Background to the case

On 13 March 2019 Creative 7 UK Ltd filed and registered the following travel bag:

Distribuzione Junior S.R.L. then submitted an application for a declaration of invalidity on the following grounds:

  1. The Community design corresponds to a men’s rucksack sold under the name ‘Universal Cabin Bag – 2 in 1’.
  2. The Community design was invalid ab initie, since at its filing date it did not meet the requirements for registration and had already been disclosed in accordance with Article 7 of the Community Design Regulation on the website, which belongs to Creative 7.
  3. The invalidity applicants have been on the market since 27 November 2009.
  4. The registered Community design lacks individual character in relation to two other previously disclosed designs.

Decision of the Cancellation Division of EUIPO

Having assessed the stated facts, the Offices issues the following considerations:

– For the purposes of proof of novelty and individual character, a design shall be deemed to have been made available to the public if it has been published after registration, or exhibited, marketed or otherwise disclosed, before the date of filing of the Community design or the date of priority of the Community design, if a priority is claimed, except where these facts could not reasonably have become known in the normal course of trade to the circles specialised in the sector concerned operating within the European Union. It is further stated that it is for the applicants for invalidity to prove the disclosure of the earlier designs.

– In order to establish individual character, it is stipulated that the degree of freedom of the designer in developing the design must be taken into account and that a four-step review must be carried out:

1) The nature of the product and the industrial sector concerned. In this case, that of airlines.

2) The informed user, which is understood as an intermediate concept between the average consumer and an expert who possesses a certain degree of technical knowledge in the direct comparison.

3) The freedom of the author. The more freedom the designer has in developing the design, the less likely it is that small differences between the compared designs will cause different overall impressions on the informed user and, in flight bags, the designer’s freedom is only limited to the extent that the product must be able to safely contain personal effects while complying with the airline’s maximum measurement standards.

4) Overall impression. The drawings or models being compared are shown below:

Earlier design
Refuted design

The Office considers that it is clear that the same impression is created on the informed user in both designs. The view of the Community design (the second image) reproduces the product in an intermediate phase, when the lower part is opened to create the complete package. The perspective from the back of the contested design is also shown. These views are not included on the website. However, none of these views contain relevant elements affecting the overall impression.

In view of the above, it is concluded that the contested design does not produce a different overall impression on the informed user than the previous design. Consequently, the contested design lacks individual character within the meaning of Article 6(1)(b) of the Community Design Regulation and must be declared invalid.

In conclusion, the Invalidity Division of EUIPO upholds the application for a declaration of invalidity and therefore declares the registered Community design invalid.

Invalidity Decision No. ICD 114 361 of the Intellectual Property Office of the European Union (Operations Department) of 12 May 2021.