Decathlon manages to stay afloat in design invalidity proceedings

Delta-Sport subsequently appealed to the General Court seeking an annulment of the Board of Appeal’s decision, a Declaration of Invalidity against the contested design, and an order for the EUIPO to pay costs.
 

The General Court Decision

Delta-Sport’s appeal to the General Court relied on two pleas in law; alleging that the appearance of the design is dictated exclusively by technical function, and that the design lacks individual character.
 
Appearance dictated exclusively by technical function – Delta-Sport submitted that the rounded oval shape of the frame of the mask corresponds to the anatomy of the human face, and that the shape is technically optimal in terms of fluidity and ensures a regular and precise fit of the mask together with the best possible field of vision. Delta-Sport also submitted that the head strap exclusively serves for secure and comfortable attachment of the mask to the head. To support its argument, Delta-Sport raised five points, claiming that:

1. The earlier patent and utility models which it claimed were identical to a large extent to the contested design.

2. The Board of Appeal did not sufficiently account for the principles set out in the DOCERAM case. Delta-Sport argued that the Board of Appeal placed excessive importance on the existence of alternative shapes of the frame and head strap of the contested design, when the DOCERAM judgment said that the existence of alternative shapes play no role in the examination of whether the essential characteristics of the contested design are exclusively dictated by technical function.

3. The credibility and probative value of particular pieces of evidence referred to in the Board of Appeal decision is disputed, particularly a promotional video about the development process for the contested design, and certificates from the designer and project manager.

4. The Board of Appeal ignored evidence provided by Delta-Sport, particularly certain statements and adverts by Decathlon for the mask which refer only to its technical advantages and functionality.

5. Neither the design prizes awarded for the mask nor a judgment of the Court of Appeal in Paris in January 2022 rejecting a declaration of invalidity for a design identical to the present contested design show that the essential features of the contested design are dictated by considerations other than those of a technical nature.

As expected, the EUIPO and Decathlon disputed the above arguments. 

The General Court said that to determine whether a design may be declared valid on the ground that features are dictated exclusively by technical function, one must first determine the technical function of the product, secondly analyse the characteristics of the appearance, and thirdly examine whether those characteristics are exclusively dictated by the technical function. The identification of the characteristics of the appearance may be carried out either by simple visual analysis, or an in-depth examination including investigations, expert opinions, or data relating to previously granted IP rights for the product concerned; the type of analysis will depend on the specific case, particularly having regard to its degree of complexity. If at least one feature of the appearance is not exclusively dictated by technical function, then the design remains valid and confers protection for that feature. However, if all the features of appearance are exclusively dictated by technical function, then the design will not be valid unless the arrangement of the features was imposed by considerations not relating exclusively to the need to perform the technical function. 
 
The Board of Appeal had previously decided that at least two features of the contested design were not dictated exclusively by technical function: the oval shape of the mask frame and the shape of the head strap attachment. The General Court agreed, stating that the narrow fastening strips connected to the middle of the head strap were aesthetic choice, and that the oval shape of the frame was not exclusively dictated by technical function as other shapes could still enable a mask to be properly attached to the face. The General Court agreed that the Board of Appeal had been correct in examining documents relating to the earlier patent and utility models, and in their assessment that they did not lead to the conclusion that an oval mask and the shape of the head strap in the contested design were dictated exclusively by technical function.
 

Misinterpretation of the DOCERAM judgment

The General Court found that Delta-Sport had misinterpreted the DOCERAM judgment and said that while it is apparent from the DOCERAM judgment that the existence of alternative shapes is not decisive of whether the characteristics of the contested design are exclusively dictated by its technical function, the existence of alternative designs capable of performing the same technical function is an objective circumstance relevant to the assessment. The General Court said that the consideration by the Board of Appeal was only one element of their assessment and did not play a decisive role.  
 
In respect of evidence provided by Decathlon about the design process, specifically a promotional video and statements from the designer and project manager, the General Court concluded that the Board of Appeal had correctly assessed that it had limited probative value as Decathlon had an interest in the validity of the design, and that the evidence must be corroborated by other evidence to demonstrate that the design was not dictated exclusively by technical function. Such further evidence was found to corroborate this.
 
Overall, the General Court concluded that the Board of Appeal did not make an error of assessment when it concluded that at least the oval shape of the mask and shape of the head strap attachment were not exclusively dictated by technical function, but actually formed part of aesthetic choice. The first ground of appeal was therefore rejected as unfounded.
 

Lack of individual character 

Delta-Sport also questioned the Board of Appeal’s assessment that the design had individual character. Delta-Sport submitted that the earlier patents and utility models had been made available to the publication and that the overall impression of the contested design on the informed user did not differ from those earlier rights. Again, the EUIPO and Decathlon disagreed.
 
The General Court noted that individual character is to be assessed by the overall impression created on the informed user, which must be different to any design made publicly available before date of the contested design application (or priority date, if applicable), and that individual character results from a different overall impression or absence of a déjà vu moment for the informed user. When assessing individual character in relation to prior art, the nature of the product to which the design applies (particularly the industrial sector to which it belongs), the degree of freedom of the designer in the product development, a possible saturation of the state of the art, and the way in which the product is used must be considered. The point of view of the informed user who is “a person with particular vigilance and who has some knowledge of the prior art” must also be considered.
 
The Board of Appeal had previously determined an earlier French patent application constituted a prior disclosure. Additionally, it determined that the designer of a diving mask had to take account of functionality constraints i.e. the need for the user to breathe, have visibility under water, and for the mask to be waterproof. The Board of Appeal also noted on the other hand that the freedom of design choice for designers of diving masks was relatively high for any non-technical parts of the mask e.g. the exact shape and proportions of certain elements, the colour, materials, and decorative elements. The designer’s freedom could also be exercised over the shape and size of the outer frame, and the shape and location of the tie-down straps. Taking all these into consideration the Board of Appeal concluded that, in particular, the shape of the contested design’s snorkel cap, the presence of a notch on the nose, and the shape of the inner skirt, all produced an overall different impression on the informed user from that of the earlier disclosed patent application.
 
The General Court agreed with the above findings and said the Board of Appeal were right to identify “sufficiently marked differences” between the contested design and the earlier disclosed design, particularly the shape of the oval outer frame on the contested design compared to the earlier being squarer, and the X shape of the head strap connected in the middle and fixed in a lower part of the frame, versus the earlier wide strap covering the ears and a large part of the skull.  
 
Overall, Delta-Sport did not show the General Court that there were any errors in assessment of individual character by the Board of Appeal. Thus, this second ground was al rejected and, therefore, the appeal dismissed in its entirety.
 

Key takeaways

Some key thoughts to takeaway:

• This case is a good example reflecting the coexistence and independence of patent and design protection. The General Court (and the Board of Appeal) have done a good job at determining the features of the design and establishing whether these can be afforded aesthetic value notwithstanding the parallel patents filed by the owner.

• On that point, it is also particularly interesting to note the General Court’s balanced stance vis-à-vis the DOCERAM case – while it is true that a “multiplicity of forms” theory can no longer be the only deciding factor, it is still an important objective circumstance relevant to the assessment. This also reflects that an interpretation of CJEU’s decision in DOCERAM should not be misconstrued as an absolute adoption of the “causality” theory.

• A design will not be declared invalid if at least one of its features is not dictated exclusively by technical function. To determine whether features of a design are dictated exclusively by technical function, one must determine the technical function of the product, analyse the characteristics of the appearance, and examine each of whether those characteristics are exclusively dictated by the technical function. The type of analysis will depend on complexity of the design in question. 

• Individual character is assessed by the overall impression created on the informed user. The overall impression must differ from prior art and is assessed by considering the nature of the product to which the design applies, the industrial sector to which it belongs, the degree of freedom the designer had in the product development, a possible saturation of the state of the art, and the way in which the product is used.  

• Certain evidence from the proprietor of a contested design, such as promotional videos, may have limited probative value as the proprietor will have an interest in the validity of the design. As the evidence may present the subjective opinion of the proprietor it should be corroborated by other evidence to demonstrate that the design is valid. However, video evidence clearly taken prior to the date of application can reinforce credibility of the evidence.  

• Delta-Sport’s claim of lack of individual character appears to be relatively light and not well substantiated. The selected prior art conveys a clearly different impression. This has repercussions, since Delta-Sport (that appears to have developed a competing design) may well be trying to “squeeze” (in a Trunki/Gillette defence style) Decathlon, and yet this decision from the General Court is not any better for Delta-Sport than the Board’s, at least in narrowing the features and scope of protection afforded to Decathlon’s design. The remaining question may therefore be: has this torpedo been sufficiently effective, to the extent that the features deemed non-technical and afforded individual character are distinct from those of another, competing design?
  
  If you have any questions relating to this topic, please get in touch with Lisa Waithe, Fernando Di Blasi, or your usual Kilburn & Strode advisor.