On 23 April 2021, the Supreme Administrative Court passed a judgement which confirms that the so-called grace period, as provided for in the Industrial Property Law Act, should be taken into account not only while it is examined if a given industrial design is a novel one, but also while its individual character is being assessed.

The case, examined under court ref. no. II GSK 787/18, has been won by the PNP Law team headed by Lech Gniady, PhD.

The above judgement may have a considerable practical significance for disputes between the entities which are entitled to rights under industrial design registration and the entities which breach those rights.

What is an industrial design?

An industrial design is a novel form of an article (a given product) or a component of such article, having individual character; such novel form is in particular found in composition of lines, contours, shapes, colours, texture or material of the article, or in its ornamental aspect.

It often happens that, in order to defend itself against claims of an entitled entity, the breaching party files with the Patent Office a motion (nowadays it may also be a counterclaim filed with an intellectual property court) for invalidation of rights under industrial design registration. Such motion may be justified with the lack of novelty of the design (it should be indicated that the submitted industrial design has not referred to any novel form of a given product) or the lack of individual character (it should be indicated that the design does not differ from other products of a given industry enough to meet the conditions for registration).

What is a grace period?

When such motion is filed, the Patent Office (or the court) is obliged to examine if the industrial design was indeed a novel one and had individual character at the time the design was submitted for registration. It happens repeatedly that a design is not recognised as a novel one because it has been disclosed by its author itself or by an entity which acquired intellectual property rights from the author (e.g. a new form is presented at a fair prior to submitting an application for industrial design registration). However, the legislator provided in the regulations of the Industrial Property Law (Article 103 Section 3 Item 2) that such a “blunder” committed by an entitled party does not, in fact, exclude granting of the right under registration due to no novelty of the design. If such self-disclosure is made within 12 months preceding the filing of an application with the Patent Office, the design is still recognised as a novel one.

What’s important, in accordance with court judgmental practice, “Novelty of a design is inherent in individual character. No novelty means no individual character, and vice versa. If a design has individual character, then it is a novel one.”

Nevertheless, the Polish regulations introduce a 12-month grace periodonly with regard to the novelty of an industrial design. On the other hand, pursuant to the regulations of the Industrial Property Law, a motion filed by an entity which requests that the industrial design be invalidated binds the Patent Office also in respect of the indicated grounds.

What was the situation before the judgement?

That’s the reason why, while examining the motion for invalidation of the right under industrial design registration, the Patent Office has, so far, been of the opinion that a 12-month grace period may be applicable only if an entity which requests that the industrial design be invalidated bases its allegations on the pre-requisite of the design lacking novelty. So, the Patent Office did not take the grace period into account when the allegations were based on the design lacking individual character.

Consequently, a common strategy was to limit the scope of allegations raised in a motion to those of a design lacking individual character, so that the Patent Office did not examine the possibility to apply a 12-month grace period. In practice, by omitting the mention of an allegation of the design lacking novelty, it was possible to invoke circumstances of an early disclosure of the design while indicating only lack of individual character of the design, and not the lack of novelty. A complaint worded in such a manner excluded the application of Article 103 Section 3 Item 2 of the Industrial Property Law Act, which was to the detriment of entitled entities.

Why is this judgement so important?

The Supreme Administrative Court judgement passed in April confirms i.a. that an entitled party may invoke the above-mentioned grace period not only in respect of the pre-requisite of novelty, but also in respect of the pre-requisite of individual character of an industrial design, which arises from the need to ensure that the interpretation of Polish law is in line with Directive 98/71/EC (Article 6 Section 2 of the Directive on the Legal Protection of Designs).

Since the European legislator has indicated at the same time that the grace period applies to both of the above-mentioned pre-requisites, then, in the opinion of the Supreme Administrative Court, an entitled party has the right to invoke the 12-month period also if the allegations concern only an industrial design lacking individual character.

To whom is the judgement important?

The judgement will support parties entitled to industrial designs, most often manufacturers or designers of given products, by allowing them to protest motions for invalidation of rights under registration more effectively.

Simultaneously, smaller chances to have industrial designs invalidated should discourage the entities who make a living by copying products of others, or at least some of those entities, from doing that.

The ground of the judgement has just been published in the Central Database of Administrative Court Judgements.