Radiator designs heat up a crowded market in the General Court

This is another note from me on a designs decision. As I write this I’m suffering a cold, so conveniently this General Court judgment concerns the “notoriously crowded” (to quote the Board of Appeal), but always warm and inviting, field of radiators. It is Case T-315/12 Tubes Radiatori v OHIM (Antrax), available only in French and Italian, so the following is based on a machine translation (please treat that as a health warning).

Tubes' design

Tubes held a registered community design (RCD) for the radiator design below (a design for a “heater for heating”, says my translation. I’ve rotated it 90 degrees so it fits better on the page and there are other perspectives in the judgment if you happen to want them).

Antrax (not to be confused with the acute bacterial disease of similar name) applied to cancel the RCD on the basis that it lacked individual character (one of two key requirements for validity, along with novelty – see Articles 5 and 6 of Regulation 6/2002 on Community Designs, the “Regulation”) because it did not produce on the informed user a different overall impression to two earlier German designs, one of which is illustrated below (again rotated).

One of the prior designs

Although I thought you should see them, the designs in suit here do not impact on the General Court’s decision, which instead turns on the Board of Appeal’s failure to consider points of law and fact relied upon by Tubes. To make it up to you, I promise there will be more interesting pictures of, say, cats, along soon.

OHIM’s Cancellation Division granted the application for invalidity. The Board of Appeal agreed. As just noted, the General Court decided to annul the Board of Appeal’s decision, for the reason explained below.

The informed user of radiators

Recalling the Court of Justice of the European Union’s (CJEU) decision in Case C-281/10 Grupo Promer, the General Court noted that the informed user (I have quoted Grupo Promer itself, rather than rely on the slightly different wording my translation gives me in this case):

“must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise.”

The Board of Appeal found that the informed user here was a person who buys heating radiators to install them in his or her home. The person is aware of what the market offers, fashion trends and the characteristics of the basic product. It has also had the opportunity to see and compare different designs in décor magazines, by visiting specialty shops and by surfing the Internet. The General Court did not doubt this finding (although why the Board of Appeal keeps trying to give personality to a legal fiction is beyond me).

Degree of design freedom in a crowded market need not be limited

In assessing individual character, the degree of freedom of the designer in developing the design must be taken into consideration (Article 6(2) of the Regulation). The greater the freedom, the less likely it would be that small differences between designs produce a different overall impression on the informed user, and vice versa. While it might be thought that radiators are fairly boring old functional things, the Board of Appeal considered that their designers have a relatively high degree of design freedom. It found that the fact that a radiator needs to have a bundle of liquid circulating, and heat radiating, tubes does not significantly affect the shape and the overall appearance of the radiator. Tubes’ argument to the contrary was not proved on the evidence before the Board of Appeal.

Tubes was rather disappointed in this finding, citing an earlier Board of Appeal decision where it was held that the field of radiators was “notoriously crowded” such that a designer of radiators had “quite limited” freedom. Noting the importance of “equal treatment and sound administration”, the General Court nevertheless stated that each case needed to be considered on its facts, and declined to criticise the Board of Appeal for reaching two apparently conflicting findings on design freedom, based as they were on different facts and evidence.

Yet an informed user may pay closer attention to differences in a crowded market

However, the General Court did find that in a field crowded with designs, although this did not suggest a limitation on design freedom, it could well mean that the informed user would take more notice of differences that he or she might not notice in the absence of such a crowd.

This blog is "notoriously crowded"
with cat pictures. Sorry.

This was Tubes’ breakthrough point. The General Court was satisfied that it had put the crowded field point to the Cancellation Division, which had drawn conclusions supporting such crowding. The General Court also noted that despite its previous decision making the “notoriously crowded” point, and the point having been argued by Tubes in the appeal, the Board of Appeal failed to address it (even if only to dismiss it).

With this omission, the Board of Appeal had failed to substantiate its decision on a question raised before it relevant to the assessment of individual character and so, held the General Court, its decision should be annulled.

Back to the Board of Appeal?

There’s nothing in the General Court’s judgment actually to make this clear, but the case should now be remitted to the Board of Appeal for it to have another go at it.

The General Court’s conclusion is an interesting one. But it is reached in a none too straightforward manner, not least considering the General Court found itself untroubled by two opposite conclusions about the same field but then sidestepped the argument entirely to apply the point in question in a different way. A bit of luck for Tubes perhaps - but more of a wait for both parties while the previous round of the litigation is repeated.

Regular users of the Cancellation Division and Boards of Appeal will also know that they regularly decline to deal with all the arguments put, even when expressly asked by a party to do so: see Julius Sämann Ltd v Jees SRO, ICD 3630. Still, it seems unlikely that this ruling will change OHIM’s practice.

Scope of RCD protection

A couple of additional points to note regarding what is and isn’t protected by an RCD: 

·         Tubes sought to rely on photographs of a real product as a physical embodiment of its RCD. Again following Grupo Promer, the General Court noted that it was not objectionable in principle for the informed user to be deemed to take account of a real product built to a design, but added that the burden of proving that the product corresponded to the design was on the party wishing to rely on it. Tubes had failed to discharge this burden.

·         Tubes also sought to rely on specific dimensions of its products but was not permitted to do so: the RCD was not limited to a particular size product and so only the relative proportions depicted in the design were relevant.