European Union: OHIM Confirms Validity Of Apple's Handheld Designs

In the worldwide market for handheld devices, Apple and Samsung are engaged in fierce competition that has given rise to a flood of intellectual property litigation before courts worldwide. One of the latest instalments of the IP feud pitted both rivals against each other before the Invalidity Division of the Office of Harmonization for the Internal Market ("OHIM") on the validity of Apple's community design rights. On 5 July 2013, OHIM rejected the application for a declaration of invalidity filed by Samsung against Apple's Registered Community Design ("RCD") for its tablets (iPad®).

Apple's RCD (filed on 24 May 2004), describes the relevant product as a "handheld computer", and the application for the registration contains seven different views of the product (presenting the product from different perspectives and on varying scales).

Samsung filed for invalidity of the RCD based on Articles 25(1)(a) and (b) of Council Regulation (EC) N° 6/2002 on Community Designs ("Regulation"), pursuant to which an RCD may be declared invalid only if the design does not correspond to the definition of a design under Article 3(a) of the Regulation, and if the RCD does not fulfil the requirements of Articles 4 to 9 of the Regulation.

First, Samsung claimed that Apple's RCD does not correspond to the definition of a design under Article 3(a) of the Regulation, which states that a "design" means "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation". Samsung argued that Apple's RCD does not correspond to the definition because the representations of the design disclose more than one object, do not correspond to each other (are contradictory) and do not allow third parties to determine unambiguously what is claimed.

In addition, Samsung maintained that Apple's RCD lacks novelty and individual character and was, therefore, registered contrary to Articles 4, 5 and 6 of the Regulation.

As evidence for the invalidity grounds raised, Samsung submitted over 60 designs which, it alleged, were made available to the public prior to the date of filing of Apple's RCD, and create the same overall impression on the informed user as the RCD at issue.

As regards the first ground of invalidity, OHIM found that there was no inconsistency in the set of seven drawings/representations showing the device from different angles. OHIM further considered that an applicant for the registration of a Community design is allowed to show larger or detailed images. There is no requirement to show the design in a particular scale or in only one scale. Therefore, OHIM concluded that Apple's RCD meets the definition of "design" in accordance with Article 3(a) of the Regulation.

As regards the issue of novelty (Article 5 of the Regulation), an RCD lacks novelty when an identical design has been made available to the public prior to the date of filing of the RCD or the date of priority. Article 5.2 of the Regulation furthermore explains that "designs shall be deemed to be identical if their features differ only in immaterial details". OHIM compared the earlier designs submitted by Samsung and concluded that the difference between these designs and the RCD was not immaterial. Therefore, OHIM concluded that Apple's RCD was novel.

As regards the individual character, Article 6 of the Regulation determines that an RCD will be considered to lack individual character if the overall impression produced on the informed user is the same as the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the RCD or the date of the priority claimed. According to established case-law, the "informed user" is "a particular observant who is aware of the state of the art in the sector concerned and uses the product related to the RCD in accordance with the purpose for which the product is intended". Furthermore, in assessing the individual character of the RCD, the degree of freedom afforded to the designer when developing the design must be taken into consideration.

In the present case, OHIM found that the contested RCD has individual character in relation to the submitted prior designs. The decision shows how, for the products at hand and taking account of the informed user, small differences are sufficient to give a different overall impression. For instance, two earlier designs were found to have "a casing which forms vertical slim sides with the front, and round turns to the substantially flat back of the device", which is similar to the RCD. However, OHIM held that "the same round turns occur towards the front screen which is embedded in a frame of casing". This was sufficient to conclude that the overall impression of these earlier designs is different from the impression produced on the informed user by the RCD. For other designs, it was found that "substantial borders of casing around the screen and bevelled sides towards the back" or "substantial borders around the front screen, wider sides than the RCD and a rounded back" or "substantial borders around the screen and sides which are rounded" result in an overall impression that differs from the RCD.

OHIM thus concluded that all the grounds of invalidity put forward by Samsung were unfounded and confirmed the validity of the RCD.

On the same day, OHIM handed down a similar decision confirming the design of the iPhone® (5^th generation).

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