Case T‑525/13, H&M Hennes & Mauritz BV & Co. KG, v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),Yves Saint Laurent SAS, was decided yesterday by the General Court. In brief:

Under EU design law, in order for a design to be successfully registered it must be 'novel,' that is if no identical design has been made available to the public, and it must have ‘individual character,’ that is a requirement where an “informed user" must find the overall impression of the design different from other designs which are available to the public.

Yves Saint Laurent in 2006 was granted the registration of two Community designs by OHIM, which were proposed to be applied to ‘handbags’ (on of the views of this design is displayed, right). In 2009, the fast-fashion retailer Hennes & Mauritz (‘H&M’) filed two applications to OHIM for a declaration of invalidity in respect of the registered designs, the cancellation of the designs being based on the view that YSL’s designs lacked ‘individual character’ -- in support of which the Swedish retailer referred to earlier rights to a prior design for bags they held (below, left).

The courts rejected H&M's applications of invalidity in 2013 and now the General Court agrees, dismissing the actions of H&M. Regarding the comparison of the overall impressions produced by the disputed YSL design and by the earlier H&M design,

The court has held that the differences between the designs at issue are ‘significant’ and similarities ‘insignificant.’ In particular they differed as to three features which decisively influenced their overall “visual appearance, namely the overall shape, structure and surface finish of the bag.”  The court pointed out that the straps and the handle of the designs of the two marks manifestly lend themselves to different uses inasmuch as the H&M bags could be worn over the shoulder and the YSL bags could be exclusively carried by hand.

The fashion industry has design at its centre, and fashion brands are using design law more frequently as a strategy to protect the outward appearance of a product design. This judgment confirms that. in assessing whether a design has individual character, an ‘informed user ‘is a user that “knows the various designs which exist in the sector and possesses a certain degree of knowledge with regard to the features which those designs normally include and, as a result of his interest in the products concerned, shows a relatively high degree of attention,” to fashion. This means that the courts in these types of cases value the views of more than just your ‘average’ fashion consumer.

The decision is a victory for Yves Saint Laurent, but whether a victory to the fashion industry as a whole? The judgment still confirms that the threshold for registration of EU designs is relatively low, and it’s not necessary to come up with a design profoundly different to what already exists in the marketplace in order for your design to be registered as a community design. H&M may appeal against this judgment to the European Court of Justice the highest court of the EU, and has around two months to do so.

Source: Tania Phipps-Rufus. Tania is the Founder and Editor-in-chief of the blog Fashion Law & Business; she lectures and is a consultant at Istituto Marangoni, and teaches on the MA in Strategic Luxury Fashion Brand Management and the MA in Fashion Promotion; she is currently studying for her PhD on Fashion & Intellectual Property in the Creative Economy, at the University of Bristol.