General Court confirms that Community design for woodsplitting tool is invalid



Par Richard Milchior, le 7 juillet 2020

Article publié dans World Trademark Review

On 29 April 2020 the General Court issued its decision in Bergslagernas Järnvaruaktiebolag v European Union Intellectual Property Office (EUIPO) (Case T‑73/19).



In 2011 Bergslagernas Järnvaruaktiebolag (‘the applicant’) filed a Community design application for “wood splitting tools” in Class 08.03 of the Locarno Agreement. In 2017 Scheppach Fabrikation von Holzbearbeitungsmaschinen GmbH filed an application for a declaration of invalidity with the EUIPO pursuant to Article 52 of Regulation 6/2002, arguing that the design had no individual character. It relied on the making available to the public of an earlier design, which was published in 1986 as a registered design in the Norwegian intellectual property register.

The Invalidity Division cancelled the design. The decision was appealed, but the appeal was dismissed by the Board of Appeal of the EUIPO in 2018.

This decision was attacked on the basis of two pleas.


First plea: infringement of Article 62 of Regulation 6/2002

According to Article 62 of Regulation 6/2002, decisions of the EUIPO may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The right to be heard extends to all the matters of fact or of law which form the basis of the decision, but not to the final position which the authority intends to adopt or to each well -known fact on which it relies in order to arrive at that position.

In the present case, it was apparent from the file that, during the procedure, the applicant had had the opportunity to submit its observations relating to all the aspects of the application for a declaration of invalidity, including with regard to the individual character of the contested design, and that the applicant had also had the opportunity to submit arguments and factual evidence concerning the use of the relevant goods and the visual characteristics of the designs at issue.

In addition, the contested decision was exclusively based on facts which are well known. In particular, regarding the assertion that “it is a well-known fact for an informed user that wood-splitting tools of the kind shown in both designs operate by firstly lifting the lever from the base and secondly lowering it once a piece of wood has been firmly put in place… between two of the teeth”, this was merely the Board of Appeal’s response to the argument that, in essence, for the purpose of assessing the overall impression produced by the earlier design, only the representation of that design in a closed position, as registered, was decisive.

More specifically, that statement by the Board of Appeal was intended to confirm and to clarify the Invalidity Division’s decision insofar as it rejected the applicant’s argument as being incapable of
calling into question the assessment of the overall impression produced by the designs at issue. That statement was also in response to the argument, put forward by the applicant before the Board of Appeal, that the appearance of a product in a closed position which resembles an earlier design when open was unknown, given that it had never been made available to the public.

Therefore, the applicant could not claim that the argument was raised for the first time by the decision of the Board of Appeal, and the applicant had not filed at any stage any evidence to support its argument that the fact in question was not well known.

Finally, the court recalled that the fact that the Board of Appeal did not agree with the argument raised by the applicant in front of the Invalidity Division was not a reason to overrule its decision.


Second plea: infringement of Article 6(1) of Regulation 6/2002

The second plea was divided into two parts and based on Article 6(1) of the regulation.

=> First part of the plea

The court first recalled the case law concerning the appreciation of the individual character of a design and the fact that this appreciation is based on the point of view of an informed user. In that case, the Board of Appeal was entitled to define the informed user, without that definition being challenged by the applicant, as being a person who is familiar with wood-splitting tools, which includes persons who use those tools to split logs that can be burned in a fireplace into smaller pieces.

The board had also correctly considered, without being challenged on that point, that the freedom of the designer in developing a woodsplitting tool was not severely limited inasmuch as, even though the tool had a functional purpose (splitting pieces of wood), so that it required a blade and a body, the designer could choose a particular shape for the body, the lever arm, and the handle, or the way in which the tool could be mounted on a surface.

The real contested issue was whether the design at stake and the earlier design produced the same overall impression, leading to a lack of
individual character.

Concerning the overall impression, the General Court stated that the applicant criticised the fact that the Board of Appeal had compared the representation of a closed tool in the contested design with the representation of an open tool in the earlier design.

Regarding the argument that the assessment of the overall impression produced by a design is to be based only on the graphic representation of that design as registered, the court answered that, according to case law, in the assessment of the individual character of a design in relation to any previous presence in the design corpus, account must be taken of:

– the nature of the product to which the design is applied or in respect of which it is incorporated, in particular the industrial sector to which it belongs;
– the degree of freedom of the designer in developing the design;
– whether there is saturation of the state of the art, which could be capable of making the informed user more attentive to the differences in the designs compared; and
– the manner in which the product at issue is used, in particular according to the manner in which it is normally handled when used.

Since the person making the comparison is an informed user, who is different from the ordinary average consumer, it is not mistaken, in the assessment of the overall impression produced by the designs at issue, to take account of the goods actually marketed which correspond to those designs at least for illustrative purposes, in order to confirm the conclusions already drawn from the representation of the designs.

Here, the earlier design represented a wood-splitting tool comprising a base and a lever connected by a hinge, the very purpose of which was to move the lever and thus to take a closed or open position. Thus, in view of the fact that the assessment must concern the overall impression produced by a design on the informed user, including the way in which the product represented by that design is used, the Board of Appeal could not be criticised, in view of the characteristics of the wood-splitting tool represented (which is specifically designed to cut wood by moving the lever), for also having taken account of the impression produced by the design in question on the informed user when the tool is in a closed position. This was true even if the representation of the earlier design is limited to a single view. This is even more true since the regulation does not oblige to include views reproducing the tool in all possible positions, so long as that graphic representation
allows the shape and the features of the design to be identified.

In the present case, it was held that the graphic representation concerning the earlier design, consisting of a single view, was clear and unambiguous, and as the closed position of a wood-splitting tool is innate to its purpose, the closed visual appearance of the tool in question could be deduced with sufficient clarity and precision from its representation in an open position. Since the Board of Appeal did not take into consideration characteristics which are not apparent from the view submitted when that design was registered, there was no violation of the principle of legal clarity. The different positions of the designs at issue could not be regarded as characteristics specific to those designs, so that the fact that the Board of Appeal took account of the earlier design in its closed position could not unfairly extend the protection of the earlier design beyond what was intended by its designer.

As a consequence, the Board of Appeal did not err in taking into consideration the representation in the earlier design in a closed position to
make the overall assessment.


=> Second part of the plea

The second part of the plea concerned the differences between the contested design and the earlier design, since the board had mentioned that certain differences were visible.

The applicant disputed only the Board of Appeal’s assessment that, for the informed user, those differences (in fact the two main ones) would play only a feeble role in the overall impression produced by the two designs.

The General Court stated that, even assuming that, in a direct comparison, the informed user did not consider that the two differences in question are interdependent, it must be held that he or she would also not perceive the differences highlighted by the applicant, consisting of a bent lever and an impression of an elegant, slim and solid object produced by the contested design, as being substantial differences. Since the informed user has a certain degree of awareness as regards the various designs which exist in the sector concerned and displays a relatively high level of attention and is particularly observant when using them, that user is also not an expert or a specialist.

As a consequence, it was held that those differences concerning the shape of the body and the lever could not dispel the impression of déjà vu which emerged from the designs at issue.

The General Court confirmed that the other differences had a very low weight in the overall impression. It stated that the applicant did not contest that, if the designs were considered as a whole, the differences in the shape and length of the blades (which are longer in the earlier design than in the contested design) were unlikely to have an influence on the overall impression produced on the user and that the comparison of the overall impression must be synthetic and not analytic.

The court then explained that the informed user will not see the minor differences when looking at the tool or using it. Those difference cannot dispel the impression of déjà vu which emerged from the designs at issue, in view of their common elements, which are among their most visible and important elements. Indeed, such differences are insufficiently marked to produce, by themselves, a dissimilar overall impression on the informed user, taking into account the low degree of restriction of the freedom of the designer in developing the design.
They were therefore not such as to confer individual character on the contested design.

Finally, the applicant disputed the lack of a safety device on the earlier design. It was held that it was a safety issue and that, in any case, it was too small to be seen. Therefore, the contested design would not be perceived as comprising three elements instead of two because of the presence of that device.

The court thus decided that the board had not erred when comparing the two designs and affirmed its decision.



This article first appeared on WTR Daily, part of World Trademark Review, in june 2020. For further information, please go to