Austria: What Cookies Teach Us about Design Protection

To an IP lawyer this is not a cookie. This is not even half a cookie. To an IP lawyer this might be a "complex product", and may bring to mind an interesting case decided by the Third Chamber of the General Court.¹ So, let us tell the story from the beginning: The applicant filed an application for registration of a Community design with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). The design in respect of which registration was sought, was intended to apply to "cookies", and was represented as shown in the picture above. The design in dispute was registered as a Community design and published. Less than a year later, a competitor applied to OHIM for a declaration that the contested design was invalid. In its application for a declaration of invalidity, the intervener alleged inter alia that the contested design had no individual character. In support of its application for a declaration of invalidity, the intervener submitted photos of rather similar cookies in toto, broken in half, and bitten into, all published before the priority date.

The Cancellation Division of OHIM dismissed the application for a declaration that the contested design was invalid. The Third Board of Appeal of OHIM declared the contested design invalid on the grounds that it lacked individual character. The Board of Appeal held, firstly, that the layer of filling inside the cookie could not be taken into consideration for the assessment of the individual character of the contested design, as it did not remain visible during normal use of the product. Furthermore, the Board of Appeal considered that the outer appearance of the contested design was the same as seen in the photos of the earlier cookie designs.

So the question was this: Is the layer of filling inside the cookie visible when the product is put to normal use (since it will be broken at the time it is consumed, which is a normal use thereof)? That question has a legal background because according to Article 4 (2) Community Design Regulation (CDR)², a design applied to, or incorporated in a product which constitutes a component part of a complex product, shall only be considered to have individual character (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and (b) to the extent that those visible features of the component part fulfil in themselves the requirement as to individual character. And what is "normal use"? "Normal use" within the meaning of Article 4 (2)(a) CDR, means use by the end user, excluding maintenance, servicing, or repair work (Article 4 (3) CDR). So couldn't we say that the layer of chocolate filling inside the cookie becomes visible during "normal use" of the cookie, ie if you bite into it? And shouldn't that peculiarity be taken into account when evaluating the individual character of the design in question?

Nice try but this did not work. The General Court found that a cookie is not a "complex product" at all. A "complex product" means a product which is composed of multiple components which can be replaced permitting disassembly, and re-assembly of the product (Article 3 (c) CDR). A cookie is not a complex product within that meaning because it is not composed of multiple components which can be replaced permitting disassembly, and re-assembly. By the way, have you ever tried to re-assemble a cookie after the first bite? Not an easy task!

Therefore, the special provisions for "complex products" could not be applied to the cookie design in question. The General Court instead applied the general rule of Article 4 (1) CDR: A design shall be protected by a Community design to the extent that it is new and has individual character. "Design" means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture, and/or materials of the product itself, and/or its ornamentation (Article 3 (a) CDR). In this general rule nothing is said about "normal use". Consequently the General Court stated that the layer of chocolate filling inside the cookie was not visible because the product had to be broken open for the inside to become visible, with the result that this characteristic was not to be taken into account for the assessment of the individual character of the contested design.

What remains is the irregular, rough surface on the outside of the cookie, its golden colour, round shape and the presence of chocolate chips. These are characteristics which are common to the conflicting older designs, and decisive for the overall impression produced on an informed user, so that the contested design could not be regarded as having individual character. The General Court confirmed the decision of the Third Board of Appeal of OHIM. And the General Court had no reason to discuss the further question of whether such a design might have individual character with regard to the chocolate layer when applied not to cookies in toto, but to "halved cookies".

Maybe by reading this story you have discovered a taste for more of the same? I do not mean cookies. I mean "complex products" from a legal perspective. If this is so, I can recommend an even more complex case regarding a "heat exchanger insert". This is a part of a complex product, namely a heat exchanger, which was incorporated into an even more complex product, a household boiler!³ But this is another story …

Don't judge a cookie design by its inside!

¹GC 09.09.2014, T-494/12.
²Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1), amended by Council Regulation No 1891/2006 of 18 December 2006, amending Regulations (EC) No 6/2002 and (EC) No 40/94, to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs (OJ EC No L 386 of 29.12.2006, p. 14).
³See GC 20.01,2015, T-616/13.

author: Guido Kucsko