Designs Committee Spotlights Five Notable Recent Cases - International Trademark Association

Design laws and the cases interpreting those laws continue to evolve globally. To help INTA members keep on top of this developing area, the Association’s Designs Committee—Resources Review Subcommittee has compiled this brief summary of five recent and noteworthy design cases.

Judgment of October 19, 2022, European General Court (Sixth Chamber), Praesidiad Holding v. European Union Intellectual Property Office, Case T-231/21

The EU General Court held a registered design valid because its features were not “solely dictated by technical function” notwithstanding the design also appearing in a utility patent application. The court reviewed the designer’s considerations, existence of alternative designs, and visibility of the product to the public, and found that the design was not created with just technical function in mind. If the invalidity applicant fails to rebut that evidence, its claim for revocation must fail.

Community Design (No. 127204-0001) with Description: Posts

~ Bruce Longbottom (Eli Lilly and Company, USA)

Judgment of October 4, 2021, US Federal Circuit, In re SurgiSil, 14 F.4th 1380

The U.S. Federal Circuit held that a design patent claim for an “ornamental design for a lip implant” could not be anticipated by prior art that disclosed an art tool, stating that “[a] design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.” U.S. applicants should carefully consider the article of manufacture in their claim, as that defines applicable prior art and affects scope of coverage.

Fig. 1 of SurgiSil’s lip implant design patent application “stump” tool

Image of the prior art

~ Deirdre M. Wells (Sterne, Kessler, Goldstein & Fox P.L.L.C., USA)

Judgment of May 31, 2022, High Court of Delhi, India, Havells India Limited v. Panasonic Life Solutions India Pvt Ltd & Anr., CS (COMM) 261/2022 & I.A. 6259/2022, 7226/2022

The Delhi High Court observed that both passing off and design infringement claims involving the same goods could be made in a single lawsuit (allowing dual protection under India’s design and trademark laws). Where the elements of the design are part of a larger trade dress, get-up, or presentation of the product through its packaging, action for passing off of a trademark would be maintainable. The plaintiff’s claim of trademark rights in registered designs did not invalidate those designs.


Havells ENTICER ART Series	Panasonic’s VENICE PRIME Series

~ Ali Areeb Zaidi (Lall & Sethi, India)

GME Pty Ltd v. Uniden Australia Pty Ltd, [2022] FCA 520

The Australian Federal Court found a competitor’s product embodying a design that was substantially similar in overall impression to the registered design to be an infringement. Functional limitations can determine a final product design, thereby restricting a creator’s freedom to innovate. In this instance, there remained creative freedom, so infringement was found. The case was filed and heard with judgment issued within only two months.

GME Design

Uniden Design

~ Georgina Hey (Norton Rose Fulbright, Australia)

Judgement of August 11, 2022, EUIPO Third Board of Appeal, PUMA SE v. Handelsmaatschappij J. Van Hilst B. V., Case R 726/2021-3

Thanks to a post on the singer Rihanna’s Instagram account, a Registered Community Design for a shoe was properly canceled, as the publication of the design on Instagram destroyed its novelty. The post was published more than a year before the application date, outside the 12-month grace period. Although the posted photo was slightly blurred and did not show the shoe from all sides, it did not leave a different overall impression on the informed user and was sufficiently widely seen to qualify as prior art.

~ Roland Mallinson (Taylor Wessing, UK)

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

Topics Designs