In depth 

On 31 March 2021, Delta-Sport Handelskontor GmbH ("Delta-Sport") filed applications for invalidity against the following Decathlon design registrations at the European Union Intellectual Property Office (EUIPO):

EU Design nº 002526699-0001	EU Design nº 002340224-0001

Delta-Sport argued that both designs were dictated exclusively by their technical function and were devoid of individual character based on the existence of the following design in an earlier French patent (FR 2 720 050 published on 24 November 1995) filed by Decathlon:

On 19 July 2022, the EUIPO's Cancellation Division rejected the invalidity claims, affirming the validity of both designs. Delta-Sport appealed this decision to the EUIPO Board of Appeal, which subsequently dismissed the appeal. The Board found that Delta-Sport had not demonstrated that all features of the designs were solely dictated by the product's technical function and confirmed the presence of individual character in the designs, as they showed several key differences compared to the cited French patent.

Delta-Sport then brought the matter before the General Court of the European Union (TGUE), seeking annulment of the Board of Appeal's decision. The applicant reiterated that the designs' essential features—such as the oval frame and head strap—were dictated by functional considerations. Delta-Sport relied on various prior rights, including the aforementioned French patent, an European patent, and two German utility models, and invoked the European Union Court of Justice's DOCERAM ruling (C-395/16) to argue that the existence of alternative designs does not preclude a finding of technical functionality.

The General Court upheld the EUIPO and Board of Appeal's findings, confirming that at least two features of the masks – the same oval frame and head strap – were part of the designer's aesthetic choice and not solely dictated by technical function. Although the EASYBREATH mask serves a technical function, this did not prevent aesthetic design protection. The ruling sets another clear precedent that functional products, when coupled with aesthetic creativity, are protected under EU design law. 

The General Court also emphasized that the challenged designs exhibited individual character, citing differences in certain aesthetic elements that make the designs produce a different overall impression on the informed user compared to the earlier ones. The General Court recognized that a diving mask's design must account for functional constraints, such as enabling breathing, underwater visibility, and ensuring watertightness. However, it also noted that designers still have significant freedom when designing non-functional aspects, including the exact proportions, colours, materials, and decorative elements. 

In light of the above, the General Court confirmed that both design registrations were upheld.

These rulings echo the position taken by French courts in a case initiated by Decathlon for design infringement and unfair competition/passing-off against the manufacture and marketing of an integral diving mask, and where the validity of the same EU Design nº 002526699-0001 was at stake. 

The Paris Court of Appeal rejected the claim for nullity of the design on the basis of its functional character. The Court found that the technical function of the EASYBREATH mask was not the only factor determining the characteristics of its appearance and that aesthetic considerations played a decisive role in the shape of the mask. 

While the Court acknowledged that the oval shape of the skirt attached to the frame of the mask – which ensures the mask's watertightness – is conditioned by the shape of human face, this is not the case for the shape of the frame's mounts with overall rounded outer shape and without sharp angles, the use of transparent glass throughout the mask, including at the bottom, and the shape and transparency of the ovoid snorkel, which appear to be choices dictated by aesthetic considerations and not dictated by exclusively technical considerations. Moreover, the Court took into account the fact that Decathlon demonstrated that the designers of the EASYBREATH mask wanted it to have a shape that would "reduce the user's apprehension of a too-intimidating-looking mask like a 'gas mask": this required an attractive design with aesthetic choices designed to lighten the overall appearance of the mask (Paris Court of Appeal, Pole 5, Chamber 2, 28 January 2022, RG No. 20/04831) . This ruling was confirmed by the Judicial Supreme Court (Cour de Cassation, Commercial Chamber, 26 June 2024, 22-17.647 22-21.497).

These cases highlight the importance of registering and defending your designs, particularly when both aesthetics and function are involved. Protecting products that are both functional and aesthetically appealing is not only feasible but also legally acknowledged. It also highlights the evidentiary value of documenting the design process, including aesthetic considerations and third-party design input, to support eligibility to design.

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Rut Alemany, Trainee, has contributed to this legal update.