Cookie designs crumble at GC: Biscuits Poult v OHIM

Biscuit's contested design:

The applicant for invalidity (Banketbakkerij Merba BV) based its attack on three elements:

1. That the design was not new.
2. That the design had no individual character.
3. That the design was dictated by technical function, within the meaning of Articles 5, 6 and 8 of the Community Designs Regulation (6/2002/EC) (CDR).

Banketbakkerij submitted a number of previous designs of other cookies in order to support its allegations.

Examples of the earlier designs:

The Cancellation Division at OHIM initially dismissed the application for invalidity. However, on the basis of an appeal by Banketbakkerij to the Board of Appeal and the comparison that followed of the design against the submitted earlier designs, the design was later held to be invalid.

Complex product features?

This decision relates to the further appeal to the GC, where the design owner (Biscuits) argued that the internal design of the cookie, being a liquid chocolate centre of the cookie, had not been taken into account in the comparison against the previous designs, and such chocolate layer was what gave the design individual character.

Biscuits also attempted an innovative submission that the cookie design could be considered as a 'complex product', of which the chocolate layer was a component part.

The court set out the law in relation to complex products, being products which are made up of multiple components (Article (3)(c) of the CDR). Under Article 4(2) of the CDR, there is a specific rule in relation to components of complex products. Pursuant to this article, in order to be protected, component parts are required to be seen in normal use of the complex product and the component part itself must be novel and have individual character.

On this basis, Biscuits effectively argued that if the cookie design was seen to amount to a complex product, then the chocolate layer was a component part which was novel and of individual character, and it would be able to be seen in normal use.

However, the GC rejected this argument and held that the cookie design was not a complex product. Therefore, the concept of what constituted components and 'normal use' of the cookie was irrelevant to this case. Further, the court held that the OHIM Board of Appeal was correct not to take into account the internal chocolate layer in its comparison with the earlier designs, as Article 3(a) of the CDR required the court to only consider the "appearance of the whole or a part of a product". As the chocolate filling only became visible when the cookie was broken, this characteristic did not relate to the appearance of the cookie.

Impression on the informed user

The court held that the contested design did not produce on an informed user (who regularly consumed that type of cookie) a different overall impression from that produced by the earlier designs, particularly in light of the cookie designer's wide scope of design freedom. Therefore, the contested design failed the test for holding individual character.

This case has provided some clarity on the interrelationship between different articles of the CDR, and is a useful reminder of the law on complex products.

Useful link

Biscuits Poult SAS v OHIM (T-494/12) full decision: http://dycip.com/biscuitsvohim