In the decision to emphasize the complexity of design protection in the fashion and shoe industry, the cancellation department of the European Association (“EUIPO”) is a loss of collisions against Nike Innovate CV (“NIKE”). I handed it. The footwear design. In the decision on January 24, Euipo has disabled one of American Sportswear Giant’s registration community design following the tasks launched by Italian designer Alfredo Languella.
At the center of the invalidation procedure was the registered community design number 003400472-0001 (“design with contest”). -Like a component that forms an inverted “C” shape. NIKE’s conflict design was registered by Euipo in September 2016 and from the US design patent (No. D802,280) from the US design patent (No. D802,280) for the “upper part of the shoes”, which was specified by AIR HUARACHE RUN ULTRA. I gave priority.
Langera challenges the validity of Nike’s design based on Article 25 (1) (B) of the Community Design Rules (“CDR”), and the design is necessary based on Article 6 (1) (B). It claims that the “individual character” is missing. CDR. Specifically, in his bidding to disable NIKE design protection, Languella was designed to Nike in the United States in 1992 for Nike Air Flight Huarache sneakers (No. D330,452). ) I claimed that the design was substantially similar. Langera argued that the difference between the Nike conflict design and the previous art is not enough, and the difference is not a new creative factor, but a mere technical adaptation.
Nike emphasizes that the footwear industry is very saturated with a competitive design, so that it can refute Langera’s claim and distinguish it from consumers based on information. I did. “The category of the related products is the category of footwear upper and sneakers for sports and outdoor life, which is a very crowded market,” Nike confirmed “minor differences” between footwear (design). He pointed out the previous decision from Euipo. ) And those parts are enough to cause “individual characters” in those designs.
In addition, NIKE claimed that the previous design covers the entire top, while the contested design is composed of a clear horizontal element with minimal aesthetics.
Market, footwear analysis
Euipo has applied the following four -stage analysis to promote the evaluation of each parties’ discussions …
> Related sector and information users: EUIPO has confirmed that the contested design is in the footwear industry. “Users based on information” (under the EU design method, the overall impression generated by “Users based on information” is different from the overall impression generated by the previous art, “The design is” “Design. EUIPO is considered to have “individual personality”), “the person who was available in the market during the relevant period of shoes, boots, and upper part … For my experience and interest, I discovered that it was.
> Designer freedom: EUIPO has determined that Nike designers have advanced (creative) freedom. When creating a part of shoes and boot upper and decorative elements. The burden of differentiation has been raised further.
> Previous art disclosure: The court has been released at least since 1992 and has confirmed that the disclosure requirements have been met.
> Overall impression: EUIPO is the core shape of the contested design -elements such as inverted “C” or boomerang -like the previous design, creating a clear overall impression. I discovered that there was a slight difference that I could not do.
Eventually, EUIPO determined that it would disable it because a dispute design did not show the level of uniqueness required to justify protection.
TLDR: “From the information -based user’s point of view, there is no difference in the overall impressions transmitted by the dispute design, taking into account the freedom of designers in the contested design and other situations in the above case. This is a conclusion that was conveyed by the previous design, and the terms of CDR are lacking. “
Impact on Nike and the industry
Nike’s loss in front of the cancellation department (you can sue to the EUIPO Appeals Committee -and, probably), continue to be faced by brands when you can secure and maintain design rights in a more competitive market. We emphasize the tasks. This rule is an industry with a particularly wide range of design history, enhancing the importance of demanding clear deviation from previous art when demanding design protection. In addition, this decision could have a wider impact other than Nike. Fashion and footwear companies, as well, are protected by design registration and protects products from imitation.
Considering that many companies have introduced new repetitions of standard sneakers on a daily basis (New Balance’s 990 is a good example), we signal a severe attitude on what EUIPO consists of individual characters. Considering what you are, brands may need to reconsider the design. To confirm that each new repetition is sufficiently different from the previous work.
