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04 gennaio 2008

First Must-fit Design Invalidity decision

Fabio Angelini

According to OHIM sources, for the first time a Community design has been declared invalid on the grounds that its form and dimensions were necessary in order to make it fit with another product. As everyone who deals with Designs knows, art. 8(2) CDR (“A Community Design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function”) was introduced to make sure that interoperability of products would not be hindered by extending protection to the design of mechanical fittings. The problem is that it was somewhat unclear whether or not the prohibition was absolute (i.e. the design represents the only one way to connect) or relative (the design represents one of many ways to connect). This decision seems to indicate the latter rather than the former is the OHIM’s point of view. The contested Community design 000232996-0001 had been registered for the product “fluid distribution equipment” including 4 views, with the first one as in the picture on the left.

The Office received an application for a declaration of invalidity in which the applicant argued that the product in which the RCD was incorporated was called a “module” which was fixed to the application head of a hotmelt application system.

In its decision of 20 November 2007 in case ICD 2970 the OHIM Invalidity Division first examined the CD holder and the applicant’s arguments.

The applicant had observed that the RCD showed two bores which were necessary for fixing the module to the application head and two holes had to fit exactly with two corresponding holes in the application head in order to provide glue and compressed air to the module. Furthermore, there was a recessed area which must be the corresponding negative of an elevation area at the application head for there to be a perfect fit.

The RCD holder denied that it was a “Must-Fit”-part, since only the two bores for the screws and two further bores for the adhesive hotmelt channels had a technical function. Since the RCD could be also mounted in different ways to different manifolds or other devices, the ´Must-Fit´-argument did not apply. The RCD holder also argued that when the module was connected to a flat surface, the recess had no technical function at all. Rather, it only had a design function. Thus, the “Must-Fit” criterion could be applied to the bores itself, but not to their positions and the shapes of the recess/elevations. There was no technical need to copy the exact shapes of the recess in order to achieve a similar technical function. Furthermore, the recess was not necessary to connect the product to another part.

The OHIM Invalidity Division rejected the RCD holder’s argument because it “does not eliminate the fact that the features of the RCD must be reproduced in their exact form and dimensions to fit to a given device. The location and shape of the holes, bores and recess of the module are pre-defined by the corresponding parts of the head. In particular, a head with a specific elevation only allows the mounting of a module with a corresponding recess. The recess must fit to the elevation like a key to a keyhole.” The Invalidity Division thus concluded that “the RCD subsists in features of appearance of a fluid distribution equipment which must necessarily be reproduced in the exact form and dimensions in order to permit the fluid distribution equipment in which the RCD is incorporated to be mechanically connected to the head of a hotmelt application system so that either product may perform its function”.

The OHIM’s decision seems thus to interpret art. 8(2) CDR quite narrowly, i.e. even though the RCD could be also mounted in different ways to different manifolds or other devices. In other words, the OHIM Invalidity Division interpreted the ´Must-Fit´-argument in the same way descriptiveness is considered by the current ECJ case law: it suffices that just one meaning of a term is deemed descriptive to deny registrability. It still strikes me that the OHIM Invalidity Division chose the most difficult and arguably controversial way to settle this case. While this should please someone like me who always looked for controversies -even when they were futile and ruined what mattered the most - as a matter of fact the application for invalidity also contained a quite attractive (and easier) way out: that, as a component part of a complex product, the RCD was not visible during normal use and thus was excluded from protection according to art. 4(2)(a) CDR. But perhaps if OHIM’s decision had applied art. 4(2)(a) no one would have noticed this decision, wouldn’t it?

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