When a company develops an original design for a product, it can register it as a Community design before the EUIPO. This registration protects the product’s aesthetic appearance against copies, provided the design meets certain legal requirements.
One of the key requirements is the design’s individual character, which means that the overall impression it creates on an informed user must differ significantly from that produced by earlier designs. Additionally, the design must not be dictated exclusively by the technical function of the product, as established in Article 8(1) of Regulation (EC) No 6/2002.
In the case of Decathlon’s Easybreath mask, popular among amateur divers and subject to controversy, the General Court of the European Union recently confirmed the validity of the registered design. The challenger argued that certain features of the design were dictated solely by its technical function and that it lacked individual character compared to a prior design.
The General Court clarified that, while the technical function influences certain aspects of the design, it does not exclude room for aesthetic choices.
Furthermore, the General Court conducted a detailed comparison between the contested design and the earlier one, concluding that there are significant differences in the overall impression they produce – enough to confer a distinct overall impression to the design, as required by Article 6.
Decathlon thus maintains its protection as a Community design. However, given the earlier design and the differences noted by the Court, questions arise about the scope of protection that should be granted to this design against other alternatives introducing differences of a similar level. This raises an interesting debate about the limits of protection under Regulation No 6/2002, particularly regarding the assessment of a design’s individual character and the need to strike a fair balance between protecting the rights of the holder and allowing competition and creativity in the market.
So, next time you put on your Easybreath this summer, remember you are wearing a piece protected under European design law. And not just anyone can copy it without consequences!
Paula Cerrillo
Abril Abogados
