March 30, 2022
In May 2014, Jieyang Defa Industry Co Ltd obtained a Community Registered Design of the following design in Class 21.01 for “Doll’s heads, heads for dolls” (the CRD):
In August 2017, Mattel Inc. applied for a declaration of invalidity of the CRD on the grounds that it lacked novelty and individual character in relation to Mattel’s design for the “Barbie CEO Sculpture”. Mattel filed evidence of its earlier Barbie design as set out in a 2008 Polish catalogue from Mattel Poland, which included the following image:
The Cancellation Division ruled in favour of Mattel, finding that the CRD was invalid as it lacked individual character in relation to the earlier Barbie design. Jieyang’s appeal was dismissed by the Third Board of Appeal. Jieyang appealed to the General Court.
Designer’s degree of freedom
Jieyang argued that the freedom of the designer was restricted because of the need to respond to market preferences, meaning that the design had to be of a young girl with blue eyes and make-up. Therefore, any degree of freedom that existed in relation to dolls was more restricted when the objective was to target the consumers of “fashion dolls” conforming to certain beauty standards.
The GC said that, according to case law, a general design trend cannot be regarded as a factor that restricts the designer’s freedom, since it is precisely that freedom on the part of the designer that allows them to discover new shapes and new trends or to innovate in the context of an existing trend.
In fact, the question of whether a design does or does not follow a general design trend is relevant only in relation to the aesthetic perception of the design, which might mean that it has an influence on the commercial success of the product in which the design is incorporated. However, the question is not relevant in the examination of the individual character of the design, which consists of verifying whether the overall impression produced by it differs from the overall impressions produced by the earlier designs, irrespective of the aesthetic or commercial considerations.
Accordingly, the GC said, the need for doll manufacturers to follow market trends in order to promote sales or to comply with beauty standards was not relevant to the designer’s degree of freedom. Therefore, the BoA was right to find that the designer enjoyed a wide degree of freedom in developing dolls’ heads and that that freedom was not limited by market preferences.
Jieyang argued that, apart from the fact that the designs in question both concerned made-up dolls representing a young woman, the facial features and expression were sufficiently different to produce a different overall impression on the informed user. In addition, it said that the BoA had not considered all the views of the doll’s head making up the CRD.
The GC upheld the BoA’s findings that the designs had the following features in common: (i) the colour of the skin; (ii) the shape of the face; (iii) the shape and colour of the eyebrows, eyes and eyelashes; (iv) thin lips with the same smile; (v) a thin nose; and (vi) the position of all of those features. All these features and their positioning contributed to the impression of an identical face in the designs.
Accordingly, the BoA was entitled to take the view that the attention of the informed user would be drawn to the fact that both designs showed dolls’ heads, the faces of which were oval in shape with identical features and proportions, very similar make-up and the same expression. Therefore, the designs did not produce a different overall impression on the informed user.
In the GC’s view, the BoA had taken all the views making up the CRD into account in its assessment. For example, it had said that the hole at the base of the head of the CRD could not contribute significantly to the overall impression, because the informed user was aware that the purpose of that hole was to fix the head to the doll’s body and that such user would attach less importance to the differences in the shape of the skull, the absence of hair and to the presence of the hairline, because they would be aware that the doll’s head would be covered by hair.
The GC noted that the fact that a characteristic of a design is visible is an essential feature of that protection. However, the Community Designs Regulation (6/2002/EC) makes clear in Recital 12 that the protection of designs should not be extended to those component parts that are not visible during normal use of a product, and that those characteristics should not, therefore, be taken into consideration when assessing whether other features of the design fulfil the requirements for protection. Accordingly, the BoA was correct to find that the shape of the skull and the hole at the base of the head would not be visible in the contested design during its normal use.
As for other differences between the designs, namely the eyebrows, the shape of the eyes and the nose, the GC agreed with the BoA that, even if they existed, they were insufficiently marked to affect the overall impression. None of the differences cited could dispel the impression of “déjà vu” conveyed by the designs, considering their common elements, which were the most visible and important elements.
The GC also dismissed Jieyang’s argument that the overall impression on the informed user was different because of the user’s experience and level of attention. The GC said that, despite the user’s relatively high level of attention, he/she did not observe in detail minimal differences.
Therefore, the GC held that the BoA was right to find that the CRD lacked individual character within the meaning of Article 6 of the Regulation, and the appeal was dismissed. (Case T-84/21Jieyang Defa Industry Co Ltd v EUIPO EU:T:2021:844 (1 December 2021) — to read the judgment in full, click here).