Win some:

The two decisions in question declared the invalidity of designs filed by Chinese companies considering that they lacked individual character in comparison to the prior designs filed by  Turlen Holding SA, owner of the IP rights in Richard Mille watches, famous for its immediately recognisable  watch, notably with its chunky  tonneau shape and twelve star-shaped screws.

The decisions meticulously assess whether the litigious designs can be considered to have an individual character:

1. Without surprise, the sector is identified as that of “wrist watches” (not high end watches)
2. The informed user “without being an expert or producer is a person who is familiar with wrist watches available on the market during the relevant period(…) mainly because of their own interest or experience in these products (so not particularly attentive)
3. The designers’ freedom is deemed to be “average”, the EUIPO having recalled that the greater the designer’s freedom in developing the contested design, the less likely it is that minor differences between the conflicting designs will be sufficient to produce a different overall impression.
4. The overall impression is assessed minutely by the Court, similarities and differences being weighed carefully. The similarities are identified and carefully listed:

• The bezels feature 12 star-shaped screws positioned symmetrically at the same place on the bezel: 4 on each right and left side of the bezel and 4 star-shaped screws, two at the top and bottom of the bezel.
• The watch cases are both composed of 4 merlons on each side of the watch case positioned at the same place at the level of each star-shaped screw giving it a unique geometric shape.
• The watch cases feature a « sandwich » structure with grooves i.e. with an upper and lower part of similar width, wider than the middle part.
• The watch cases have a grooved crown (cylindrical knob) positioned between two merlons on the right of the watch case.
• The watch strap of both watches features 3 rectangular openings of the same rectangular form and positioned at the same place (i.e. at the top of the strap).
• The ribbed pushers are inspired by the world of Formula 1 racing and take their shape and grooves from some pedals of racing cars. They also have the same ‘ring’ at their base.
• The crown is reminiscent of the rims on racing cars. Seen from the front, it has the same star-shaped centre with holes in the outer part of the ‘rim’ or circle. Viewed from the side, it also appears to have the same number of ‘layers’ or “treads” in automotive language.

On balance, the Court considers that the later designs do not differ sufficiently to convex a different overall impression.

In both cases, the EUIPO cancels the two litigious designs.

Lose more…

Most watch Maisons protect their iconic watches with passion. Elaborate portfolios are constituted year after year with each new collection being added to the last. Indeed, these watches evolve subtly over the years, feature new characteristics, are “refreshed” regularly to keep their desirability. And indeed, every novelty is met with extasy by watch lovers for whom every minute detail counts. This is also what justifies that new designs are filed to capture and protect these novelties. Unfortunately, filings don’t necessarily focus on what part of the watch is a novelty in relation to what pre-existed.

Richard Mille is no different. IT has a pristine portfolio tracing its novelties year on year.

In the cases at hand, Turlen no doubt carefully chose the designs that matched the copies the most closely, invoking two designs filed respectively in 2014 and 2019.

But a look at the portfolio shows that the designs below were filed by Turlen in 1999, 2010,2012, 2013

If the EUIPO criteria were to be applied to the Turlen designs,  how would the design from 2014 or 2019 hold out in terms of individual character as compared to all the watches filed before? And how strong is the design portfolio which follows the filing of 2014?

These cases illustrate the conundrum Maisons face when filing designs. Filing them is critical: they provide a presumption of title and ownership which can make them immediately effective and very efficient (notably online)… but they have little chance of holding out before a court when the design is a variant on a prior one.

Ironically, every “win” in the enforcement of a design against a copycat could well weaken the later rights that may be filed by the owner of the design.

This perhaps explains why companies prefer to engage actions on peripheral rights such as parasitic behaviour,  unfair competition or influential decoration in China.

This perhaps explains why designs are so rarely invoked in infringement or invalidation cases and why there is little appetite to accumulate decisions such as those rendered by the EUIPO.

***

Homer lends Achilles these words: “Let me not then die ingloriously and without a struggle, but let me first do some great thing that shall be told among men hereafter.”

These EUIPO decisions will no doubt become a reference that shall be told among IP lawyers hereafter – whether they will better serve rights holders or copycats remains yet to be seen.

Olivia Dhordain
18.04.2025