la funzione tecnica; connessione di prodotti modulari

Lite sul design di bottiglie di gin: Mark & Spencer batte Aldi in appello UK

Ecco le bottiglie in lite:

prodotto concorrente di ALDI, stimato in contraffazione

Il giudice inglese di appello conferma la contraffazione con decisione 27.02.2024, Case No: CA-2023-000521, della Court of Appeal, Judge Hacon (di cui ci notizia e a cui ci offre il link Alessandro Cerri in IPKat) su normativa ante-Brexit ma dalla stessa non influenzata (lo dice espresameente la corte) e quindi di interesse per la UE.

Conclusioni del giudice di primo greado (come da sentenza di appello)

<<The judge’s assessment may be summarised as follows.
30. The relevant sector. The relevant sector was, as Aldi contended, spirits and liqueurs in the UK.
31. The informed user. It is common ground that the informed user is a consumer. It followed from the judge’s identification of the relevant sector that the informed user was a UK purchaser and consumer of spirits and liqueurs. As an informed user, the user would exercise a relatively high degree of attention compared to the average consumer who is the touchstone in trade mark law.
32. The designer’s degree of freedom. If a snow effect was to be used, it had to be created by the use of gold flakes. The aperture of the bottle had to accommodate the injection of the liqueur with gold flakes in it, but there was no reason to suppose that this was much of a limitation. If a design was to be printed on the side of the bottle, it would be simpler to print on a straight side. The more colours the design had, the more expensive production would be. Otherwise, the designer had considerable freedom, particularly with regard to the shape of the bottle and the design to be printed on it.
33. As to the design on the side of the bottle, if gold snow was to be used in the liquid and if a design was to be printed on the side of the bottle, it made sense to have a winter design. But there was almost complete freedom as to how to make a design look wintry.
34. There was no design constraint requiring the liqueur to be illuminated. There would be no other practical place to put a light other than in the base of the bottle, but that required the choice of a light in the first place.
35. Features solely dictated by technical function. Although Aldi argued that four features of the designs were solely dictated by technical function, all four features were aspects or consequences of aesthetic choices made by the designer.
36. The relevance of branding. The Aldi bottles bear the words “The INFUSIONIST
Small Batch”. This was relied on by Aldi as a difference from the Registered Designs in which no words appear. The judge’s assessment was that the word
“INFUSIONIST” was clear enough to make an impression, whereas the words “The” and “Small Batch” were less conspicuous and played no significant additional part in the overall impression of the designs.
37. Effect of the priority date and grace period. The judge found that a number of designs relied on by Aldi did not form part of the design corpus due to the effect of the priority date (15 December 2020) and the grace period (which started on 15
December 2019).
38. The design corpus. The judge reproduced images of 33 bottles in [70] and [71] which represented a small proportion of the totality of the design corpus. Excluding M&S’s products, four bottles with an integrated light were marketed before December 2020, but none with a shape like that of the Registered Designs. Five members of the corpus had a snow effect of some sort, none with a bottle shape similar to that of the Registered Designs. Two had both a snow effect and an integrated light. Saverglass, the manufacturer of the bottles supplied to M&S, had a UK registered design for the shape of those bottles (referred to as the “botanics” shape) which formed part of the corpus. Of the totality of the design corpus, excluding M&S designs made available in the grace period, only the M&S 2019 Snow Globe shown in [33] had the botanics shape and a snow effect (but no integrated light).
39. Comparison of the overall impressions. The judge expressed his assessment of the comparison as follows:
“80. The features that the informed user would note as being in
common between the RDs in suit and the Aldi bottle are these:
(1) The identical shapes of the two bottles. The informed
user would pay little attention to the fact that both have
in part straight sides. That is true of the vast majority
of the spirit bottles shown in the evidence. The
informed user would take into account that for
economic reasons the range of bottle shapes for spirits
and liqueurs does not extend to every functional and
aesthetic possibility. However, this would not detract
from the apparent identicality in shape when measured
against the design corpus as a whole.
(2) What appear to be the identical shapes of the two
stoppers.
Judgment Approved by the court for handing down. M&S v Aldi
(3) A winter scene over the entirety of the straight portion
of the side, consisting in one case entirely, and in the
other case mostly, of tree silhouettes.
(4) In the case of UK 80 and 84, a snow effect.
(5) In the case of UK 82 and 84, an integrated light.
81. In my judgment and with the design corpus in mind, each of
those similarities would appear significant to the informed user
and cumulatively they would be striking.
82. There are differences. Aldi relied on these:
(1) The winter scene of the RDs in suit is in white only and
features a stag and a doe. On the Aldi bottles the scene
is in white and a colour with trees only.
(2) The Aldi bottle has the “Infusionist” branding. The
RDs in suit have none.
(3) The foregoing two features of the Aldi bottle give it a
front. There is no front to the RDs in suit.
(4) The Aldi winter scene is brighter and busier than that on
the RDs in suit.
(5) The Aldi stoppers have a watch strap label with the Aldi
logo on the top, the RDs in suit do not.
(6) The Aldi stoppers are darker in shade than those of the
RDs in suit.
83. Going back to the statutory test, it is whether the RDs in suit
and the Aldi bottles produce a different overall impression. In
my judgment they do not because of the features they have in
common, set out above. The differences to which Aldi points
are there, but they are differences of relatively minor detail
which do not affect the lack of difference in the overall
impressions produced by the Aldi bottles on the one hand and
each of the RDs in suit on the other.” >>

Sul motivo di appello 7 relativo al comparison:
<<61 Since the judge’s conclusion that the designs of the Aldi products produced the same overall impression on the informed user as the Registered Designs involved a multifactorial evaluation, this Court can only intervene if he erred in law or in principle: see Magmatic at [24] and compare Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15, [2019] Bus LR 1318 at [78]-[81] (Lord Hodge) and Re Sprintroom Ltd [2019] EWCA Civ 932, [2019] BCC 1031 at [72]-[78] (McCombe, Leggatt and Rose LJJ).
62. Aldi contends that, even if it fails on grounds 1-6, the judge did fall into error. Junior counsel for Aldi concentrated his oral submissions on two points. First, he argued that the judge had not properly considered the impact of the absence of the snow effect and the integrated light on the comparison with respect to the Registered Designs which did not include those features. Secondly, he argued that the judge had given undue weight to the shapes of the bottles and stoppers, particularly given that the shape of the bottle was protected by a third party registered design and that the design corpus included bottles with similar stoppers.
63. I do not accept either of these arguments. Given that I have concluded that UK 78 and UK 80 do both include a light, that point falls away. As for the point about the snow effect, at best this would mean that Aldi infringed UK 80 (and UK 84) but not UK 78 (or UK 82). The correct approach, however, must be to compare UK 78 and UK 80 Judgment Approved by the court for handing down. M&S v Aldi (and UK 82 and UK 84) respectively with the Aldi products in the same states. I think that is effectively what the judge did, although he did not say so explicitly. The weight to be given to the shape of the bottles and the stopper was a matter for the judge as part of his overall assessment. The fact that the shape of the bottle was protected by a third party registered design is irrelevant apart from the fact that the design therefore formed part of the design corpus which the judge took into account.
He also took the stoppers in the design corpus into account. He made no error of
principle in comparing the overall impressions of the Aldi products with those of the Registered Designs, and his conclusion was one that he was fully entitled to reach”.
Conclusion

La tutela dei modelli per sistemi modulari è data anche se una caratteristica è funzionale, purchè le altre non lo siano: nuova conferma di validità per la privativa sui mattoncini Lego

Sul complesso rapporto tra i §§ 1, 2 e 3 dell’art. 8 reg. UE 6 del 2002 su disegni e modelli comunitari, interviene il Trib. UE 24.01.2024, T-537/22, Delta Sport c. EUOPO-Lego.

Il succo è che, per affossare la privativa per fiunzionalità dell’aspetto, bisogna che tutte le caratteristiche di questo siano appunto dettate da esigenze funzionali. Nel caso specifico, solo una delle sette lo era (ex § 2), per cui l’esenzione di cui al § 3 può operare per le altre sei: e per questo la privativa non può essere invalidata.

In altre parole, per quest’ultimo scopo, bisogna che tutti gli aspetti del prodotto siano dettati solo da esigenze funzionali.

Nel caso specifico le sette caratteristiche erano tutte funzionali ex § 1 e sei di queste anche ex art. § 2: da qui il “pericolo” per Lego , dato che l’esenzione ex § 3 è riferita solo al § 2, non al § 1.

E’ confermata allora la validità della privativa sui mattoncini, già sancita nella precedent sentenza del Tribuinale UE del 2021 (su cui v. mio post).

<<31 In paragraph 80 of the annulment judgment, the General Court also explained that, in order to preserve the effectiveness of Article 8(3) of Regulation No 6/2002, where EUIPO, when examining an application for a declaration of invalidity based on Article 25(1)(b) of that regulation, read in conjunction with Article 8(1) of that regulation, finds that the characteristics of the appearance of the product concerned by the contested design fall within both Article 8(1) and Article 8(2) of that regulation, and where the proprietor of the contested design relies on the benefit of Article 8(3) of that regulation, it must examine whether those features are capable of falling within the protection of modular systems for the purposes of that latter provision, including when the applicant for a declaration of invalidity did not rely on Article 8(2) of that regulation.

32 In the contested decision, after finding that all the characteristics of the contested design fell within Article 8(1) of Regulation No 6/2002, the Board of Appeal applied Article 8(2) of that regulation. Since that article applied, according to the Board of Appeal, to all the characteristics of that design, the Board of Appeal examined whether it met the requirements of the exception provided for by Article 8(3) of that regulation. The Board of Appeal concluded that that design fell within that exception protecting modular systems, with the result that the application for a declaration of invalidity had to be rejected.

33 It follows from the foregoing that the objective of the application of Article 8(2) of Regulation No 6/2002, in the contested decision, was to determine, in accordance with the annulment judgment, whether the exception provided for in Article 8(3) of that regulation could possibly be applied in the present case and whether the contested design could thus remain valid, although all its characteristics were solely dictated by its technical function within the meaning of Article 8(1) of that regulation.

34 In the second place, it is necessary to analyse whether, in this context, the applicant’s arguments concerning the impossibility of applying Article 8(2) of Regulation No 6/2002, in relation to the characteristic of the smooth surface, are likely to result in the unlawfulness of the Board of Appeal’s finding, according to which there was no reason to declare the contested design invalid.

35 In that regard, it should be borne in mind that, as the General Court found in paragraph 96 of the annulment judgment, if at least one of the features of appearance of the product concerned by a contested design is not solely dictated by the technical function of that product, the design at issue cannot be declared invalid under Article 8(1) of Regulation No 6/2002.

36 The same interpretation applies, by analogy, to Article 8(2) of Regulation No 6/2002, with the result that a design can only be declared invalid, pursuant to that article, in the case where all its characteristics fall under that article, which implies that, first, they meet the requirements provided for by that article and, secondly, none of them fall within the exception, provided for by Article 8(3) of that regulation.

37 It follows that a design is declared invalid, in accordance with the provisions of Article 8 of Regulation No 6/2002, only in the case where all of its characteristics are excluded from protection. If at least one of its characteristics is protected, in particular due to the application of the exception provided for in Article 8(3) of that regulation, the design remains valid.

38 In the present case, it should be observed that the parties do not dispute the Board of Appeal’s findings according to which six of the seven characteristics of the appearance of the product concerned by the contested design, which are referred to in paragraph 9 above, fall within both Article 8(1) of Regulation No 6/2002 and Article 8(2) of that regulation. In support of its plea relating to the infringement of Article 8(2) of Regulation No 6/2002, the applicant claims that that article does not apply to the smooth surface, which constitutes only one of the seven characteristics identified by the Board of Appeal in the contested decision.

39 Thus, even in the event that, as the applicant maintains, one of the seven characteristics of the contested design, namely the smooth surface, would not be covered by Article 8(2) of Regulation No 6/2002, the application of the exception provided for in Article 8(3) of that regulation would possibly be affected in relation to that characteristic alone, with the result that that exception would in any event cover the other six.

40 To the extent that a design is declared invalid only in the case where all its characteristics are excluded from protection, the applicant’s arguments which, even if they were assumed to be well founded, would have the result of affecting the protection of only one of the seven characteristics of the contested design, are therefore not likely to call into question the validity of that design as a whole>>.

Il giudizio di “ragione unicamente tecnica” di certe caratteristiche dell’aspetto di disegni e modelli

In tale giudizio: i) contano -ma poco- altri modelli analoghi del titolare ;

ii) non contano per nulla gli aspetti coloristici non presenti nella registrazione.

Così sull’art. 8.1 reg. UE 6 del 2002 la Corte di giustizia 02.03.2023, C-684/21,Papierfabriek Doetinchem BV c. Sprick GmbH Bielefelder Papier- und Wellpappenwerk & Co.

La massima sub ii) però non è sicurissima: la corte infatti al § 31 è poco chiara.

Tutela UE da disegno interconnessioni per sistemi modulari (ancora sul caso LEGO)

Lego chiede la registrazione come disegno/modello (“design”, nel diritto Ue) dei suoi mattoncini: vedine l’immagine nel comunicato stampa 48/21 del 24.03.2021 della CG.

In via amminstrativa prima le va bene, ma poi -in sede reclamo- le va male.

In sede giurisdizionale però ottiene ragione. La decisione di annullamento della registrazione, presa dal board of appeal, viene a sua volta annullata dal Tribunale UE, 24.03.2021, T-515/19, Lego c. EUIPO con intervento di Delta Sport.

La normativa pertinente è costituita dal reg. Ue sui disegni n° 6 del 2002 e qui dall’art. 8.

In breve, il Trib. osserva che:

l’eccezione sui prodotti modulari, portata dall’art. 8.3, è riferita non solo all’art. 8.2 ma anche all’art. 8.1, per lo meno per la parte in cui le due norme si sovrappongono, § 69. Ciò per non far perdere di effettività all’art. 8.3. Quindi male ha fatto il Board of appeal a non considerare ciò, § 84 .
per arrivare al giudizio di nullità per rilevanza tecnica delle carattertistiche esteriori (art. 25.1.b) , bisogna che tutte queste abbiana tale rilevanza: <<It follows that a design must be declared invalid if all the features of its appearance are solely dictated by the technical function of the product concerned by that design (see, to that effect, judgment of 8 March 2018, DOCERAM, C‑395/16, EU:C:2018:172, paragraph 32). It follows that if at least one of the features of appearance of the product concerned by a contested design is not solely dictated by the technical function of that product, the design at issue cannot be declared invalid under Article 8(1) of Regulation No 6/2002.>>, § 96. Non avendo l’istante e l’Ufficio dimostrato ciò, la decisione va annullataa.
sotto il profilo procedurale, poi, l’eccezione siffatta, basata sull’art. 8.3, può anche essere sollevata per la prima volta in sede di reclamo amminsitativo e cioè davanti al board of appeal, § 50.