Monday, 5 November 2012

Look at the sky, look at the river ...

... Isn't it good? No, not in this case, there's nothing good at all.

I haven't blogged the so-called Angry Gnomes case on Community registered designs before, which is surprising given that it has been through so many levels of appeal. It fell within one of my blogging hiatuses, although I covered the OHIM Board of Appeal decision in a podcast. From Alicante it embarked on an expedition to Luxembourg, where the General Court had a go and now the Court of Justice has weighed in too.

The real name of the case is Joined Cases C-101/11 P and C-102/11 P Herbert Neuman, Andoni Galdeano del Sel, and Office for Harmonisation in the Internal Market (Trade Marks and Designs) v José Manuel Baena Grupo, SA and the General Court case, slightly abbreviated, is T-513/09 Baena Grupo v OHIM (that link is to the French text, which I assume is usually going to be the most useful to my readership). Mr Neuman and Mr Galdeano del Sel were interveners in the General Court, but became appellants when they took it to the Court of Justice. The subject matter comprised two representations of gnomes, in the form of simple line drawings, both seated but one looking relaxed and the other looking distinctly angry about something - perhaps about the temerity of the applicant for registration of the later design, which it believed conflicted with its own earlier trade mark rights. The RCD was first invalidated as being a misuse of the earlier rights, but the Board of Appeal overturned that decision on the basis that the idea of "use" did not extend to use of something merely similar. However, it decided that the RCD lacked individual character over the cited trade mark, so it was still invalid, and the owner of the RCD appealed to the General Court.

The General Court (in January last year) reversed the Board of Appeal, to do which it had to perform some strange gymnastics. It decided that the informed user was a young child or teenager, and that the first gnome's angry expression was what that informed user would notice. This is very different from the approach of the English courts in Procter & Gamble v Reckitt Benckiser: the General Court's "informed user" is not especially attentive or particularly interested in design issues, and the Court gave a leading role to the doctrine of "imperfect recollection", which the English court considered less important in design cases than in trade mark ones.

The Court looked at the cited (angry) gnome as a whole, thus overlooking the small matter of the later gnome's lack of a mouth. Commentators, such as Dave Musker on the Class 99 blog (who I predict will be one of probably a small number of people who recognise the title of this piece), observed that a fair comparison would have been to compare that part of the cited gnome without a mouth to the design. "In the context of an infringement, the implication of the General Court's approach is that one could take the entirety of a design, add something and thus avoid infringement", he commented. Or take something away, like the mouth. Either way, I think that this holistic approach can result in absurdities and injustices, not to mention cluttering, foreclosure and depletion, and runs counter to the general tenor of registered design protection which has always focussed on novel features of a design while UK UDR (and copyright before it) considers the design as a whole.   So what has the grown-up court done now? Not a lot. It merely decided that the General Court was entitled in law to come to the conclusions it came to. Not a very exciting denouement, especially when the conclusion it had come to seems to so many people to be patently wrong.

1 comment:

David Musker said...

I do indeed recognise it Peter! A mark of age on my part and good taste on yours.


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