This month we report on the Advocate General's opinion on the territorial extent of use required for genuine use of a CTM in Leno Merken v Hagelkruis Beheer and we report on the decision of the High Court in Samsung v Apple concerning Registered Community Designs.

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Decisions of the GC and the CJEU 

Case   T-344/09 

Hearst Communications Inc v OHIM; Vida Estética, SL

Application (and where applicable, earlier mark)   COSMOBELLEZA
- organization of exhibitions for commercial and advertising purposes (35)
- training, education and entertainment, organization of exhibitions for cultural or educational purposes, organization and conducting of seminars, business management and organization (41)

- magazines, printed matter and publications (16)
- classes 28, 35, 39 and 41
(United Kingdom, France, International (Germany, Spain and France) registered and non-registered marks)

- magazines, printed matter and publications (16)
- classes 28 and 41
(Portugal and United Kingdom registered and non-registered marks)

- classes 25, 38 and 41
(International (Spanish, France, Italy and Portugal) mark)

- classes 38 and 41
(United Kingdom, Ireland and International (Germany, Spain, France, Italy, Austria and Portugal) marks)

Cosmopolitan logos

- classes 35 and 41

(United Kingdom)


The GC upheld the BoA’s decision that there was no likelihood of confusion of the marks under Art 8(1)(b).

In terms of the comparison between COSMOPOLITAN and COSMOBELLEZA, although the first syllable was identical, the two other syllables were dissimilar. “Cosmo” was not the dominant element of the marks, paticularly because the suffix “politan” was not an independent linguistic unit. Accordingly GC was correct to find that the visual and phonetic differences far outweighed the similarities.

The conceptual analysis varied depending on the relevant public. In Germany neither mark had conceptual meaning. COSMOPOLITAN was an ordinary English word and in the UK, Spain and France would be understood to refer to a “worldly person familiar with other places and customs”. In Spain and France, the sign applied for would evoke the idea of “cosmic beauty”. These conceptual differences would heighten the dissimilarity of the signs. The BoA was correct to hold that the mark applied for was dissimilar to COSMOPOLITAN.

The BoA were correct to hold that the COSMOPOLITAN TELEVISION and THE COSMOPOLITAN SHOW marks, which contained additional elements that referred to the services covered, were further removed from the mark applied for and dissimilar overall.

Although the mark COSMO was identical to the first syllable of the mark applied for, visually and phonetically it was different. The element “belleza” could not be regarded as negligible. Although to a Portuguese public there was a degree of overlap conceptually between “cosmos” or “the universe” and “cosmic beauty”, the BoA was correct to find that conceptually there was some difference. The UK public would not understand COSMOSBELLEZA to have a meaning and would perceive a degree of conceptual dissimiliarity. On that basis the BoA was correct to find that COSMO and COSMOBELLEZA were dissimilar.

In light of the foregoing, the earlier mark COSMO TEST was also dissimilar, as the element “test” added no further conceptual link.

To establish a likelihood of confusion because of the existence of a series of marks with the common element “cosmo”, proof of use of all the marks belonging to the series must provided. Furthermore, the mark applied for must be similar to the series and display characteristics capable of associating it with the series.

The BoA had determined that the French COSMOPOLITAN mark and non-registered COSMOPOLITAN and COSMO marks having effect in the UK had a reputation for magazines, publications and printed matter (class 16).  While some of the services applied for might overlap in the field of fashion, that was not sufficient to demonstrate that the relevant consumers would perceive that Vida Estética’s services derived from Hearst. The GC also held that the element “cosmo” was not a characteristic or common element of the series on the basis that COSMOPOLITAN would be perceived as a whole by the English public.

As the earlier marks were all dissimilar to the mark applied for, the BoA had been correct to find that there was no likelihood of confusion under Art 8(1)(b).


Case   T-523/10
Interkobo sp. z o.o. v OHIM; XXXLutz Marken GmbH
Application (and where applicable, earlier mark)   my baby logo

- games and playthings, gymnastic and sporting articles (28)


my baby logo2
- games and playthings, gymnastic and sporting articles (28)

(International and Polish marks)


The GC upheld the BoA’s decision that the opponent had not substantiated the existence and scope of protection of the earlier marks pursuant to Rule 20(1).

Interkobo had provided partial translations of certificates and extracts of official trade mark databases in German (the language of the proceedings) which it relied on as demonstrating the existence and scope of its earlier marks. Rules 19(3) and 98(1) read together required the translations to be provided in a separate written document that reproduced the structure and contents of the original; a mere annotation of the original document was not sufficient.

The BoA was correct to hold that under Rule 19(4) it could not take such incomplete translations into account and therefore was correct in rejecting the opposition.


Case GC

I Marchi Italiani Srl & Anr v OHIM; Osra SA

Application (and where applicable, earlier mark) Antonio Basile 1952 logo
- shirts, knitwear and outerwear for men, women and children, except clothing of leather, neckties, underwear, shoes, hats, socks, and scarves for men, women and children (25)


- outerwear for men made of fabric, leather, wool or other material (25)

(Italian and International marks)


The GC upheld the BoA’s decision that the mark was invalid under Art 52(1)(a) as there was a likelihood of confusion under Art 8(1)(b) although the GC conducted its own assessment of the similarity of the marks.

According to case law (Case T-185/03), Italian consumers generally attributed greater distinctiveness to a surname, and on the evidence in this case, the BoA was correct to find that, the surname Basile was more distinctive than the forename Antonio.

However, the BoA had not been correct to find that the element “basile”, as a surname, had an independent distinctive role in the composite mark. Whether a surname had an independent distinctive role because of the fact that it would be perceived as a surname, had to be assessed on the facts of each case, which the BoA had not conducted. This error did not vitiate the BoA’s finding that there was a certain degree of visual and phonetic similarity of the most distinctive element “basile”.

The marks were also conceptually similar as the commercial origin of the goods covered by the marks would be perceived by consumers as being associated with a person bearing the Italian surname “Basile”.

As the goods in question were identical or similar overall there was a likelihood of confusion.

Case GC

Jackson International Trading Co v OHIM; The Royal Shakespeare Company

Application (and where applicable, earlier mark)


- beers, water and other non-alcoholic drinks (32)
- alcoholic beverages (except beers), but in so far as whisky, only Scotch Whisky (33)
- providing of food and drink and temporary accommodation (42)


- organising and promoting cultural events, education and training services all relating to theatre and theatre productions (41)

(Community mark)


The GC upheld the BoA’s decision that the mark was invalid under Art 52(1)(a) as it would take unfair advantage of the reputation of the earlier mark pursuant to Art 8(5).

The BoA was correct to find that the marks were visually, phonetically and conceptually similar. Although the words “royal” and “shakespeare” were not distinctive alone, in combination the mark was distinctive.  Neither the “rsc” nor “company” elements had a strong distinctive character, unlike the “royal shakespeare” element. As the mark applied for consisted entirely of the central and distinctive element of the earlier mark, the average consumer would establish a link between the marks.

The BoA was correct to find that the reputation of the earlier mark extended to the public at large and not a specialised theatre-going elite.  The reputation of the earlier mark was exceptional among the UK public as the RSC was associated with excellence and English heritage for the specific services. A reputation in the UK was sufficient to establish the required reputation at EU level as the UK constituted a substantial part of the EU.

Despite the differences in the nature of the goods applied for and services of the earlier mark, there was a certain proximity and link between them. It was common practice for a theatre to provide bar and catering services in the interval of a performance. In light of the RSC’s reputation, Jackson would benefit from the power of attraction, the reputation and prestige of the earlier mark and had not demonstrated that such use would be with due cause.


Case GC

Laboratoire Garnier et Cie v OHIM

Application (and where applicable, earlier mark) natural beauty logo

cosmetics, body and beauty care products (3)


The GC upheld the BoA’s decision that the mark was descriptive for the goods under Art 7(1)(c).

The BoA was correct in finding that the average English-speaking consumer would perceive the expression “natural beauty” as a meaningful expression that obviously and directly conveyed the fact that the goods would assist the consumer preserve his or her natural beauty.

The BoA was correct that the stylisation of the mark was limited to common graphical features. The mark used an ordinary typeface and straightforward presentation of the words that would not divert the consumer’s attention from the clear message conveyed by the descriptive message.


Case GC

Antonino Aiello v OHIM; Cantoni ITC SpA

Application (and where applicable, earlier mark)

- goods in classes 3,18 and 25


100% Capri logo

- goods in classes 3, 18 and 25
(Italian and Community marks)


The GC annulled the BoA’s decision on the basis that OHIM had contravened Rules 50(1) and 20(2) when it had failed to provide the opponent’s pleading to Mr Aiello.

The OD had upheld the opposition pursuant to Art 8(1)(b). In July 2008, Mr Aiello appealed that decision and Cantoni lodged a response in October 2008. OHIM forwarded this response to the fax number indicated in the trade mark application form not the number of Mr Aiello’s representative in the proceedings. Under Rule 20(2) OHIM was required to communicate the opponent’s submissions to the applicant or, if applicable, his appointed representative (Rule 67(1)). There was no evidence that Mr Aiello was aware of the pleadings such that he could have filed a response within the time limit.

Under Art 75, OHIM’s decisions may only be based on reasons or evidence on which the parties have had an opportunity to present their comments. The general principle of the protection of the rights of defence required that a person whose interests were affected by a decision must be given an opportunity to comment. In this instance the procedural irregularity had deprived Mr Aiello of the opportunity to comment on arguments on the distinctive character of the earlier mark. If he had done so, the BoA’s decision might have been substantively different.

Case GC

Pharmazeutische Fabrik Evers GmbH & Co KG v OHIM; Ozone Laboratories Pharma SA

Application (and where applicable, earlier mark)


- cholesterol-lowering pharmaceutical preparations and cholesterol-lowering dietary supplements adapted for medical use (5)

- drugs, pharmaceutical and veterinary products, chemical products for use in healthcare and dietetic products for children and sick persons (5)

(German mark)


The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under Art 8(1)(b).

The GC held that the goods were identical and the relevant public for assessing the likelihood of confusion were German health professions who prescribed or dispensed cholesterol-lowering products and patients with cholesterol-related disorders. Given the nature of the goods, the relevant public would have a high degree of attention.

Visually the Chinese characters in the earlier figurative mark were of comparable size to the letters of the word element and can be seen clearly. Therefore, they cannot be ignored in the comparison of the signs. The public would not ignore the differences between the elements “hypo” and “hitre” at the beginning of the marks and the visual impact of the common suffix “chol” would be smaller in light of the fact it is descriptive of the goods in question.  On that basis the BoA was correct to find that there was a low to average degree of visual similarity.

The BoA was correct that German public would not pronounce the Chinese characters of the earlier mark and that there was a low degree of phonetic similarity between the word elements of the marks.

The GC disagreed with the BoA’s finding that no conceptual comparison was possible. The Chinese characters introduced a conceptual differentiation between the marks as they could be associated with Chinese medicine. Furthermore the health professionals would understand the scientific meaning of the elements “hypo” and “chol”, whereas “hitre” has no meaning.

Taking into account all of the factors, the BoA was correct to hold that there was no likelihood of confusion.

Case GC

Rivella International AG v OHIM; Baskaya di Baskaya Alim e C. Sas

Application (and where applicable, earlier mark) Baskaya logo

- 29, 30, 32

Passaia logo
- beer, ale and porter, water and other non-alcoholic drinks (32)

(International German mark)

Comment The GC upheld the BoA’s decision rejecting the opposition as Rivella had failed to provide proof of use of the earlier mark under Art 42(2) and (3).

Rivella had provided proof of use of the mark in Switzerland and relied on an 1892 bilateral convention between Switzerland and Germany under which use of the mark in Switzerland was considered to be use in Germany.

The GC noted that the fact that earlier national or international marks could be cited in opposition did not imply that the national law applicable to that mark was relevant in Community opposition proceedings. Although there were some areas where the Regulation left matters to national laws, such as the date of registration, this was not the case with respect to the determination of the territory in which the proof of use must be shown. That question was exhaustively governed by the Regulation and was not a matter of national law.

The GC held that genuine use had to be established in the European Union or in the Member State concerned. The bilateral Convention did not bind the EU and was, in any case, irrelevant.

Case CJ (Fifth Chamber)

Smart Technologies ULC v OHIM

Application (and where applicable, earlier mark) WIR MACHEN DAS BESONDERE EINFACH

(we make special (things) simple)

- computer hardware, software and systems relating to capturing and processing touch, text and graphical images (9)


The CJEU upheld the GC’s decision to reject the mark on the basis that it was devoid of any distinctive character under Art 7(1)(b).

The GC correctly followed Audi v OHIM (Case C-398/08). If a mark is perceived by the relevant public as an indication of origin, the fact that the mark is also understood, perhaps even primarily understood, as a promotional formula has no bearing on its distinctive character.

The GC had correctly found that the relevant public (German speaking computer specialists) would not have perceived in the mark any indication of commercial origin beyond the promotional information that the goods in question made the performance of a complex task simple. The GC had not based its analysis on the fact that the mark was a slogan, it had not created a special sub-category for analysing the slogan or used different criteria to assess the mark’s distinctive character. The GC had merely pointed out that slogan word marks conveyed a laudatory message to the public.

The fact that the relevant public was a specialised audience, which would have a higher degree of attention, did not mean that a weaker distinctive character of a sign was sufficient.  Furthermore, this was a question of fact, which was within the remit of the GC and not the CJEU.


Advocate General considers territorial extent of use required for genuine use of a CTM

Leno Merken BV AG (“Leno”) v Hagelkruis Beheer BV (“Haegelkruis”) (Advocate General Sharpston for the CJEU (Second Chamber); C-149/11; 05.07.12)

AG Sharpston delivered his opinion that the territorial extent of use of a CTM that was required for it to be considered genuine use within the meaning of Article 15(1) of Regulation (EC) No 207/2009 (the “Regulation”), depended on the impact of that use in the internal market, specifically whether it was sufficient to maintain or create market share in that market for the goods and services covered and whether it contributed to a commercially relevant presence (whether successful or not) of the goods and services. Use of a CTM within a single Member State was not, of itself, necessarily sufficient to constitute genuine use because the territorial scope of the use was merely one of the factors that must be considered.  However, use in a single Member State did not necessarily preclude that use being characterised as genuine use in the Community.

Leno had opposed Hagelkruis’ application on 27 July 2009 for the word mark OMEL as a Benelux trade mark for services in classes 35, 41 and 45 on the basis of its earlier CTM ONEL, which was registered on 18 August 2009 for services in classes 35, 41 and 42. As part of the opposition proceedings, Hagelkruis requested that Leno provide proof of use of the earlier CTM. It was common ground that the marks were similar, that the services were identical or similar and there existed a likelihood of confusion. The dispute centred on whether Leno’s proof of use of its CTM in the Netherlands, i.e., a single Member State, was sufficient to demonstrate genuine use within the meaning of Article 15(1).

Genuine Use
AG Sharpston observed that the justification for protection in the 27 Member States is undermined if a mark is not actually used. National trade marks must be put to use within that Member State whereas CTMs must be put to genuine use in the Community.  The aim of the requirement is the same, that the Register does not contain marks that serve no commercial purpose and which obstruct rather than improve competition in the market.

In AG Sharpston’s opinion, “genuine use in the Community” was an indivisible concept and not cummulative conditions to be examined separately. In AG Sharpston’s opinion, territorial scope of use is only one of the several factors to be taken into account in determining whether use is genuine. Therefore, while the place of use is a factor, it is neither an independent condition nor the sole or dominant factor in determining genuine use.    
AG Sharpston rejected several parties’ submissions base on the CJEU’s decision in Pago (Case C-301/07) that genuine use means that the mark must be present “in a substantial part of the territory where it is protected”. In his opinion, Pago could not be transposed directly to this case as it dealt with reputation in the Community. Genuine use required that a mark had been used in accordance with its essential origin-indicating function, in order to create or preserve an outlet for the goods and services. An assessment of genuine use was based on all the facts and circumstances of the case, including the characteristics of the economic sector and the market at issue, the nature of the goods and services protected and the scale and frequency of the use.

The CTM was established for undertakings who wished to carry out activities on a Community level in the internal market where there was no distinction based on territorial borders between Member States. All forms of use, such as the commercial presence of the mark and the goods or services within the internal market, must be examined to determine whether the condition of genuine use had been satisfied. In AG Sharpston’s opinion, both the use in the Netherlands and use (or non-use) outside the Netherlands were equally relevant factors for national Court to consider. 

Each case had to be assessed on the facts based on the determination of the characteristics of the internal market for the particular goods or services, which may change over the relevant time period. There might be barriers to access in parts of the internal market and particularly concentrated use in one area might play a more significant role in the assessment of genuine use than use in other parts where there was less demand. Furthermore, more localised use of a CTM could produce an effect whereby the goods were known, in a commercially relevant manner, by participants in the market beyond where that local use had occurred. AG Sharpston noted, however, that, in his opinion, use of a mark on a website that was accessible to all Member States was not by definition genuine use in the Community.


Composite signs

Waseem Ghias T/A GRILLER v Esmail Adia T/A GRILLER KING & Ots (Kitchin LJ; [2012] EWCA Civ 919; 04.05.12)

Kitchin LJ refused Griller’s application for permission to appeal against those parts of the decision of Miss Recorder Michaels in which she dismissed Griller’s claims of trade mark infringement against Griller King and the second and third respondents, trading as “Griller Hut” (reported in CIPA Journal, February 2012). 

Kitchin LJ found that the Recorder had not fallen into error by failing to take proper account of the decision of the CJEU in Case C-120/04 Medion AG v Thompson. The Judge held that Medion did not purport to lay down any absolute rule that whenever a composite sign contained a distinctive component, which was the subject of some earlier registered mark, a finding of a risk of confusion must necessarily follow. On the other hand, if, in the sign in issue, the earlier mark still had an independent distinctive role such that the public might believe that the goods or services in question came from the same undertaking or, as the case may be, from economically linked undertakings, then there would indeed be a likelihood of confusion. 

Although the Recorder had said that the dominant or independently distinctive word “Griller” was used in the signs complained of, Kitchin LJ was of the view that this observation had to be seen in the context of the Recorder’s whole comparison which led her to conclude that the composite signs, as a result of the word “King” in one case and “Hut” in the other were not sufficiently similar to the registered marks to create a likelihood of confusion.

The Judge went on to reject three other grounds of appeal, finding that the Recorder had not failed to: (i) take proper account of Griller’s evidence of use and reputation; (ii) apply the global appreciation test; and (iii) give proper weight to the fact that, as a litigant in person, Griller could not be faulted for failing to use the words “passing off” in his claim. 


Survey evidence

Interflora Inc & Anr v Marks & Spencer Plc & Anr* (Arnold J; [2012] EWHC 1722 (Ch); 26.06.12)

In ongoing trade mark infringement proceedings between the parties relating to keyword advertising, Arnold J granted Interflora permission to adduce witness evidence at trial from witnesses gathered from one pilot survey, but not another.

Arnold J noted that the present state of the law was that evidence obtained from witnesses by virtue of the fact that they had been respondents to a survey was admissible and may be probative, even though the survey itself was not and could not be relied upon, and even thought the survey questions were flawed. The Judge’s view was it was impossible to draw a hard and fast distinction between questions which were objectionable and those which were not. Although the question in issue in Interflora’s first survey was leading to a degree, the Judge held that it was not so flawed as to taint any evidence that may be obtained from a witness as a result. However, the Judge refused permission for Interflora to adduce witness evidence from Interflora’s second survey, as the question in issue fell on the other side of the line and went as far as to be misleading.

The Judge criticised Marks & Spencer for treating the present application as a major piece of satellite litigation in its own right, stating that its extensive evidence, including expert evidence, was not appropriate on such an application.



High Court holds Samsung’s “Galaxy” tablet does not infringe Apple’s registered design for its “iPad” device

Samsung Electronics (UK) Ltd v Apple Inc* (Judge Birss QC; [2012] EWHC 1882 (Pat); 09.07.12)

Judge Birss (sitting as a Judge of the High Court) held that Samsung’s “Galaxy” three models of tablet computer did not infringe Apple’s Registered Community Design (“RCD”) for its “iPad” device.

This was the first substantive hearing in the Community of the issue of infringement and formed part of an ongoing international dispute between the parties concerning their respective tablet computers. Samsung sought a declaration of non-infringement and Apple counterclaimed for infringement of its RCD.

Apple’s RCD:

Apple RDC design drawing

Samsung’s Galaxy tablet:
Samsung tablet

Apple had previously applied for a stay of its infringement counterclaim on the basis that the validity of its registered design was in issue on application to OHIM. On appeal, the Court of Appeal had held that the question whether there were special grounds under Article 91(1) of Community Design Regulation (6/2002) for not staying Apple’s counterclaim was a matter to be determined at trial (reported in CIPA Journal, June 2012). Judge Birss concluded that there were special grounds not to stay the action, including: (i) both parties agreed that there should not be a stay; (ii) Samsung had not sought a declaration of invalidity in these proceedings; (iii) there was no risk of inconsistent judgments between the Community designs court and OHIM; and (iv) the matter was plainly commercially urgent.

Judge Birss
assessed the following seven features which Apple submitted were the similarities between its design and the Galaxy, considering each against the design corpus and from the point of view of design freedom. The Judge concluded as follows:

Feature 1: A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners
There was design freedom despite the rectangular shape being driven by the use of a rectangular screen and the ubiquity of rounded corners. The Galaxy tablet was identical to Apple’s design in this respect but the design corpus contained similar designs, thereby reducing its significance.

Feature 2:  A flat transparent surface without any ornamentation covering the entire front face of the device up to the rim
While all displays had a border feature, the degree of ornamentation and presence of a bezel was a matter of design choice. Although the Galaxy and Apple’s design looked very close, they were not identical due to a small degree of ornamentation on the Galaxy tablet (a clearly visible camera hole, speaker grille and the Samsung logo). Since the design corpus contained similar designs the significance of this feature was reduced.

Feature 3: A very thin rim of constant width, surrounding and flush with the front transparent surface
The designer had significant design freedom and the similarity between the Galaxy and Apple’s design would be striking but for the feature’s presence in the design corpus. 

Feature 4: A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface
Design freedom of the display screen and border was considerably constrained but that alone did not account for the close similarity between the Galaxy and Apple’s design. The significance of the similarity was reduced by the presence of the feature in the design corpus.

Feature 5: A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge
A flat back was generally required for functional reasons but other features such as screw holes on the back were not. The informed user would recognise Apple’s design as belonging to a familiar class of products with somewhat curved sides and a fairly crisp edge. Apple’s design and the Galaxy belonged to this same design family despite a minor difference in the curving.

Feature 6: A thin profile, the impression of which was emphasised by (5) above
There was a trend in electronics to make devices thinner. Relative to the design corpus Apple’s design was not exceptionally thin. Using a curve or cut-away between the side edge and the back to enhance the appearance of thinness was a commonplace technique. The informed user would notice that the Galaxy was much thinner than Apple’s design (by about half).

Feature 7: Overall, a design of extreme simplicity without features which specify orientation
Apple’s design was extremely simple with no detail or ornament on the front or back but there was no functional constraint forcing designers to make extremely simple, featureless designs. A number of devices in the design corpus had quite busy designs indicative of a high degree of design freedom. The informed user was not used to seeing decorative features on rear faces. The Galaxy and Apple’s designs were very similar from the front but the backs differed.

The Judge then went on to consider the overall impression of Apple’s design on the informed user, concluding that the most important differences were the thinness of the Galaxy and the detailing on the back. While the informed user would regard the front of the Galaxy and Apple’s design as looking like members of the same, pre-existing family, the Galaxy did not have the same understated and extreme simplicity possessed by Apple’s design; it was not as cool, and therefore produced a different overall impression.


Registered Community Design for ice bucket in the form of a bag held valid and infringed

Gimex International Groupe Import Export (“Gimex”) v The Chill Bag Company Ltd and Ots (“Chill Bag”)* (Judge Birss; [2012] EWPCC 31; 20.07.12)

Judge Birss found that Gimex’ Registered Community Design for an ice bucket in the form of a bag was valid and infringed by the defendants’ “Chill Bag” product.

Gimex’s product was an “ice bucket bag” called the “Ice Bag” into which water and ice were placed followed by a wine or champagne bottle to be chilled, as shown below:

Gimex Ice Bag

Chill Bag had produced an ice bucket bag called the “Chill Bag”, as shown below:

Chill Bag

Gimex claimed that the Chill Bag infringed its registered design for its Ice Bag product, as shown below:

Ice Bag

The defendants contended that the Chill Bag did not infringe and that the RCD was invalid on the grounds that it was not new and lacked individual character, relying upon a prior Gimex product called “Transline” which was a bag used simply to carry wine bottles, as shown below:


Referring to Green Lane v PMS International Group [2008] FSR 28, Judge Birss found that Transline could not be excluded from the prior art simply because it had been used for a different purpose from that of the registered design. It was not relevant whether the cited prior art was part of the informed user’s “design awareness”; to be valid the design had to have individual character taking that cited prior art into account. 

As to whether the intended function of the product could/should be taken into account when considering the overall impression, Judge Birss concluded that the use to which a product is put played a part in the characterisation of the informed user since they were a user of the product, but it did not constrain what prior art may or may not be citable.  Once the product in question had been identified, the informed user could be identified, and questions of design freedom were considered from the point of view of the type of product the informed user used. While cited prior art might not be a design for a product of the kind of which the informed user had gained experience, and would not be part of their design awareness, it still had to be considered for the purposes of novelty and individual character. 

Although the register indicated the product was an ice bag, Judge Birss considered the correct definition to be “bottle chillers”, covering ice buckets, wine coolers, wine cooling sleeves and the like. The informed user was therefore a user of bottle chillers and their design awareness arose from using those products. In relation to design freedom, the Judge held that the functional constraints extended as far as that the products had to be able to chill a bottle of wine. However, this constraint allowed for a fair degree of freedom and these were design led products.

The Judge found that the overall impression on an informed user created by the Transline was different to that produced by the Ice Bag design. The fact that the Transline could be seen as just a bag and not a bottle chiller meant that to the informed user the visual differences were more significant. Although the Judge found that the scope of protection was relatively narrow, the Ice Bag had individual character and was valid. 

The Judge found that the Chill Bag was virtually identical to the Ice Bag design. The height and handles were essentially the same and the only potentially significant differences (absence of a business card slot and the presence of a coaster slot in the base of the Chill Bag) were not sufficient to produce a different overall impression. The Judge held that the Chill Bag infringed the Ice Bag design.


Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Anna Stanley and Toby Sears.

The reported cases marked * can be found at and the CJ’s decision can be found at