The 6^th IP Case Law Conference hosted by the EUIPO Boards of Appeal is taking place in Alicante and online this week. The theme is “Growing through change”.

The second session of the Conference covered the power of designs and was moderated by Inga George of boesling IP, Co-Chair of the MARQUES Designs Team.

Appearances matter

Kicking off the session, Päivi Tahkokallio, founder and CEO of Tahkokallio Design+ and a member of the DesignEuropa Awards jury, discussed the role played by design protection in creating value in designs.

“For me, design protection is about what meets the eye,” she said. She highlighted the values of novelty, sustainability, usability/functionality, aesthetics and ethics in designs and told the audience: “I hope that you all would be willing to dive into the value of design from different aspects than design protection. If you want to do your job properly, you need to understand design in a deeper way!”

Paula de Andrés Gómez of Berggren discussed the Lego exception for modular systems in Article 8(3) of the Design Directive in her presentation. She said that CJEU and EU General Court case law had established that “functionality does not automatically exclude protection”.

“The exception ensures that the design law remains relevant for modular industries. Without it, many products would fall outside protection,” said Paula. “At the same time, it is a targeted exception and designs must comply with requirements such as novelty and inventive character.”

Following her, Philipe Kutschke of Bardehle Pagenberg talked about design law disputes following the design law reform. One area with a significant practical impact, he said, is goods in transit: the burden of proof is on the declarant to prove that products are legal in the final destination. Another key point is the repair clause: the scope is now narrower than it was under previous case law as it applies only to repair, and there is a transparency requirement.

On digital designs, Philipe said the reform speaks of “pixels instead of plastic”: there is no limit to seven static views and animated images are accepted. But he warned: “The risk that AI-generated prior art will flood the internet is imminent.” However, he added that new provisions relating to 3D printing may be relevant to AI-assisted and AI-created designs.

In-person attendees enjoy a coffee break in the Alicante sunshine

“The future of design protection is bright, but we should not underestimate the risks coming with new developments,” Philipe concluded, saying that “solid legislation” as well as reactive litigation is needed.

Spare parts

Picking up on the spare parts issue, Francesca Portincasa of Automobili Lamborghini S.p.A. highlighted the importance of various IP rights, as well as product liability, for the automotive industry. “Are legal tools alone enough? The answer is no,” she said.

Francesca stressed that production development in the automotive industry takes many years. Deferring publication of a design allows the safeguarding of novelty during development and testing with appropriate camouflage. However, the risk of leaks is increasing, meaning that novelty can be lost and enforcement can be weaker. In New Zealand, for example, a design application was refused after photos were posted online; in another case, the North Macedonia IP office published a design notwithstanding the request for deferral.

“In the automotive sector, IP protection requires cooperation between different functions,” said Francesca. “It is not only about securing rights but managing timing, information and risk.”

Three tensions

Finally, Gordon Humphreys, Chairperson of the 1st and 3rd Boards of Appeal at EUIPO, presented some recent Board of Appeal case law. He argued that design law is “increasingly living at the intersection of three tensions”: appearance versus function (how much design freedom creators have when constrained by technical functions); digital evidence versus what counts as legal proof; and fair competition versus abusive tactics. He highlighted the following cases:

• Case R2089/2024-3 Lidl v Gusta Garden: a design for a modular plant container was held valid as online evidence of earlier disclosure was not clear or reliable and was therefore inconclusive. “It’s about whether the digital evidence could be properly traced,” said Gordon.
• Case R1483/2024-3 Building Slabs: a prior disclosure that was based on stolen designs by a former business partner was a misappropriation. This case underscores the importance of signing NDAs and post-employment restrictions to prevent this type of misappropriation, said Gordon: prior art is not just about what exists but how it came into existence.
• Case R1800/2025-3 Breathing Device/Nasal Aspirator: a design was not purely functional as the invalidity applicant had not proved that all aspects of the design were solely dictated by technical necessity; there was some margin for showing the designer still had room for aesthetic freedom. The lesson is that functionality is a high bar: invalidity applicants arguing functionality need to prove the lack of design freedom.

Summing up, said Gordon: “The devil is in the detail – and in the proof.”

Look out for further reports from the Conference on the MARQUES Class 46 blog. You can find out more about the Conference on the EUIPO website here. Photos taken by MARQUES editor James Nurton