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Battle of the Bags: H&M vs. Yves Saint Laurent

Once upon a time there was a dispute on handbags and the design rights vested in them. H&M opposed a European design registration of Yves Saint Laurent (YSL) which would not make an overall impression different from a model which H&M itself had registered before. This is a ground of invalidity of the younger design. The case concerning the bag reproduced at the left here ended up before the court of the EU through the invalidity division of OHIM. OHIM and the General Court, however, did see differences and left the design registration of YSL intact. The General Court considers that the reference man, the ‘informed 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.  Looking at this through the eyes of this user the differences are big enough to achieve a different overall impression.

The user is deemed to see where the designer of the design had freedom (i.e. was not limited by a technical function). The bigger the freedom the designer had, the more the elements in question will have weight in the assessment of the ‘individual character’. In this case three characteristic differences had decisive importance: the general shape, the structure and also the finishing of the surface of the bag. Furthermore the CFIEU took into account that the new design is a real handbag for being exclusively carried by the hand, whereas the earlier design is a shoulder bag. This is a remarkable decision: design protection is all about the appearance of a product and so the question arises whether the manner of use should really be taken into account.

Moïra Truijens, trademark lawyer

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