EUIPO: Design 'Bunch-O-Balloons' invalid

Print this page 03-05-2018
(Courtesy of Esther Schnepper and Berber Brouwer, Bergh Stoop & Sanders Advocaten)

Mystic Products and Koopman International applied for a declaration of invalidity of the design below (No 001431829-0006). EUIPO has declared the design invalid after the application because it is dictated by its technical function with regard to the recent Doceram-judgment by the Court of Justice EU



“According to a recent Court of Justice judgment, Article 8(1) CDR must be interpreted as meaning that, in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard (judgment of 08/03/2018, C-395/16, DOCERAM, EU:C:2018:172, § 32).


The practice of the Office has been driven by the case-law of the second instance, which rejected the test based on the multiplicity of forms theory. The Court of Justice, supporting the opinion of the Advocate General in this regard, rejected the multiplicity of forms theory as the sole factor for the application of Article 8(1) CDR stating that ‘if the existence of alternative designs fulfilling the same function as that of the product concerned was sufficient in itself to exclude the application of Article 8(1) of Regulation No 6/2002, a single economic operator would be able to obtain several registrations as a Community design of different possible forms of a product incorporating features of appearance of that product which are exclusively dictated by its technical function. That would enable such an operator to benefit, with regard to such a product, from exclusive protection which is, in practice, equivalent to that offered by a patent, but without being subject to the conditions applicable for obtaining the latter, which would prevent competitors offering a product incorporating certain functional features or limit the possible technical solutions, thereby depriving Article 8(1) of its full effectiveness’ (decision of 29/04/2010, R 211/2008 3, Fluid distribution equipment, § 28; decision of 14/04/2014, R 1772/2012 3, Game cartridges, § 19; opinion of the Advocate General of 19/10/2017, C-395/16 DOCERAM, EU:C:2017:779, § 40 and 41; judgment of 08/03/2018, C-395/16, DOCERAM, EU:C:2018:172, § 30).


It looks like this is precisely what is at issue in the present case. At least four designs of the holder’s multiple registration above show possible alternatives to achieve a single technical solution (not leaving many other alternatives free). The straw and balloon configurations which appear in them are different ways of enabling a large number of balloons to be filled with water at once. By obtaining registration for these forms, the holder does not leave its competitors many options to achieve the same effect.


As stated in the previously quoted case law, the existence of alternative forms as a sole factor should not result in the automatic rejection of the application of the provisions of Article 8(1) CDR but other objective circumstances relevant to the case should be taken into consideration (judgment of 08/03/2018, C-395/16, DOCERAM, EU:C:2018:172, § 38).




Furthermore, it seems that the right approach requires the purely technical features of the product to be distinguished from those driven by the design process, since, according to the opinion of the Advocate General in the previously mentioned case, the exclusion laid down in Article 8(1) CDR is motivated mainly by the absence of creative influence on the part of the designer over the appearance of the product, since only added value stemming from intellectual effort independent of that function justifies design protection. It is therefore necessary to look at the contested design objectively and, based on the available evidence, conclude if, apart from the technical solution embodied in the product, a design effort or visual enhancement is apparent from the registration. In view of the Invalidity Division, the contested design does not show it and the holder failed to prove such a design effort.”


Read the complete decision here.