The brachirulo. Relevance of the product when determining if a design has individual character

A design’s individual character is the cornerstone of Community design protection, being (i) a validity requirement; and (ii) essential for a design’s scope of protection. Novelty is another requirement, but it rarely applies because the novelty assessment is limited to cases involving identical or almost identical designs.

Although having an individual character is an essential requirement, the criteria for determining it are not always clear. In particular, one of the controversial matters when assessing a design’s individual character is whether the type of product concerned is relevant.

The recent Supreme Court Judgment of September 16, 2021 addresses this matter. The judgment assesses whether a design applying the traditional checkered pattern of the cachirulo (a traditional Aragón headscarf) to a neck handkerchief has individual character.

The issue is whether an informed user’s overall impression of the brachirulo differs from that produced by the products that existed at the time of the application for registration (the traditional cachirulo). In this case, reversing the first instance judgments, the Supreme Court finds that the overall impression is not different, thus rejecting the validity of the design.

According to EU case law (CJEU Judgment of September 21, 2017, cases C-361/15 and C-405/15P Easy Sanitary Solutions v. Grupo Nivelles), an earlier design applied to a product that is different from the one to which the later design relates does not attribute, by itself, an individual character to the earlier design if the informed user’s overall impression does not change.

The previous statement implies, contrario sensu, that-in contrast with the novelty requirement–the product to which the design applies does play a role in determining whether it has individual character, since a different application can change an informed user’s impression. However, we should admit that this second conclusion is not completely clear in the judgment, which at some points suggests that the type of product to which the design applies is irrelevant, regarding both novelty and individual character.