EUIPO DECISION ON WHEEL DESIGNS

Rims and wheels have been under discussion regarding design protection for many years.

EUIPO Decision on Wheel Designs

Before analyzing the interesting design case dated 7 October 2022, before the EUIPO about wheels/tyres, some background information should be mentioned. S Dizing S.r.l. (‘the design holder’), based in Romania, is the holder of the Community Design No 7397146-0001 (‘the contested design’). The design indicates wheels for vehicles. The registration was filed on 14 December 2019 and published in the Community Designs Bulletin on 8 January 2020.

Concaver Sp. z.o.o. ('the invalidity applicant’), based in Poland, is the owner of Registered Community Design (‘RCD’) No 7307277-0001 (‘the prior design’) which was filed on 28 November 2019 and published on 10 December 2019. The invalidity applicant filed an application for a declaration of invalidity of the contested RDC on 5 June 2021. The application was based on Article 25(1)(b) of Community Design Regulation (‘CDR’), in conjunction with Articles 4(1), 5(1)(b), 6(1)(b) and 25(1)(e).

A. Invalidity Application No ICD 115928

The invalidity applicant claimed that the prior design is identical to the contested design, differing only in immaterial details and creates the same overall impression on the informed user as the contested design. In other words, the contested design lacks novelty and individual character.

The Invalidity Division declared the contested RCD invalid on 15 November 2021. As stated in the judgement the informed user is likely to be a professional in the vehicle tyre trade acquiring wheel rims for fitting tyres onto vehicles. From the standpoint of the informed user, taking into account the designer’s freedom in the contested design and the other circumstances of the case as set out above, the overall impression conveyed by the contested design does not differ from that conveyed by the prior design.

The designer’s freedom is restricted because the wheel must be compatible with the vehicle for which it is intended. This is why wheels normally have evenly distributed repeating elements. However, there are many ways to shape, in particular, the elements connecting the rim to the hub. Although, the contested design and the prior one look strikingly similar with only minor differences. 

The contested RCD is invalid, based on the findings that the contested design lacks individual character within the meaning of Article 6(1)(b) CDR when compared with the invalidity applicant’s earlier RCD No 73072770001. Since the application was fully successful on this ground, the Invalidity Division found that there was no need to examine the other grounds invoked in the application.

B.  Appeal

On 11 January 2022, the design holder filed an appeal against the contested decision, requesting that the decision be set aside. In its statements of grounds, the design holder did not put forward any argument with reference to the lack of distinctive character of the contested RCD when compared with the invalidity applicant’s earlier RCD No 7307277-0001, but claimed instead that the contested decision must be annulled because the invalidity applicant’s RCD No 7307277-0001 does not constitute a valid earlier disclosure capable of invalidating the contested design.

i. Scope of the appeal and the evidence submitted at the appeal stage

Although the holder did not directly refer to any provision of the CDR in support of its claim, the Board notes that exceptions to disclosure are set out by Article 7(2) and (3) CDR. In light of the above, the question of at what stage of the administrative procedure the proprietor of a contested design may rely on the exceptions provided for in Article 7(2) and (3) CDR arises and, in particular, whether he can do so for the first time before the Boards of Appeal.

The design holder remained silent before the Invalidity Division. However, the Board considered that no provision of the CDR precludes the benefit of said exceptions from being relied on, for the first time, before the Board of Appeal, in response to the decision of the Invalidity Division. Consequently, the Board of Appeal has jurisdiction, inter alia, to rule on the claims of the design holder relating to the benefit of Article 7(2) and (3) CDR. Therefore, although the Board will assess the legality of the contested decision in full, only the evidence and arguments provided by the opponent in its statement of grounds will be analyzed in depth, namely the issue of the disclosure of the invalidity applicant’s earlier RCD No 7307277-0001.

ii. The evidence submitted for the first time at the appeal stage

 Pursuant to Article 63(2) CDR, the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. In stating that the Office may, in such a case, decide to disregard evidence, Article 63(2) CDR grants the Board a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account.

The Board notes that, in the present case, the evidence filed at the appeal stage is prima facie relevant for the outcome of the case. In addition, although the evidence at issue is new, and not supplementary to evidence already submitted or be filed to contest findings made in the contested decision, the Board considers that it should be taken into consideration. These documents refer, in fact, to the exceptions presented by the design holder before the Board. Given that said exceptions must be accepted, in light of what has been explained above, it follows that the documentation in support of them shall be accepted, too.

iii. Disclosure pursuant to Article 7 CDR

Pursuant to Article 7(1) CDR, for the purposes of applying Article 5 or Article 6 CDR, a design is to be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the filing date or, as the case may be, the priority date of the contested design, except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the European Union.

The design holder argues that the wheels for vehicles as covered by the contested RCD were disclosed by the same design holder before the disclosure of the prior design; thus, the contested RCD was the first made available to the public. He presented evidence from previous automotive fairs to prove his claim. The Board notes that the arguments and evidence provided by the holder do not contain sufficient reference to the fact that the holder itself could be considered as the creator of the prior design, nor the successor in title to that creator. Therefore, the exception to disclosure under Article 7(2) CDR does not apply in the present case.

In light of the aforesaid, the Board concludes that the design holder has not proved that in the case at issue the exceptions to disclosure provided for by Articles 7(2) and (3) CDR apply.

iv. Lack of individual character pursuant to Article 6 CDR

As stated above, the design holder did not put forward any argument with reference to the lack of distinctive character of the contested RCD when compared with the invalidity applicant’s earlier RCD No 7307277-0001.

The contested RCD and the previous design create the same overall impression and they are highly similar: Both share the same two major elements: both have spokes; the number of spokes is identical (ten); the spokes taper towards the rim; the junction between the spokes and the rim is identical; the spokes have an identical front surface shape, especially on their front side; the spokes when viewed from above are similar to the shape of a letter ‘Y’; the spokes form five pairs of spokes. They differ in some banal elements that can be considered immaterial, however, these features are not of such a character as to alter substantially the product’s appearance. From the informed user’s perspective, both designs produce the same overall impression. The designs are therefore identical in the sense of Article 5 CDR. Even if the contested design is new, it certainly does not have individual character. As a result, the Board confirms that the contested design lacks individual character within the meaning of Article 6(1)(b) CDR.

C. Conclusion

Since the appeal has been unsuccessful, the design holder must be ordered to bear the costs incurred by the invalidity applicant, in accordance with Article 70(1) CDR.