On February 2, 2011, VW’s European Community design registration for its second-gen modernized VW Beetle, Community Design no: 000111596-0001 (“CD’001”), was invalidated by the Invalidity Division of the Office for Harmonization in the Internal Market (OHIM), a European Union agency that oversees registration of trademarks and designs.

Figure 1 - Images from CD'001

AUTEC AG, a maker of toy car models, filed for a declaration of invalidity of VW’s community design 000111596-0001 (“CD’001”) on December  16, 2009, for lack of novelty and individuality.  As evidence, AUTEC cited a VW beetle fan website that recounts the evolution of the “new Beetle” design from early 1991 to 1998, and argued that the “new Beetle” design was known to the public because, prior to registering CD’001, VW had shown the “new Beetle” at several major public car shows and units had been produced and shipped to the U.S.   AUTEC then argued that comparing CD’001 and the known “new Beetle” design would acquaint the informed user of any differences between the designs, and that any such differences would have been within the field of freedom of the designer in question, and, as such, invalidation of CD’001 would be appropriate under CDR Article 6.

VW countered by arguing that CD’001, which was registered on December 9, 2003, covered a second generation model of the “new Beetle” which was substantially different from the first generation and original concept models.  In doing so, VW elaborated that its modern interpretation of the classic VW Beetle was developed in 1991 during a design study called “Concept 1,” which then matured into a model called “Concept 1.”  Concept 1’s design was registered with WIPO in 1994 (DM/030041).  The first generation model of the “new Beetle” was developed based on “Concept 1,” and its design was registered with WIPO in 1996 (DM/037400).

Figure 2 - Image from DM/030041

Figure 3 - Image from DM/037400

VW further noted that the second generation model of the “new Beetle” design wasn’t shown publically until September 2005 (which is after the application for CD’001 was filed), when it was unveiled at the International Motor Show in Frankfurt.  VW argued that this second generation model differed significantly from Concept 1 and the first generation model of the “new Beetle” for a number of different features including a wider fender, different tail lights, and a distinguished bumper.  VW concluded that CD’001 met the individual character requirement because the informed user, who would have had experience with more expensive products like cars, would have perceived the details, and would have appreciated both the similarities and the differences between CD’001 and the prior registrations.

In rendering its decision, the Invalidity Division compared the features of CD’001 to the features of the international registrations and identified the differences between them.  The Invalidity Division noted that the informed user would be familiar with vehicles and their function, and would grasp the restrictions on the freedom of a designer in designing vehicles.  The Invalidity Division then stated that the differences falling within the field of freedom of the designer was not determinative of invalidity, noting that a designer can naturally only move within the context of his or her freedom.  The Invalidity Division then weighed the similarities and differences between CD’001 and the prior international registrations and concluded that the differences did not shift the balance in favor of the differences, even in light of any increased attention by the informed user.  The Invalidity Division then held that CD’001 and the prior registrations did not meet the individual character standard under Article 6 because they would have given the informed user the same overall impression, and ruled CD’001 invalid.

The individual character requirement under Article 6 of the Community design regulation appears somewhat akin to the U.S. non-obviousness requirement under 35 U.S.C. § 103.  For example, under the individual character requirement, the Invalidity Division first considered the level of knowledge of the “informed user” prior to determining the overall impression the prior art designs had rendered on the informed user.  Analogously, under § 103, as interpreted by the court in In re Rosen, 673 F.2d 388 (C.C.P.A. 1982), the proper standard for obviousness is whether the design-in-suit would have been obvious to a designer of ordinary skill of the articles involved, which initially requires the court to look to the knowledge of the “ordinary designer.” 

However, there are subtle differences between the individual character standard and § 103 when evaluating prior art.  For example, In considering what overall impression publically available prior designs would give the informed user under the individual character standard, the Invalidity Division compared CD’001 to the prior WIPO registrations (DM/030041 & DM/037400) so as to ascertain the similarities and differences between them, and then weighed whether these differences would distinguish the CD’001 over the similarities found between CD’001 and the prior WIPO registrations.  In contrast, when evaluating prior art under § 103, as provided by In re Rosen, the claimed design, viewed as a whole, must be compared to a reference that has basically the same design characteristics as the claimed design and, in light of such a reference, it must be determined whether the claimed design would have been obvious to the ordinary designer.