One of the more contentious issues in European design law has been the relationship between designs and products.  fairly early on in the life of the new design law, the UK Courts held in Green Lane Products v PMS International, [2008] EWCA Civ 358, that the scope of protection was not limited by the product indicated in a registered Community Design,and neither was the prior art citable for novelty purposes.  However, some disagreed.  

In their Judgment of 21 September 2017 in Joined Cases C‑361/15 P and C‑405/15 P, Easy Sanitary Solutions BV v EUIPO/Group Nivelles NV, UK intervening ECLI:EU:C:2017:720, the Court have definitively drawn the necessary line in the same place as the UK courts, holding that the the indicated product limits neither the infringement rights nor the scope of citable prior art.  Although this was the widely anticipated result, those who file designs will breathe a sigh of relief, since had the Court held the contrary, the scope of many existing designs might have been severely curtailed by a carelessly drafted indication of product.

The case was an appeal from T‑15/13 Group Nivelles v OHIM — Easy Sanitary Solutions (Shower drainage channel), EU:T:2015:281, itself an appeal from the decision of the Third Board of Appeal of EUIPO of 4 October 2012 (Case R 2004/2010-3), itself an appeal from invalidity decision ICD 7024 of 23 September 2010 concerning RCD 000107834-0025.  So it has, as usual, taken a little time to traverse the appeal tree, but at least the result was worth the wait.

To cherry-pick the key points:

On scope of protection

91      In addition, it should be noted that, in accordance with Article 10(1) of Regulation No 6/2002, the protection conferred by a Community design is to include ‘any design’ which does not produce on the informed user a different overall impression.
92      Accordingly, it must be held that if ESS’s position that a design’s protection depends on the nature of the product in which that design is incorporated or to which it is applied were to be accepted, such protection would be limited only to the designs belonging to a specific sector. Such a position cannot therefore be accepted.
93      In addition, as the General Court was right to hold in paragraph 115 of the judgment under appeal, it follows from both Article 36(6) and Article 19(1) of Regulation No 6/2002 that a registered Community design confers on its holder the exclusive right to use the relevant design in all types of products, and not only in the product indicated in the application for registration.
94      Under Article 36(6), the information referred to, inter alia, in paragraph 2 of that same article is not to affect the scope of protection of the design as such. Consequently, that information, consisting of an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied, cannot limit the protection of that design, as is provided for, in particular, in Article 10 of Regulation No 6/2002.
95      With regard to Article 19(1) of that regulation, the reference to ‘a product’ in which the design is incorporated or to which it is applied, does not permit the conclusion that the scope of protection of the Community design will be limited to the product in which the design is incorporated or to which it is applied.

On the prior art available for novelty

89      It follows from Article 5(1)(b) of Regulation No 6/2002 that a design is considered new if no identical design has been made available to the public, in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.
90      The wording of that provision does not mean that the novelty of a design is dependent on the products in which it is capable of being incorporated or to which it is capable of being applied.

96      In such circumstances, the General Court was right to hold in paragraph 116 of the judgment under appeal that, having regard to the interpretation of Articles 10, 19 and 36 of Regulation No 6/2002, a Community design cannot be regarded as being new, within the meaning of Article 5(1) of that regulation, if an identical design has been made available to the public before the dates specified in that provision, even if that earlier design was intended to be incorporated into a different product or to be applied to a different product.  The fact that the protection granted to a design is not limited only to the products in which it is intended to be incorporated or to which it is intended to be applied must therefore mean that the assessment of the novelty of a design must also not be limited to those products alone. Otherwise, as the General Court pointed out in the same paragraph, the subsequent registration of a Community design, which would be obtained despite the earlier disclosure of an identical design intended to be incorporated in a different product or to be applied to such different product, would allow the holder of that subsequent registration to prohibit the use of that same design for the product that was the subject of the earlier disclosure, which would be an absurd result.

104    Therefore, the General Court did not err in law when it held, in paragraph 123 of the judgment under appeal, that an earlier design incorporated in or applied to a product that is different from the one to which the later design relates is, in principle, relevant for the purposes of assessing the novelty, within the meaning of Article 5 of Regulation No 6/2002, of the subsequent design. It follows from the foregoing that, as the General Court stated in paragraph 123 of the judgment under appeal, that article precludes a design from being considered to be new if an identical design was made available to the public earlier, whatever the product in which that earlier design is intended to be incorporated or applied.

On the "relevant sector" for assessment of whether a disclosure is available to the public

102    It follows from the travaux préparatoires for Regulation No 6/2002 that the purpose of the exception in Article 7(1) of that regulation, relating to cases in which certain events, listed in that provision, cannot constitute a disclosure to the public, is to ensure that events that are difficult to verify and that occur in a third country are not capable of constituting such disclosure, and not to make a distinction between various business sectors within the European Union and to exclude the possibility that events that relate to a business sector that cannot reasonably be known to the specialised circles of another sector within the European Union may constitute a disclosure to the public.
103    Thus, the General Court was right to hold, in paragraph 122 of the judgment under appeal, that the ‘sector concerned’, within the meaning of Article 7(1) of Regulation No 6/2002, is not limited to that of the product in which the contested design is intended to be incorporated or applied.

On whether the "informed user" needs to have been aware of a particular disclosure for it to be citable

125    It is true that, according to the case-law of the Court of Justice, the adjective ‘informed’ suggests that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them (judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59).
126    However, the concept of an informed user cannot be interpreted as meaning that it is only if that user knows the earlier design that the earlier design could prevent recognition of the individual character of a subsequent design. Such an interpretation runs counter to Article 7 of Regulation No 6/2002.

130    The General Court’s finding, set out in paragraph 132 of the judgment under appeal, amounts to saying that, for the purposes of examining the individual character of a design, within the meaning of Article 6(1) of Regulation No 6/2002, the earlier design, whose disclosure to the public has been proved, within the meaning of Article 7(1) of that regulation, must be known to the informed user of the contested design.
131    However, nothing in Article 7(1) permits the conclusion that it is necessary for an informed user of the product in which the contested design is incorporated or to which it is applied to know the earlier design when it is incorporated in a product in an industry sector that differs from the relevant sector for the contested design, or is applied to such a product.
132    If the General Court’s finding, set out in paragraph 132 of the judgment under appeal, were to be followed, an applicant for a declaration of invalidity in respect of the contested design would have to prove not only that the earlier design had been made available to the public, within the meaning of Article 7(1) of Regulation No 6/2002, but also that the informed public of the design whose validity is contested knew that earlier design.
133    That would be tantamount to requiring an applicant for a declaration of invalidity to provide evidence of two disclosures: a first disclosure to those in ‘circles specialised in the sector concerned’ and a second disclosure to users of the type of product relevant to the contested design. Such a requirement, besides being incompatible with the interpretation of the phrase ‘sector concerned’ referred to in paragraph 129 of this judgment, would add a condition that neither the letter nor the spirit of Article 7(1) of Regulation No 6/2002 provides and would be irreconcilable with the principle arising from Article 10(1) of that regulation, according to which the protection granted by the Community design extends to ‘any design’ that fails to produce on the informed user a different overall impression.
134    It follows that the General Court erred in law when it imposed the requirement, in paragraph 132 of the judgment under appeal, that the informed user of the contested design should know the product in which the earlier design is incorporated or to which it is applied.

Perhaps there will be occasional cases where this almost-absolute-novelty rule is harsh on the proprietor of a design, but the advantages to proprietors and competitors of a clear rule that removes arguments on the product and sector from considerations of novelty and infringement are likely to outweigh these.  UK practitioners will also welcome the consistency with the Green Lanes judgments of the last decade