In 2006, Yves Sant Laurent (YSL) registered two Community designs in respect of two handbag designs. In 2009. H&M applied for a declaration of invalidity in respect of these two registrations on the basis that they had no “individual character” (a requirement along with “novelty” for a design to be registrable) in particular over H&M’s own earlier handbag design. H&M’s applications were rejected at first instance and then by the Board of Appeal and so they appealed further to the General Court (GC) which has recently handed downs its decision in
T 525/13 and
T 526/13, upholding the original decisions and the validity of the YSL registrations. Importantly, the GC did not dispute the Board of Appeal’s finding that the overall impression produced by YSL’s bags on the informed user – identified by the Board of Appeal, for the handbag market, as a particularly informed and interested woman – would have been different from that produced by H&M’s design, especially noting the differences in the overall shape, structure and surface finish of the bags. In addition, it was held that the degree of freedom of the designer in developing the contested designs may be a factor to be taken into account in the conclusion as regards the overall impression produced by each design at issue, but it cannot on its own determine the assessment of the individual character of a design. The decision suggests that the threshold for a registered Community design is still relatively low and designers may not have to deviate too far from what is already in the public domain in order to qualify for design rights protection. It is unknown if H&M will appeal. We will watch this space.
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