Yves Saint Laurent defeats claim that handbag design rights were invalid before EU court

The Court of Justice of the EU (CJEU) dismissed appeals brought by H&M against rulings by the Office for Harmonisation in the Internal Market (OHIM) which had previously confirmed that YSL's registered Community design rights were valid.

H&M had pointed to a design created prior to YSL's designs as evidence that the YSL designs lacked the "individual character" they required to qualify for Community design rights protection.

However, whilst the CJEU accepted that some features of the YSL designs were similar to features of the design referenced by H&M, there was still "significant" differences between that earlier design and the YSL handbag designs. Those differences were significant to the extent that the similarities in the YSL and H&M-referenced designs are "insignificant in the overall impression which they produce".

As a result it upheld the OHIM's ruling that the YSL designs "produced an overall impression on the informed user which was different from that produced by the earlier design".

Intellectual property law expert David Woods of Pinsent Masons, the law firm behind Out-Law.com, said that the case offered a good review of the approach that should be taken when assessing whether there is a protectable design.

"Whilst H&M sought to elevate the importance of the test of the designers' freedom to design to the assessment of a design's individual character, the CJEU confirmed that it is merely one of four factors that need to be considered," Woods said.

"The CJEU's view that the starting point for assessing a design's individual character is how an informed user perceives that design is good news for designers. Whilst the average person might struggle to see much of a difference in some competing retail products, from a legal perspective it will be the perceived views of a much more knowledgeable customer of specific products whose designs are in question that counts," he said.

"The judgment confirms that it may not be necessary for designers to come up with something radically different to what is already available on the market to qualify for Community design rights protection, and this is especially the case where there are statutory or technical constraints on products that limit the extent of freedom designers have when creating their designs," Woods said.

A design must be new and have 'individual character' in order to qualify for Community design rights protection.

According to the EU's Community Design Rights Regulation, registered Community designs are considered to have individual character "if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public … before the date of filing the application for registration or, if a priority is claimed, the date of priority".

The degree of freedom of the designer in developing designs must be taken into account during any assessment of the individual character of those designs. Other factors such as the nature of the product associated with the design and the sector in which the product belongs are also factors that should be considered, according to the Regulation.

According to EU case law, the assessment of whether a design has individual character is determined by the overall impression that it produces on the informed user of that design, which will change from case to case. The 'informed user' of the YSL designs, for the purposes of this case, was "an informed woman, who was interested, as a possible user, in handbags", according to the CJEU's judgment.

Previous case law has also established that if the technical function of products and the statutory requirements that apply to them will influence the extent of freedom that designers have in creating their designs for those products.

In its appeal before the CJEU, H&M claimed that the test of a designer's freedom was an "integral part" of the assessment of whether a design has individual character. It argued that the OHIM had failed to give sufficient weight to its finding that the YSL handbag designers had a high degree of freedom when creating their designs when it concluded that the designs had individual character.

The CJEU, though, rejected H&M's argument.

"It is apparent from [the EU's Community Designs Regulation] … that the assessment of the individual character of a Community design is the result, in essence, of a four-stage examination," the CJEU said.

"That examination consists in deciding upon, first, the sector to which the products in which the design is intended to be incorporated or to which it is intended to be applied belong; second, the informed user of those products in accordance with their purpose and, with reference to that informed user, the degree of awareness of the prior art and the level of attention in the comparison, direct if possible, of the designs; third, the designer’s degree of freedom in developing his design; and, fourth, the outcome of the comparison of the designs at issue, taking into account the sector in question, the designer’s degree of freedom and the overall impressions produced on the informed user by the contested design and by any earlier design which has been made available to the public," it said.

"As is apparent from the case-law … the factor relating to the designer’s degree of freedom may ‘reinforce’ (or, a contrario, moderate) the conclusion as regards the overall impression produced by each design at issue. It is not apparent … that the assessment of the designer’s degree of freedom constitutes a preliminary and abstract step in the comparison of the overall impression produced by each design at issue," the Court said.