Case T 90/16, Thomas Murphy v EUIPO – Nike Innovate, 4 July 2017 (Electronic Watch Bracelet) marks the latest stage in a battle between a lone inventor and the mighty Nike.  Having had the pleasure of meeting Mr Murphy, the applicant for invalidity of Nike’s design, I will try to keep this post as brief as possible and readers should be aware that his cause has my sympathy, though not my involvement.

The Nike design was registered in 2012 and, in August 2013, Mr Murphy filed to invalidate it.  It was upheld at first instance (in Invalidity Decision ICD 9251), on appeal (Appeal Board Decision R0736/2014-3) and, four years on, before the GC.  We wait with interest to see whether it will go further.

Although the case is about the validity of Nike’s design RCD 002159640-0002, the points of interest arise from the prior art which was Mr Murphy’s own design RCD 000264379-0001 for ‘flexible LCD watch bands’. 

Left: Nike design, right: Murphy prior design

Some similarity in shape at an overall level is apparent from the images above.  However, the Board of Appeal noted that “[a]s to ornamentation, the contested RCD contains no notable ornamentation in addition to the transparent material used, except for a rectangle on the top side of the band containing numerous small white squares (or rectangles), while the prior designs contain indications of time and measurement and a man-like jumping figure in RCD 264379-0001 and repeated indications of time and date in RCD 7588-0001. The prior designs also have separate thin bands running around the bracelet on both of the sides of the bracelet, and in the case of RCD 264379-0001, also a lighter-colored line running around the bracelet in the middle of its outer surface.”

Mr Murphy’s Community Design, like that of Rob Law which the UK Supreme Court considered in PMS v Magmatic, was self-filed in the early days of EUIPO.  He also represented himself in the invalidity proceedings at both instances, though he was ably professionally represented before the GC.  His key arguments for invalidity were:

1 – His own design “ … when registered was such a significant advance on the prior art that it warrants a high degree of protection and that the scope of protection cannot be circumvented, reduced or diminished by copying and then tweaking it so as to escape infringement or be accorded registration” (to quote the Board of Appeal decision); and

2 – Of the surface features shown in his own design, “… the electronic features and the wristband display were hidden unless it was switched on or activated. He also explained that the horizontal lines on the surface of the wristband were neither real nor static but that they symbolised a polarising filter, that the diver indicated that the wristband may be waterproof and that the earlier wristband incorporated a transparent material which was essential for the operation of its display when it is switched on or activated.” 

On the first issue, the Court held that Mr Murphy had not proved his claim.  “Contrary to what the applicant essentially argues, that proof was not impossible to provide. He could, for example, have provided press articles or website extracts evidencing that advance.”  Further, and more importantly, they held that the relevant date for consideration of the prior art was that of the later design under attack, not the date of registration of the earlier:

“It does not follow from Regulation No 6/2002 that it is necessary to take into account the fact that the prior design was, at the time of its registration, a significant advance in relation to the prior art in order to determine whether the contested design has an individual character. … the new and unusual character of the first design does not prevent the informed user from perceiving the differences in subsequent designs (see, to that effect, judgment of 21 May 2015, Senz Technologies v OHIM — Impliva (Umbrellas), T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 95).”(emphasis added)

Thus, a design which was pioneering in its own day may have come to be seen differently by the time (eight years on, in this case) a later design is filed. 

On the second issue, the Court held that only the representations themselves were relevant, not written explanations on the EUIPO file:

“The circumstance, claimed by the applicant, that a number of those explanations had been given in the application for registration is not relevant. Only the representations … were published and thus made available to the public. Accordingly, even if a number of those explanations were already contained in the application for registration, … they could not be taken into account.”

Once more, then, the GC has stressed the importance of the representations over the optional description which applicants could (and, apparently, in this case did) file at EUIPO.