YSL have it in the bag
In 2006, the Office for Harmonisation in the Internal Market (OHIM) authorised the registration of two Community designs of Yves Saint Laurent (YSL), which were intended to be applied to ‘handbags’. In 2009, H&M Hennes & Mauritz (H&M) made two applications for a declaration of invalidity in respect of the designs registered by YSL, on the ground that they had no individual character. In support of its application, H&M invoked an earlier design.
The YSL Bag (registered designs):
The H&M Bag (earlier design):
OHIM went on to reject H&M’s applications for a declaration of invalidity, which H&M appealed, but then had rejected. OHIM took the view that, although the YSL and H&M designs had features in common, the differences as regards the shape, structure and surface finish played a decisive role in the overall impression produced by the bags. OHIM found that although the degree of freedom of the designer was high, in this particular case, it did not, from the point of view of the informed user, cancel out the significant differences which differentiated the two bags at issue. The informed user in the present case was “neither an average purchaser of handbags nor a particularly attentive expert, but someone in between who is familiar with the product” in accordance with an established level of attention.
H&M wanted to have the decisions by OHIM annulled by the EU General Court, but these have today been rejected.
The EUGC held that the differences between the designs at issue were significant and that the similarities between them were insignificant in the overall impression which they produced. In the case of the YSL designs, the impression produced would be that of a bag design “characterised by classic lines and a formal simplicity whereas, in the case of the H&M design, the impression would be that of a more ‘worked’ bag, characterised by curves and a surface adorned with ornamental motifs”. The EUGC also pointed out that the straps and the handle of the designs of the two marks manifestly lent themselves to different uses inasmuch as the YSL designs represent a bag to be carried solely by hand, whereas the H&M design represents a bag to be carried on the shoulder.
H&M’s action has been dismissed, and YSL’s design registrations for the bag will remain in force until they expire in October 2016.