Case Law Summary
General court of the European Union – 6 June 2013 - Case T-68/AA - Erich Kastenholz versus the OHIM
In 2006, Qwatchme A/S was granted registration for the Community design corresponding to the description "watch dials, parts of watch dials, hands of dials" and to the representation below:
Mr Erich Kastenholz filed an application for a declaration of invalidity of the design, claiming, firstly, that it was devoid of novelty and individual character and, secondly, that it constituted an improper use of a dial protected by German copyright law, using the technique of overlapping coloured discs.
He referred to the works exhibited and published by the German artist Paul Heimbach between 2000 and 2005, represented below:
The Invalidity Division of the OHIM rejected the application for a declaration of invalidity. This decision was confirmed by the Board of Appeal, which held that the contested design was different from the earlier designs inasmuch as the colours of the dial shown in the designs at issue differed widely one from the other and produced a different overall impression on the informed user. It stated that, consequently, the contested design possessed individual character and could not, in light of differences between the signs at issue, be considered to be either a reproduction or an adaptation of the earlier works of art.
Mr Erich Kastenholz then filed an appeal with the General Court of the European Union. In particular, he argued that the Board of Appeal of OHIM essentially relied on the individual character of the contested design and did not sufficiently examine its novelty or make a clear distinction between these two factors.
The General Court held that, in particular:
- The designs at issue are not identical. In fact, the earlier designs are characterised by the graduated sequence of a wide spectrum of colours, the combination and intensity of which change with the hour, whereas the contested design has only two uniform shades or colours in the 12 o’clock and 6 o’clock positions or four uniform shades in the positions showing the other hours and therefore, in each case, there is no variation in the intensity of the shades. Those details constitute, from an objective point of view and irrespective of their impact on the overall impression produced on the informed user, significant differences between the designs at issue, which make it possible to recognise the novelty of the contested design."
- The differences between the contested design and the earlier designs do not arise from the fact that the coloured discs that form part of each of those designs are half-discs or half-coloured whole discs, but from the way in which they have been coloured. Thus […], in the case of the earlier designs, the discs have been coloured with a clockwise increasing intensity, whereas in the case of the contested design, the discs have been coloured uniformly. [...] those features are present in each of the earlier designs and give rise to the graduated sequence of a wide spectrum of colours, the combination and intensity of which change with the hour. That sequence constitutes the characteristic feature of the earlier designs, irrespective of whether the coloured discs that form part of each of those designs are half-discs or half-coloured whole discs.
- The Board of Appeal therefore correctly determined the differences between the designs at issue enabling it to assess the novelty of the contested design and was correct to conclude that it was new.
This decision provides an opportunity to reiterate that novelty and individual character conditions overlap to some extent. The second indeed goes beyond the first, meaning that when two designs produce a different overall impression on informed users, they cannot be considered identical.