The EU General Court on prior disclosure by the design owner

With its judgment of 12 March 2025 in case T-66/24, the EU General Court clarified the relevance of prior disclosures for the purpose of assessing the novelty and individual character of Community designs, in particular with regard to disclosures made by the owner of the contested design.

The decision arises from an application for a declaration of invalidity lodged, before the EUIPO, by Lidl Vertriebs GmbH & Co. KG against a Community design registered by Liquidleds Lighting Corp., which depicted an LED light bulb. According to Lidl, the design lacked novelty and individual character, given the earlier design depicted below, which was disclosed by the owner of the contested design before the contested design was registered.

The Cancellation Division of EUIPO had rejected Lidl’s application and its decision was upheld by the Board of Appeal. This had held that the disclosure of the earlier design fell within the exception provided for in Article 7(2) of Regulation (EC) No 6/2002 (the “Regulation”), according to which disclosure of the design by its author to the public in the twelve months preceding the filing of the application for registration does not constitute a disclosure that invalidates the novelty and individual character of the design.

According to Lidl, the EUIPO had erred in this assessment because the exception in question would require the original disclosed design to be identical to the one subsequently registered, while the earlier design in question differed from the contested design. However, this ground of appeal is rejected by the EU General Court, which, in the decision in question, states that the exception applies not only to identical designs, but also to those that produce the same overall impression on the informed user.

In particular, the Court notes that Article 7(2) of the Regulation expressly refers to both the requirements of novelty (Article 5 of the Regulation) and of individual character (Article 6 of the Regulation), which exists when the overall impression that the design produces on the informed user differs significantly from the overall impression produced by any design previously disclosed to the public. Therefore, “if the requirements laid down in Article 7(2) are met, disclosure of an identical design (for the purpose of applying Article 5 of that regulation) or of a design producing the same overall impression (for the purpose of applying Article 6 of that regulation) is not taken into account”.

The Court stresses that this interpretation is in line with the objective of Article 7(2) of the Regulation, namely to give the designer the opportunity to test the design on the market for one year before proceeding with the formal registration and bearing the related costs. During this period, the designer may make the changes necessary to ensure the commercial success of the product, without such disclosures affecting the novelty or individual character of the registered design.