Does your Community Design have individual character?

Under the Community Design Regulation (“CDR”), which came into force in 2001, it is a pre-requisite for protection that a design is new and has individual character.

In order to have individual character, the CDR does not require a Community design to clearly differ from the prior art but simply specifies that the Community design produces a different overall impression on an informed user to that of a prior design.

This requirement has often been misinterpreted with most people considering that plain differentiation could be achieved by introducing minor variations.

Such misinterpretation has been put to rest by a recent decision of OHIM's Board of Appeal in the case Wuxi Kipor Power Co., Ltd v Honda Motor Co., Ltd.

In this case, Honda filed an application for a declaration of invalidity claiming that Wuxi Kipor’s design for a generator lacked novelty and individual character.

The Board of Appeal had to compare Wuxi Kipor Power’s contested registered Community design with Honda’s prior design to assess whether the design had individual character.

Whilst Wuxi Kipor Power (Appellant) argued that a design has individual character, if the design and the prior design differ in at least one of its features, Honda (Respondent) claimed that the overall impression of the design has to be analysed for differences.

Despite many differences between the two opposing designs, the Board of Appeal found that:

“the differences are not sufficient to affect the overall impression that the two designs produce on the informed user”, because “the informed user is more likely to be impressed by the overall aspect of the generator rather than the various details that characterise mechanical devices in general.”
and held that the Appellant “could have distanced itself much more from the prior design, rather than by merely incorporating differences, which is what the changes it has mentioned to its design amount to.”

This decision makes it clear that minor variations are not sufficient to take a later design out of the scope of protection of a Community design.

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the
accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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