Flushed and failed: General Court shuts the lid on invalidity attack against toilet seat design

Introduction

Earlier this year, we reported on a Belgian court ruling relating to the validity and infringement of designs for cat litter trays (read about it here). This time, in a decision which will be of greater relevance to our feline friends’ human companions, the EU General Court has dismissed an appeal seeking to invalidate a design for toilet seat lids (Nextrend v EUIPO - Xiamen Axent Corporation and Axent Switzerland, Toilet seats (elements of - ) Case T-82/23). The decision re-states some key principles of design law on the impact of technical constraints for functional products, and also highlights the importance of timely and complete prior art evidence.

Background

The case concerned an attack on the validity of a Registered Community Design (“RCD”) filed by Xiamen Axent Corporation (“Axent”) for toilet seats, as depicted below:

_{Source: Info-Curia}

The invalidity applicant, Nextrend GmbH (“Nextrend”) sought to invalidate the contested design on the grounds that it lacked individual character as against the earlier RCD number 2167882-0002, shown below:

_{Source: EUIPO}

Nextrend had also pleaded invalidity against an earlier German registered design (“DM640”), but that additional design was introduced into its evidence during proceedings and did not form part of the original grounds of invalidity.

The invalidity application was rejected by the EUIPO Invalidity Division, and Nextrend appealed to the EUIPO Board of Appeal (the “Board”). The Board dismissed the appeal, agreeing with the EUIPO and finding that the design of a toilet seat lid was subject to technical constraints limiting design freedom – and therefore, the contested design was novel and produced a different overall impression from the cited prior art. Still undeterred, Nextrend challenged the Board’s decision and took its case up to the EU General Court (“GC”).

Grounds of appeal

On appeal to the GC, Nextrend advanced three lines of argument:

1. Firstly, the Board of Appeal had not sufficiently set out the reasons for its decision. This was said to be contrary to Article 63 of Regulation 6/2002 on Community Designs (the “RCD Regulation”) which requires EUIPO’s decisions to “clearly and unequivocally” show their reasoning.
   
   Nextrend challenged the Board’s findings that the shape of a toilet seat lid was standardised by the requirement to fit the seat (for which Nextrend said there was no evidence). It also disagreed with the Board that the rectangular fixation at the back of Axent’s design was “rather unusual”, whereas Nextrend claimed there was plenty of evidence of that feature being present in many earlier designs. It also criticised the Board for not properly considering how much weight the ‘informed user’ would attach to the similarities and differences between the designs.
   
   The GC rejected Nextrend’s arguments, and confirmed (much to the relief of EU design tribunals) that Article 63 did not require the Board to exhaustively follow and address each and every line of reasoning articulated by the parties. As long as the judgment allowed the parties to ascertain the reasons for the decision and for an appellate court to assess the legality of the decision, the Article 63 requirement had been met. In this case, the Board had sufficiently explained its reasoning and provided opinions on the issues of design freedom, technical constraints and the informed user’s perspective.
    
2. Secondly, Nextrend alleged that the Board had failed to take into account the earlier German design (DM640) pleaded as prior art. However, the snag in its argument was that this piece of prior art was introduced late into its evidence and was not pleaded in its initial invalidity application. It was only introduced to the case during proceedings, after Axent had filed observations. The Board had therefore refused to consider DM640 as this would have amounted to an unlawful extension to the subject matter of the proceedings.
   
   The GC agreed with Board’s approach and noted that Article 52(2) of the Regulation required an application for invalidity to state the reasons on which it was based, and furthermore, the Statement of Grounds accompanying such application needed to set out “the indication and the reproduction of the earlier designs that could form an obstacle to the novelty or individual character of the registered Community design, as well as documents proving the existence of those earlier designs”.
   
   Although the EUIPO had some discretion to admit late-filed facts or evidence, it was clear from previous case law (e.g. Shower drainage channel, T-327/20) that this discretion did not extend to admitting additional designs as evidence of prior art. That principle was intended to protect the rights holder from being exposed to a dispute whose subject matter was a constantly moving target. The onus was on the invalidity applicant to properly define the basis of its claim at the outset, by setting out all of the earlier designs on which it intended to rely, from day one.
    
3. Thirdly, Nextrend argued that the Board had disregarded the correct legal framework for assessing ‘overall impression’, namely, to consider the perspective of the informed user, the degree of design freedom, and the assessment of individual character. Essentially, Nextrend complained that the Board had not paid enough attention to its evidence of a wide variety of differently shaped toilet seat lids, and that it had focused too much on minor differences between the contested design and the cited prior art. Nextrend also criticised the Board for failing to consider ‘overall impression’ from the viewpoint of what was visible in the ‘normal use of the product according to its purpose’.
   
   The GC did not accept that the Board had erred in its assessment. It was apparent that it had indeed considered the fact that the informed user knew about different models of toilet lids, and had taken into account the visibility of features in the normal use of the product.  The Board had also correctly applied the established principle that the more a designer’s freedom in developing a design was restricted by technical factors, the more likely that minor differences to the prior art would be sufficient to produce a different overall impression. Whilst certain high-level aspects of toilet seat lids were constrained by the standardisation of toilet bowl shapes, there was some design freedom in relation to outer shape, dimensions, thickness and attachments. Crucially, however, the Board was right to find that the existence of variants of lids of asymmetrical or extravagant shape (as shown in Nextrend’s evidence) did not mean that there was no limitation on design freedom – and it made more subtle differences in appearance more significant in the comparison.
   
   Looking at the cited earlier design specifically, the Board was right to consider that the rectangular cavity present in the contested design would not go unnoticed by the informer user. Even if that feature was present in other designs (and assuming the informed user was aware of those other designs), the fact remained it was not present in the prior design actually relied on. Likewise, differences in the control knobs and the rear edges of the lids would also be noticed by the informed user. Here, the GC highlighted that a validity challenge cannot be based on the “mosaicking” of components from a variety of prior designs but had to be based solely and specifically on similarity with the earlier design relied on as the basis for invalidity.
   
   Accordingly, all three grounds of appeal were dismissed and the Board’s decision to reject the invalidity challenge was upheld.

Comment

Although this decision introduces no new or unexpected principles of law, it highlights the importance for invalidity applicant to get their evidential ducks in a row. Businesses considering an invalidity attack against a competitor’s design on the basis of prior art should bear the following key points in mind:

1. An invalidity applicant does not get ‘two bites at the cherry’ if its initial prior art evidence is incomplete, and the EUIPO does not have the power to admit late-filed prior art examples. It is essential for all items of prior art to be clearly and specifically pleaded – and evidence of their existence to be filed – as part of the Statement of Grounds for invalidity. For that reason, it is also essential that any prior art searches which may be carried out to locate relevant examples of prior designs are comprehensive and thorough at the outset, as any further examples located ‘after the event’ will likely be deemed inadmissible.
    
2. The assessment of overall impression will be based on the earlier design (or designs, if multiple grounds are advanced) specifically pleaded as a basis for invalidity. Similarity in ‘overall impression’ cannot be established by seeking to combine design elements from various earlier designs to argue that none of those elements were ‘new’ or had ‘individual character’ – in other words, no “mosaicking” of features is allowed and the contested featured must all be present in a single prior design that is used as the basis for the comparison.
    
3. Evidence of the existence of design variants does not necessarily mean that the product type in question is not subject to design constraints. The informed user will still tend to pay more attention to more minor differences in design elements, where the features in common relate to those aspects of the design for which there is less design freedom.