Following a UK Patents Court ruling in July last year (subsequently upheld by the UK Court of Appeal) wherein it was held that certain Samsung tablets do not infringe Apple’s Registered Community Design (RCD) No. 000181607-0001, the EU designs registry known by its official title of “Office of Harmonisation in the Internal Market” (OHIM) has now issued Decisions in relation to applications filed by Samsung for a declaration of invalidity of three of Apple’s other RCD’s, namely RCD No’s. 001888454-0001 (Design 1), 00188454-0013 (Design 2) and 001222905-0002 (Design 3).  The Decisions are noteworthy in that they discuss some important aspects of interpretation of the Community Design Regulations (CDR).

One of the most important issues was that of disclosure prior to filing an application for a registered design; and the operation of Articles 7(2) and 7(3) CDR, which give legal effect to the well known 12 month “grace period” within which a registered design may not be held invalid by a disclosure made by a designer (or their successor in title) within 12 months preceding the priority date of the design, or as a consequence of an abuse of the rights of the originator of the design (such as someone stealing or copying the design from its rightful owner).

In finding that Designs 1 and 2 were invalid due to prior disclosures on various websites, OHIM indicated its interpretation that even if there is an allegation of abuse, that an application for a Registered Community Design must still be filed within the 12 month grace period, otherwise any prior disclosure outside the 12 month grace period should be included in the prior art against which the individual character of a design should be assessed.  Although Apple had alleged that the prior disclosures in question were a consequence of ‘internal leaks’ by Apple’s own designers, this was essentially irrelevant since the priority applications for Designs 1 and 2 were filed more than 2 years after the date that some of the very similar prior art products had been published on the internet.

Another important issue was discussed in relation to Design 3, which claimed priority from an earlier filed US design application comprising both line drawings and an appendix with photos and drawings of a movable display device having the well known Apple logo on the back of it together with a verbal disclaimer that the logo was intended for illustrative purposes only and was not within the scope of the design. Conversely, Design 3 was filed with colour photos only and showed no such logo on the back.  Samsung argued that since Design 3 and theUSdesign application as filed did not consist of the same representations that the priority claim was invalid.

OHIM disagreed with Samsung, noting that there are differences between theUSand the Community in respect of the formal requirements for design representations (and notably that the Community only permits the use of graphical disclaimers, and not verbal disclaimers as are allowed in theUS).  OHIM concluded that since the photos in Design 3 were within the scope of the priority application, and due to an ‘’absence of harmonised rules for claiming the priorities from and for different jurisdictions’’, that the priority claim was valid.

As Samsung had also argued that aspects of the designs were dictated solely by function, the issue of functionality was also addressed in the context of Article 8(1) CDR.  In finding that the features contribute to the overall look of the product, and in so doing disagreeing with Samsung’s argument, OHIM commented that the ‘’design of the product plays a significant role in marketing this kind of product’’ and that products in the area of portable electronic devices ‘’compete not only in their technical features but also in their design features’’.


Whilst OHIM found Design’s 1 and 2 to be invalid and Design 3 to be valid, the Decisions are perhaps most notable for the further and much needed guidance provided on matters relating to the reliance on and the operation of the “grace period” and how the lack of harmonised rules for claiming priority may effect a priority right.

We look forward with interest to hearing of the outcome of the respective appeals by Apple which are most likely to be filed.