A visual disclaimer indicates the features of an industrial design shown in the illustration, for which the applicant does not seek protection. This definition of a visual disclaimer was provided in the joint Communication of the Intellectual Property Offices belonging to the European Trade Mark and Design Network, as part of the convergence programme on graphic representations of designs. Applicants for national or Community industrial designs may therefore – through the institution of disclaimer – limit the scope of protection of the design to only specific features of the form. The disclaimer should clearly distinguish the features of the design that will be subject to protection from the features covered by the disclaimer. The most commonly used way of indicating the disclaimer is by dashed lines. Other forms of disclaimer may also be used, such as shading, a closed continuous line or blurring. The principles of using disclaimers and their permissible forms are presented in detail in the joint Communication of the Intellectual Property Offices.
The purpose of this institution is therefore to provide the applicant with the possibility of indicating the features of the product that will not be covered by protection. There may be many reasons for making such a reservation. For example, it may be the desire to indicate those elements of the submitted design that are excluded from protection under the provisions of industrial property law, such as features resulting solely from a technical function or invisible in the course of normal use.
One of the practical issues in the context of the discussed institution is the impact of disclaimers on the scope of protection, in particular when it comes to assessing the grounds for invalidating industrial designs, e.g. assessing the novelty and individual character of the design for which exclusions have been applied.
The answer to this question should be sought in the case law of the General Court of the EU.
In Case T-68/10 Sphere Time v OHIM, concluded by the judgment of the General Court of 14 June 2011, the company Punch SAS filed with OHIM (now EUIPO) an application for a declaration of invalidity of the following Community design based on Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1):
The application for a declaration of invalidity alleged that the disputed design was not new and that it lacked individual character within the meaning of Article 4 of Regulation No 6/2002 in conjunction with Articles 5 and 6 of that Regulation.
In support of its invalidity application, the Applicant submitted several earlier designs, including the earlier SYMBICORT design depicting the following illustration:
By decision of 31 March 2008, the Invalidity Division of the EUIPO declared the contested design invalid. It found that the design subject to the application for a declaration of invalidity lacked individual character, since it produced the same overall impression as the design disclosed earlier. That decision was the subject of an appeal filed by Sphere Time on 13 May 2008. By decision of 2 December 2009, the Third Board of Appeal of OHIM dismissed the appeal, finding the decision of the Invalidity Division to be correct. Considering that the opposing designs produced the same overall impression, the Board of Appeal ignored the following elements of the contested design, considering them to be excluded from protection: the clasp of the contested design, the watch hands and the rectangular element on the watch face.
Sphere Time brought an action before the General Court seeking annulment of the decision of the Board of Appeal.
The Appellant raised a number of objections to the decision of the Board of Appeal, including the fact that a number of elements were omitted from the assessment of the two designs under consideration, namely: the watch case, the watch itself and the clasp. According to the Appellant, these elements were not excluded from protection (they were presented in solid lines and should have been taken into account). Of course, the Appellant claimed that these elements significantly distinguished the two designs, constituting an important component of the disputed design, which did not appear in the earlier design.
In examining that plea, the Court stated that, first of all, it was necessary to determine which elements were in fact protected by the contested design and, consequently, which were relevant in the context of comparing the latter design with the SYMBICORT design. In that regard, the Court referred to point 11.4 of the Guidelines for the assessment of Community designs, adopted by decision EX-03-9 of the President of OHIM of 9 December 2003, entitled ‘Formal conditions for the representation of the design’, from which it follows that the following identifiers are permissible in an application for a Community design: dotted lines, which may be used to indicate elements for which protection is not sought or to indicate parts of the design which are not visible in a given view.
The Court stated that the view of the contested design, presented in the Community Designs Bulletin and in the Community Designs database, allows the conclusion to be drawn that certain elements of the design in question, in particular its clasp, are represented by less clearly marked lines than other elements, such as the lanyard and the watch case. However, due to the limited size of the summary view, it is not possible to determine with certainty whether the elements in question are represented by dotted lines. Any doubt in this regard is dispelled by the overall view of the contested design, which is available via the summary view in the electronic version of the Community Designs Bulletin and in the Community Designs database and which is, moreover, identical to the representation of the contested design appearing in the application filed by the applicant with OHIM. This view clearly shows that the clasp of the contested design is represented by dotted lines, as are the watch hands and the rectangular element on the watch face (Judgment of the General Court of 14 June 2011 in case T-68/10 – Sphere Time v OHIM – Punch).
Ultimately, the Court found that the clasp of the disputed design, the watch hands and the rectangular element on the watch dial were not among the elements protected by the disputed design, which means that the designer’s degree of freedom in relation to these elements is irrelevant in this case.
Consequently, the Court found that the Board’s position was correct, namely that the SYMBICORT design produced the same overall impression on the informed user as the contested design, with the result that the contested design was devoid of individual character within the meaning of Article 6 of Regulation No 6/2002 and was rightly declared invalid.
The presented position of the EU Court allows us to conclude that, firstly, the scope of protection of an industrial design is determined by the illustration of the design, and not its description, which may only serve to explain the illustration. Secondly, the circumstance of applying exclusions to protection (visual disclaimers) has a significant impact on the scope of protection of the design, and consequently on the method of examining the overall impression made by the contrasting designs. In the event that the illustration of the design includes exclusions, e.g. dotted lines to present unprotected features of the design, these features should be omitted in the comparative analysis in invalidation proceedings, i.e. when assessing the novelty and individual character of the design (analogously in proceedings for infringement of the right to register an industrial design in relation to a registered design). There is also no basis for taking into account elements excluded from protection when analysing the premise of the degree of freedom of the creator. It seems that such a position will also apply in the case of industrial designs for complex products. There are possible situations where disclaimers may be applied to a design that is a complex product (consisting of many replaceable components that allow it to be disassembled and reassembled), or more precisely, its component part, which may be an independent product and the subject of trade. In such a case, the assessment of the individual character of the design, including the degree of creative freedom and the model of the informed user (which in the case of a complex product may be different than in the case of a component part) should also focus exclusively on the elements of the design subject to protection.
