Those involved with design law will be familiar with drafting conventions, such as the use of dotted lines as visual disclaimers. The rules for visual disclaimers have been set out in the Guidelines published by OHIM. These Guidelines are clear:

Features of a Community design which are disclaimed are disregarded for the purposes of comparing the designs. This applies to the features of a Community design represented with dotted lines, boundaries or colouring or in any other manner making clear that protection is not sought in respect of such features (judgment of 14/06/2011, T-68/10, ‘Watch attached to a lanyard’, para. 59-64).

Although these rules are applied by OHIM’s Invalidity Division and Board of Appeal and have been approved by the General Court, national courts have failed to adhere to them. This has led to unwelcome uncertainty. Illustrative of this reticent attitude by the national courts are the Apple/Samsung decisions in the Netherlands and the UK, where the courts maintained the dotted lines to be part of the design. 

A recent case before the Interim Relief judge of the District Court in The Hague (8 July 2015, ECLI: NL:RBDHA: 2015:7834) shows the dangers of using dotted lines when they are not intended to be disclaimed features of the design.  

The Kind Group v JPMC

The Claimant, The Kind Group, is a producer of the popular EOS EVOLUTION OF SMOOTH lip balm that has a large following with teenage girls and young women in the US, with increasing popularity in the EU, including in the Netherlands.  EOS lip balms are round, colourful pods that come in a wide assortment of flavours (left and right are depicted the blackberry nectar and summer fruit flavours).

The Kind Group owns a registered Community design (RCD), number 1710245-0003, indicating a “lip balm dispenser”. Three of the five views are as follows:

In all the views, the design is depicted wholly in dotted lines except for the ‘dome’ at the top of the design, which is drawn with a solid line.

The Kind Group brought preliminary relief proceedings against JPMC Investment Group BV, alleging that its RCD was infringed by JPMC’s “Belweder” lip balm, some flavours of which are represented here:

The first and primary issue in this case was the interpretation of the dotted lines. In the Netherlands (as in England and Wales) the meaning given by courts to dotted lines is dependent on context. This “contextual” interpretation is inherently ambiguous for those studying the design registers. This contextual interpretation led to the Court of Appeal of The Hague ruling in the Apple v Samsung design litigation (24 January 2012, LJN: BV1612, upheld on appeal to the Dutch Supreme Court) that the dotted lines in question did not indicate disclaimed features, but simply indicated features below the surface of the design. 

In practice, this means that a dotted line has no clear meaning ex ante. This creates uncertainty as to the question whether the features drawn in dotted lines will enjoy protection or not.

The Kind Group in their written pleadings made an argument that the dotted parts of the design were included in the scope of protection. During the oral rebuttal, however, this argument was withdrawn. As such, the design’s protection was drastically narrowed to just the part indicated by a solid line (i.e. the dome, without the holder), and The Kind Group’s chances of a finding of infringement were diminished accordingly.

JPMC proceeded to narrow the scope of protection of the design even further by showing the court evidence of a lip balm applicator by Lancôme that was marketed three years before the application date of the RCD (depicted on thr right).  The judge found that the Lancôme lip balm had a fairly similar dome shaped top as the RCD’s. As the Lancôme lip balm forms part of the existing design corpus, the judge found that the scope of protection of the RCD had to be very limited. With this determined, the judge decided that the relevant part of JPMC’s lip balm was more ‘pointy’ than the RCD, and consequently it found that there was no infringement.

Comment

The practice with regard to dotted lines included in OHIM’s Guidelines has been recognised by the General Court. However, this practice will only work if it is also followed and interpreted in a consistent manner by the different national courts providing certainty for design holders and other players in the European market. 

This case should serve as a salutary reminder to design applicants to use dotted lines with great care. Unless there is a good reason for a disclaimer to be included, for example to maintain a design’s validity, designers should use a solid line. Even in a jurisdiction which expressly might interpret a disclaimer contextually, it is too risky for a designer to rely on this, as this case shows.

The decision can be found here (in Dutch only).

Posted by Jeremy for Paul Tjiam and Hidde Koenraad, Simmons & Simmons LLP