Helpfully for applicants of EU registered designs the Court of Justice of the European Union (CJEU) has confirmed that the product indication of an EU registered design limits neither the scope of protection nor the citable prior art.
It will be appreciated that a design can be applied to various different products (for example, a car shape design can be applied to both an actual car and a toy). When filing an EU design application the applicant has to provide an indication of the product to which the design applies, including the Locarno class in which that product falls. The EU Design Regulation states that the product indication does “not affect the scope of protection of the design as such”. However, in practice the courts and EUIPO have used the product indication in limited circumstances, such as in selecting the “informed user” in the test for individual character or assessing the “normal use” of a design.
The CJEU has now held in Joined Cases C 361/15 P and C 405/15 P (Easy Sanitary Solutions v EUIPO/Group Nivelles NV) that the product indication, including the Locarno classification, does not limit the scope of protection of a design and does not affect the scope of citable prior art. Thus an industrial drainage channel was still citable as prior art even though the product indication of the registered community design in question was “shower drain”.
The CJEU also held that the “sector concerned” is not limited to that of the product indication when considering the exclusion from the prior art of disclosures that “could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the EU”. Furthermore, the CJEU held that in assessing individual character there was no requirement that the informed user should know the prior art or the product to which the design of the prior art is applied.
The decision helpfully brings harmonisation on the matter between EU and UK law. The same conclusion was reached by the UK Court of Appeal in Green Lane Products v PMS International  EWCA Civ 358, in which it was found that a massage ball could be cited as prior art against a registered design for a laundry ball.
Please contact your usual adviser at Boult Wade Tennant should you have any questions.