Case No. IP-2021-000119

The law20.The position in relation to Community Designs was explained by the General Court in Grupo Promer Mon Graphic SA v OHIM (Case T-9/07) EU:T:2010:96:[55] The court observes that, under art.3(a) of Regulation 6/2002 , a design is the appearance of a product, and art.36(2) of that regulation requires that an application for a registered Community design is to contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied. However, it must be pointed out that, although the indication of those products in the application for a registered Community design is compulsory, that information does not, by virtue of art.36(6) of Regulation 6/2002 , affect the scope of protection of the design as such.[56] Accordingly, it follows from art.36(6) of Regulation 6/2002 that, in order to ascertain the product in which the contested design is intended to be incorporated or to which it is intended to be applied, the relevant indication in the application for registration of that design should be taken into account, but also, where necessary, the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function. Taking into account the design itself may enable the product to be placed within a broader category of goods indicated at the time of registration and, therefore, to determine the informed user and the degree of freedom of the designer in developing his design.21.This reasoning was not criticised by the CJEU on appeal in PepsiCo Inc v Grupo Promer Mon-Graphic SA (Case C-281/10 P) EU:C:2011:679). The upshot is that the indication contained in the registered design of the products in which the design is intended to be incorporated or to which it is intended to be applied provides a pointer to the relevant sector for a Community design, but only “where necessary”. I take this to mean only where the image or “design itself” does not identify the relevant sector clearly enough.22.Turning to UK registered designs, the 2006 Rules require the applicant for a registered design to specify the product to which the design is intended to be applied or in which it is intended to be incorporated (see rule 5(2)). Yet the RDs in suit here contain no such specification. They contain a Locarno classification, the class being “11- Articles of Adornment”, the sub-class being “02-trinkets, table, mantel and wall ornaments, flower vases and pots”. A Locarno classification is not the same thing as an indication or specification of the relevant product (compare art.36(2) and art.36(3)(d) of Regulation 6/2002). The UK registrar may publish any information he thinks relevant to the registered design (rule 11(2)), so it may be that the registrar thought it sufficient, by way of specifying the relevant products, to state the relevant Locarno classification.This case23.M&S proposed a highly specific relevant sector: Christmas liqueur in the UK. Aldi said that the correct sector was, more generally, spirits and liqueurs in the UK.24.If the published Locarno class and sub-class has any bearing on identifying the relevant sector, I do not find it helpful. There was evidence on which M&S sought to rely that M&S intended to target the Christmas liqueur sector and that its sales of gold leaf liqueur were largely in December. I find this to be of little relevance. It seems to me that just as a design must be interpreted objectively by the court, so the identification of the relevant sector is also an objective assessment. If the image in a registration were to be that of a simple spanner, it would make little sense to be guided by the proprietor’s evidence that it intended, and succeeded, in selling its spanners only during the Christmas period in Norfolk.25.In the present case I must be guided by the images themselves. The images show decorated and stoppered bottles containing liquid. The decorations are of a winter scene and those images with snow suggest winter. The latter are the images in UK 80 and 84 which show gold flakes in the liquid. UK 82 and 84 further show a light in the base of the bottle.26.I think that the relevant sector for all of them can be first narrowed down to liquid products sold in decorated bottles, products which may contain gold flakes. The evidence did not identify any liquids other than spirits and liqueurs which are sold in decorated bottles with gold flakes in the liquid. The decorations and the snow, where present, suggest winter, but I do not see that to be a constraint on the months of the year in which sales could be made. Aldi’s characterisation of the relevant sector is correct: spirits and liqueurs in the UK.