In the town of Remscheid in Germany, a company called Visi/one is having some problems. Two years ago (2013) in order to progress they business they had developed a new product (they work with car-etiquettes), which had been deposited for patenting. The model presented, a particular folder able to preserve the vehicle etiquettes, had immediately encountered a big problem: the fact that it was quite a standard one.
Indeed in 2015 (two years after the patent) EasyFix GmbH , another company working in the same business field , raised a complaint to EUIPO , reporting the project had no real innovation , and that was similar to a lot of same products destined to the same market. The next year the european organization decided to follow the procedure in order to delete the project for lack of individuality. The German company had clearly protested over this rule , but the EUIPO had refused to accommodate their claim as again , they reported that the proofs produced by EasyFix (a series of largely used models of third parties identical to the Visio/one one ) had showed them how the product is not at all innovative and imitates a lot of already wide spread goods. At this Point H. Bourree e M. Bartz, the two legal corporates and lawyers for Visi/one, had decided to proceed their claim in front of the European court of Justice that had sentenced on 13 June 2019 about it.
THE PROOFS
The case brought by the two German lawyers was peculiar: first, they would argue against the proofs brought in the trial by the counterpart. Starting from a series of criteria dictated on the art 7 first paragraph of the regulation 6/2002, the accuse would say that the models presented as proofs were actually reputed to be circulating in the market in 2015 (this means after two years the project of Visi/one was deposited), and this would not then proof the fact that previous model were already reporting the same features of the incriminated project. A second fact that was contested by the accusing part , was that the EUIPO had worked on the case basing their judgment on a catalogue of an online page connected with EasyFix , that would show as proof that there were price lists containing the project clones before the actual plead for the registration by Visi/one was made. Fact is, a catalogue that allegedly would proof that correlation of time, was actually chaotic: a lot of time the address of the company EasyFix would be missing, or wrong (even differently spelled), and constant double pages and blank white parts were encountered in analysing it. EUIPO had reported already in the counter claim after their decision that they will not judge a book by the cover, and same will be for the catalogue: the fact it was so chaotic didn’t actually mean that projects were not online. The third point is on the same line as the second one, as the catalogue had reported on the Appendix that it was published for a particular “Salon of the Car market” in 2010, but yet the Accuse reported that this could not be proven, both for the chaotic state in which the document is, and because no real proof of the publishing had been reported. Finally, the proof shown are objectively different between each other and from the final model, which Visi/one was trying to register. What they are saying is that from a side the documents shown as proofs are actually not grounded in a certain time span that could be pointed to be antecedent to the project and its patenting.
On the Other side of the Ring EUIPO reports that Art 7 of 06/2002 regulation does not describe what kind of proofs had to be took into consideration while judging on the matter , but just that it has to be proof of previous existence of the project. Therefore, they are entitled to both manage and analyse whatever kind of product had been brought to them, this means there are no claims that could be made on the evaluation of the proof s as a whole. Basically while the Accuse is trying to show that materially the proofs brought could not demonstrate any particular fact, the Defense is reporting that they are obliged to consider, as per regulation, the while of the proofs, even taking in consideration the correlation between them, and that no presumption or abstract theory could not, always by the same regulation, being appointed indeed as proving anything (this regarding the accuse theory of EasFix inserting in a later moment the models in catalague , a theory that is a non proovable presumption). The goal of the Organization is not to calculate the possible presumptions, as the accuse is claiming when it reports the various documents are inconsistent or with contradictory descriptive data. These details are not relevant for EUIPO, as it is duty of the defense in any process to show objective proofs against the facts claimed, so it was for Visio/one to prove in front of them with objective facts that the counter claims were wrong. That had not been done, and at the opposite, they had just repeatedly worked their way in order to demolish any veracity of the proof just basing themselves on presumptions and not on the actual state of the proof. Obviously beside that they claim that the catalogue even if vague was published in time for 2010 , this means that it is not important to have real publishing date, as we know that he could been seen in 2010 , 3 years before the registration of the model by the German Company.
The first thing the Court did was actually to consider the fact shown and the actual object used to prove it: now the accuse is reporting there is one chaotic catalogue that could be open to interpretation and not demonstrating the fact at all. That is not all true (at least for the court) : they found out that in both the claims in first and second instance the catalogue was never one , but two in the same folder, one reporting the price listing of 2011 , and one reporting the models presented in an auto salon in 2010/2011. The catalogues are clearly chaotic as they had been scanned and then sent to the lawyer in order to prove, but they actually report a certain amount of certainty on showing the fact, or better on showing the model was already known before the registration. Then going in the details there are several parts that redirect to the actual date as 2010 or 2011 reporting the models of the cars and the date in which they will reach the market. Is clear therefore that we could not say that a document is not valid just because someone else had ruined its integrity, until it reaches the standard by law to be qualified as Proof. Hence it is even to syndicate the fact that the accuse is not recognizing the proof as relevant as it was already been not scrutinized by the EUIPO on the first and second instance, thing that does not mean it was not relevant , but just that the proof level had been reached in other ways , and that still the document was presented as thema probandum and therefore could not been forgotten as a simple document , as we said before for the regulation 6/202 the whole amount of the thema probandum is important in order to understand the value of the proof we have in front of us , this means that even if the proof won’t be took in consideration , anyways it is still a proof of the whole proving implant of the accuse. On this first point therefore, the Court had rejected all the requests of the Visio/one party, as there were no real claims on the invalidity of the proof, and they had been all accepted by the court.
The second point of that accuse again is related with the previous one: do you remember when they were saying that the proof they did took in consideration in second instance, wasn’t in first? Well now the accuse is saying: well if they say they weren’t took in consideration , why didn’t inform us that at least these proofs had became relevant now? Obviously the EUIPO said it was not its duty to inform anyone, and that the proofs were already available in the beginning to the accuse.
The court starts pointing out that in art 62 of the regulation 6/2002 , is stated it is necessary that any decision is took under proofs that had been evaluated listening to both the parts thesis , and therefore leaving the possibility to both to express their idea regarding the Thema probandum and about the Thema Decidendi.
It is obvious that in this case, the decision had been made based on other proofs, but this does not mean that the latter were not relevant or illicit, the opposite they are bot legit and relevant, just that the organization had decided to ground its decision on a safer basis, without taking in consideration the proofs. Then another part of the process is the possibility to the parts of presenting their position, and that had been possible, since the court, in every step of the proceedings that had been made till that moment had been reminded Therefore they were already informed both of the proof and of the fact that it could be used against them. Conseguentely, even this second point has no actual existence for the Court.
Third point is still based on art 62 , as the accuse underline that for that article any sentence shall be motived , reporting the whole of the legal and factual reasoning done in order to achieve that sentence. The accuse here underlines that having pointed that the catalogue (one of the two) was not dated before the actual registration they would have to know why this doc had been accepted.
On this again the court does see no invalid act by the commission : first it is to say that has per previous jurisprudence and case law is not necessary to proove or to motivate what is objectively clear under the eyes of the whole parts of the judgment , and having the documents incriminated here all the date reported in front Page (2011) , there is no need for the commission that was enquiring over the claim to motivate why they would not proceed on that : being objectively impossible demonstrate the opposite of what is clear to everyone by just looking to the document.
Finally (and we reach the last point moved by the accuse), the Visi / one attorneys complained about the fact that there is still a small space to authorship and create something even out of already known designs, and that the concept of individuality could be applied to the product, that therefore should no have been blocked in its path to the market.
The court restarts again to analyse the regulation 6/2002 , reporting that at the art 25 , paragraph 1 letter b)
“a drawing or a model could be declared null only in the cases foreseen in this disposition , and in particular if it does not have characteristic as novelty and individuality.”
Now the concept of individuality is very broad and related to another: Impression. Indeed the regulation underlines how much for Individuality we recognize as the fact that to the end user the product would generate a different general impression from another in the past (even if similar), and in taking under consideration how individual is a product we cannot left aside the whole question around the possibility of creative action by the Author himself (meaning that the author work had to be considered in evaluating the individuality). Another point therefore , is how this evaluation will be organized , to which the court recognize a procedure in the previous jurisprudence: first of all it is to determine which market the product is going to fill , or better which kind of product we have in front of us and where it is going; then it is to enquire about the end user, about the level of his knowledge of the product and if he is actually able to spot the difference between the previous products and this one (the prototype); how much there was possibility for the Author to innovate the matter and finally its contribution to innovation considering this third requirement : finally to the impressions of the end user both to the previous and for the latter version. Here therefore we got a 4-step rule to follow in order to evaluate the individuality of a particular product, a procedure that had been grounded in case law by the court. Now for the case the court is right now using the market is clear as the identity of the end use. Still three parts of the procedure miss on our valuation: end user, author liberty on adding new content, and finally the impressions.
Staring from the End user, the court states that it is important to now first the fact that he is the End user, the Iphone that is going to use the product in the way that it was meant to. On the other side this End user shall be informed, this means that he must know about the various model, even just by their appearance, and could relate and confront them, being so able to spot the difference. this means that for example when I buy a particular car, I buy that car because I see something in it and I know it is different from any kind of other car of different model: it is that particular car of that particular model that I want, and I recognize it as having a particular set of features and logos. Now in our case the commission had stated that the differences between registered model and previous one is not so strong or efficient to differentiate the product under the eye of the end user form another one. Now that could be said as true considering who are we talking about as End user : indeed if I have an expert in front of me that is able to recognize all the models and their design he would maybe spot any minimal difference between product A (previous) and Product B ( New). The fact is that anyway, even the jurisprudence do not consider an expert as a proper end user, as an end user is the average user with not a deep knowledge of the matter. Therefore as the end users were mere merchants, they could not spot the real difference between two products identical if not for minimal details. In addition, in that, the court had seen a right reasoning of UNIPO, and therefore first and second step of the procedure had been reported as correct.
One of the main problem will be to determine author’s freedom in adopting new features or new designs inside a particular field, considering both the regulation and the particular goal of the object. Now In the sentence by EUIPO it was stated how much broad was actually the possibility for the author to modify the design and the material of the product, things that instead had been kept obsequious to the previous models. Now the concept of the freedom of the author is quite wide in European Law literature: indeed it is said to not be the main component in the valuation of the individuality of the brand, but still it has a reverse proportion with the product (this means that much was larger the freedom that is recognized to the author, less the small details will count, while much is compressed, so the details will result as way more important). As you see so, the great question that the court is leading to is coming out: was the author free or was he much more bided by regulation laws and efficacy of the project? Now this would be considered as enlarged if we are talking of a product to which we could change shape or colour if the description of the product does not have any form or shape specified. Now for the etiquettes recipients that could not be said, as there is no regulation on what form or shape shall the etiquette had, and same could go with colours or materials. There is no particular regulation or internal law, nor any particular defiance due to the efficiency of the product that could lead us to say the author was forced to do it in some particular ways, the opposite he was pretty re in deciding what to do about it. At this point therefore the occur recognize that even the third check , on the author freedom , had been well made by the UNIPO , recognizing therefore that they had a large variety of design solution , none of them had been used.
Going to the fourth and last part of the enquire; we need to face with the Impressions. Now as we had said with impressions we describe the general idea that the informed end user had of the product, it is important that he does not feel any De JA vu in relation with other products he had seen or used in previous times. It is to underline as the court does that the comparison must be made taking in consideration models that had been distributed to the public or registered (not the one still on prototype). On the first instance the EUIBO had reported that they had not taken in consideration the other models, as it was clear that the goal of the etiquette was to show a simple etiquette without damaging it, and as every one of them is pretty similar and pretty as the same features, it is not necessary to evaluate as the end user would not put any attention in the slight differences seen by the accuse. The Euipo had underlined the same differences as irrelevant in second instance. Now the court had to analyse the design of the product, that result of three parts in every model, the transparent front, the square shaped back and finally an insert patch. Now if the same are the features and in the same way are modified in the new product , with no great difference for the end user , it results that they had no difference at all if not minimum ones.
Now let us make a quick recap:
– The proofs shown are considered valid, as it is in power of UNIPO to take them in consideration and evaluate them in the various layer of the proceeding.
– The sentence and the motivation is legit and could not be addressed as unlawful.
– Finally the evaluation of the individuality of the product shows that the product has no individuality or novelty whatsoever.
This is the point in which the Court clearly states that the whole proceeding is not granted in law , as the question that were raised were not relevant at all for considering the choices of the European organization as unlawful or wrong in any sense (even procedurally). Therefore after almost 6 years of legal battle , the court of Eu justice had decided that Viso/ one was not entitled to delete the decision , and therefore to have its patent back.
COMMENT
In this sentence the Court had touched again the thin ice that is the Copyright legislation, reporting how it must be evaluated a product as novelty or individuality able to make a difference inside other models in the market. The importance of dividing the of the individuality, or better of its way of reveal itself to the eyes of the enquirer, make us understand even some features of the individuality: it is not only the difference that guarantee uniqueness to the product, but even a constant evaluation based on the possibility of the author inside the market he would had liked to address, the final outcome of his project, and the impression that the end user has on the thing. We could therefore said that we had a triple way of conceptualizing the individuality based on this decision : we had an individual side , rapresented by the choice of the author and his own evaluation of the business field in which he would like to enter. Secondly, there is to evaluate the project or the product as an object: therefore in all his differences and all the regulation that shapes it before it actually came out form the mind of the author. Finally we had the social layer , the one represented d by the market itself moved by the informed end users : their impressions of what had been before is determinant in defining if something is really new and particular , or just the same.
Euro Case Law 