcing and maintaining intellectual property rights. This translates into both procedures for obtaining rights from the registration of industrial designs before the Polish Patent Office and Community designs before the European Patent Office (EUIPO). We often hear and read about high-profile proceedings regarding the invalidation of registered designs of famous clothing brands – this time we will check what happened with the LOUIS VUITTON bag design and suggest how not to make the same mistake.
THE HISTORY OF THE COMMUNITY DESIGN OF A NEW BAG FROM A DESIGNER
The fashion house Louis Vuitton designed a new handbag, the advertisement of which appeared in an article on the website of one of the French fashion magazines. Importantly, this article was available at least from October 4, 2019. The article presents a photo of a model wearing the latest handbag from a well-known brand.
Subsequently, it was not until 12/12/2021 that Louis Vuitton registered the Community design of the handbag for protection with EUIPO. That is, at least 2 years after starting to use this design in trade.
Then the company Shanxi Youcheng Trading Co., Ltd, dealing in the sale of, among others clothing products, tableware and decorations produced in China, applied for invalidation of the Community design of the Louis Vuitton purse arguing that the purse does not meet the basic features of the Community design – it is not new and does not have an individual character.
EUIPO DECISION ON THE LOUIS VUITTON BAG
The patent office decided to accept the request of the Chinese exporter and invalidate the Community design of the handbag, stating that at the time of registration the design lacked an individual nature.
EU Regulation 6/2002 indicates that a design is individual in nature when the overall impression it produces on an informed user is different from that of a design that has been made available to the public, in the case of a registered Community design, before the date of filing of the application. of the design for which the design is to be protected or, if priority is claimed, before the priority date.
Additionally, when comparing a registered design with other, earlier designs, the regulation requires that the degree of the creator’s degree of freedom should be taken into account when developing the design – in this case, the design of the purse.
The Office found that publishing a photo of the design on the Internet may constitute evidence that the earlier design had been disclosed. However, he made a reservation that this applies only when the design may be known to experts in the relevant field operating on the European Union market. In the case at hand, access to the website on which the photo of the earlier purse was located is available to everyone, in particular, it does not require creating an account or paying for a subscription.
Subsequently, having found that the disclosure of the earlier design prior to the registration date of the invalidated Community design had been proven, the Office proceeded to examine the similarity between the two bags. As a result of the comparison, the EUIPO found that the handbags gave the same overall impression.
The similarities regarding the shape of the bags, additional decorative elements located on them (chains, a belt, a purse on a belt) are visible at first glance. The office focused on the issue of color in both patterns for a longer time. In the case of a registered design, the color of the bag is black and white, while in the case of the bag previously disclosed, it is brown. The Office found that, despite the apparent difference in color, it did not affect the perception of the juxtaposed bags.
WHAT DOES THE DECISION ON THE LOUIS VUITTON BAG TEACH US?
There are several conclusions for entrepreneurs from this decision and the case of the Community design of Louis Vuitton handbags:
- If you want to protect industrial property in your company, you need to have a clear operating model, the submission of individual industrial designs must be carefully considered, not random.
- If you know that you will want to obtain an industrial design right for your product, first register the industrial / community design, and then advertise your product in the press or on the Internet.
- If you are struggling with a competitor who is blocking your access to the market by claiming your right to a registered industrial design or a Community design, do not assume that the case is lost, the large number of registered designs do not meet the basic protection features and may be invalidated.
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