Design laws under European Union are governed by a dual mechanism, the national mechanism/system and the community design system. The national scheme is for the member nations of the European Union, and the community design system is a federal system administered by laws directly applicable to all EU member states. Right holders can protect their designs in member states or/and by a community design.

This piece will deal with case1 of registered community design held by an Indian entity, Classik International. The appeal relating to Invalidity proceedings for the design was filed in the Third Board of Appeal at EUIPO.


Invalidity Applicant/Appellant: M.P.S. Holding B.V., Netherlands

Right holder/Defendant: Classik International, India

Registered Community Design no. - 5 321 056-0001

Invalidity Proceeding Appeal No. - ICD 109161


The design holder got registration on 22 June 2018 for a design with the community design system of EUIPO. The plan was registered, noting the priority from the Indian application No. 305 485 filed on 10 May 2018, indicated as 'clothing for pet' and represented as:


The invalidity applicant on 4 November 2019 filed an invalidity application based on Article 25(1)(b) of the Community Design Regulation read with Article 4(1). The basis of such application was that the contested Registered Community Design (RCD) lacks novelty and individual character. Invalidity applicant argued that all the conflicting designs showed identical, tight-fitting, cylindrical body shapes. For proving invalidity, the invalidity applicant submitted two designs-

  1. 'Medical foreleg sleeves', having RCD no. 2 201 186-0002 published on 22 March 2013 (marked as 'D1' by the Court). Designs of D1 are:
  2. 'Animal clothing', having RCD no. 675 947-0001, published on 20 March 2007 (marked as 'D2' by the Court). Designs of D2 are:

The invalidity applicant iterated that contested RCD and preliminary designs D1 & D2 both pertain to animal clothing and also have similar features like- the shape of the one-piece body, the stitching at the top of the dress, the closing mechanism, the length of the sleeves, the long neckline, the hem of the sleeves, the neckline and the back flap which are sewn loosely to the suit. The IPO felt differently while rejecting the invalidity application; it was held that the design of the right holder is, in fact, unique, and on the comparison, it could be clearly distinguished that there are significant differences between the conflicting designs. Further, it was observed by the Office that there was enough evidence to say that the contested RCD was novel and possessed individual character. Aggrieved by this, the invalidity applicant filed an appeal against the contested decision and pleaded that the impugned judgment be set aside.


  1. First and foremost, the invalidity applicant's submission was about technical or disclaimed features. They argued that the zipper on the bottom of the contested RCD fulfils the technical function and, therefore, should be ignored. Similarly, front leg openings, a part of the back leg openings, a portion of the closure (including triangular cut and press studs), and two lines on the part covering the abdomen being disclaimed factors should also not be taken into consideration.
  2. Secondly, it was submitted by the invalidity applicant that features like longer neck sleeves, sleeves for the front legs, and the closure on the upper back of the animal's body are either not new, disclaimed, or immaterial details; thus, they should not be considered.
  3. Thirdly, it was contended that informed users being veterinarians and pet owners, having an average degree of knowledge, will never make a direct comparison between the designs.
  4. Finally, it was submitted that the design freedom is restricted only insofar as clothing for pets needs openings for paws, a head and tail.
  1. The design holder contented that the zipper was an innovative and unique feature holding an aesthetic value differentiating this design from the previous ones. Because of this zipper, removing the clothing to access the animal's wound is not needed.
  2. It was submitted by the design holder that the designs attached by the invalidity applicant as prior arts are very much different from the RCD and that the invalidity applicant has provided no substantial evidence to substantiate its claim regarding the similarity of RCD with prior designs.
  3. The level of attentiveness was contented to be high amongst the informed users, and the body suit had to be cylindrical, for which the design freedom was restricted.


The reasons for admitting the appeal were as follows:

  1. Preliminary remarks:
  1. The court held that once the application was filed, it was no longer possible to introduce additional prior designs into the proceedings, which can alter the subject matter of the proceedings. It is the discretion of the Board to consider later facts or evidence.2 In the present matter Board decided against it.
  2. The prior designs submitted by the invalidity applicant were not invoked in due time, and no reason was provided for the same. Delayed submission of these prior designs raises suspicion about the invalidity of action. The court iterated that the prior arts could not be considered as per the circumstances. Similarly, claims about quality and consistency were also ignored. (Article 36(1)(c) CDR and Article 4(1)(e) CDIR)
  1. Design Freedom:
    The court held that if the designer enjoys a high degree of freedom in developing a design, it can be said that the designs that do not have notable differences produce the same overall impression on an informed user.
  2. Informed User:
    The informed user is a fictitious person to be determined regarding the contested design.3 Thus, an informed user is whoever usually purchases and uses such products and has become known on the subject by the ordinary course of business or any other means.
  3. Individual Character:
    Court held that the overall impression is based on a direct comparison and that there is no reason to assume that a parallel comparison based on images submitted would be impracticable or uncommon on account of the specific characteristics of the medical pet clothing. For the present design, it was iterated by the court that there exists a difference in closure mechanism, neckline, sleeves and zipper.


The appeal filed by the invalidity applicant was dismissed with costs, per Article 70(1) CDR. All the claims of invalidity applicant stood rejected. The invalidity applicant failed to produce a similar impression about the prior designs. Court categorically mentioned that RCD creates a different overall appearance, and enjoys individual character, thus should be declared novel within the meaning of Article 5 CDR.


1. M.P.S Holding B.V Versus Classik International, In R 363/2021-3, Decided on 19.07.2022

2. Article 63(2) CDR

3. (06/06/2019, T-209/18, Kraftfahrzeuge/ Kraftfahrzeuge, EU: T:2019:377, § 37; 10/11/2021, T-193/20, Panels, EU:T:2021:782, § 24)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.