Disclosure by the Designer During the Grace Period: Why the Exception Is Not Confined to Identical Designs
The judgment of the General Court of the European Union in Case T‑66/24, Lidl Vertriebs GmbH & Co. KG v EUIPO and Liquidleds Lighting Corp., delivered on 12 March 2025, marks a pivotal development in the interpretation of the grace period under Article 7(2) of Regulation (EC) No 6/2002 on Community designs (“CDR”). The Court’s reasoning confirms that the protective reach of the grace period is not confined to instances of literal identity between an earlier disclosure and the later registered design, but extends to disclosures that produce the same overall impression on the informed user as the contested design, when the conditions of the provision are satisfied. The ruling coherently reconciles the textual and purposive elements of the CDR, and affirms a functional understanding of the grace period within the EU design protection regime.
I. Structural Coherence: Novelty, Individual Character and the Grace Period
Under Articles 5 and 6 CDR, protection for a Community design is contingent upon its novelty and individual character. Novelty is precluded only by the existence of a design identical to the one for which protection is claimed. Individual character, by contrast, requires that the overall impression created on the informed user differs from that produced by any earlier design. This dual requirement reflects the fundamental tension between certainty in rights and flexibility in design development.
Article 7(2) CDR introduces a temporal exception to these substantive criteria by stipulating that disclosures made by the designer, their successor in title, or a person acting on their behalf, within twelve months prior to the filing of the application, shall not be taken into account for the purposes of Articles 5 and 6. The provision thus embodies a deliberate balance between incentivising commercial experimentation and maintaining the integrity of the design protection system.
It is significant that the text of Article 7(2) refers without distinction to both novelty and individual character, confirming that the grace period exception applies symmetrically to both substantive requirements. A narrow interpretation, confined to cases of formal identity, would artificially sever this symmetry and render the exception ineffectual in the context of individual character, which is inherently comparative and contextual.
II. Facts and Legal Contours of T‑66/24
In the case at hand, the contested Community design concerned a LED light bulb registered by Liquidleds Lighting Corp. Lidl Vertriebs GmbH & Co. KG sought a declaration of invalidity on the ground that an earlier design, previously disclosed by the design owner itself, deprived the registered design of novelty and individual character. The design owner invoked Article 7(2) CDR, asserting that the disclosure fell within the twelve‑month grace period and should not be taken into account.
The invalidity applicant countered that, because the earlier disclosed design was not identical to the registered design, the grace period exception could not apply. This argument raised the critical interpretive question: does the grace period require literal identity between a disclosed design and the subsequently registered design? The General Court was called upon to resolve this dispute.
III. The General Court’s Interpretive Approach
The General Court rejected the restrictive interpretation advanced by Lidl, holding that Article 7(2) CDR does not necessitate identity between the earlier disclosed design and the registered design. Rather, it is sufficient that the designs produce the same overall impression on the informed user for the earlier disclosure to fall within the grace period exception and be disregarded in assessing novelty and individual character.
In its reasoning, the Court underscored that the requirement of identity is pertinent to novelty but not to individual character. Since individual character is assessed by reference to the overall impression created, a prior disclosure producing the same overall impression as the registered design must be disregarded under Article 7(2), even if differences exist at the level of individual visual elements. This interpretation thus harmonises the text of the CDR with its underlying logic and prevents formalism from undermining substantive coherence.
IV. Purpose and Function of the Grace Period
A central pillar of the Court’s reasoning is the purposive interpretation of Article 7(2). Recital 20 of the CDR articulates the legislative intent underpinning the grace period: to afford designers the possibility of marketing and testing their designs in the marketplace for up to twelve months before committing to formal registration. During this period, designers may assess commercial viability and, where appropriate, refine or adjust their designs in response to market feedback.
The Court noted that a literal requirement of identity would thwart the very purpose of the grace period by compelling designers to register only the initial version of a design as first disclosed, even where subsequent iterations produce the same overall impression. Such an outcome would disincentivise market testing and iterative development—practices that are intrinsic to contemporary design processes. By affirming that reasonable modifications are compatible with reliance on the grace period, provided the overall impression remains unchanged, the Court preserved the functional efficacy of the CDR’s structure.
V. Implications for Doctrinal Analysis and Practice
From a doctrinal perspective, the decision clarifies that in invalidity proceedings, the assessment of prior disclosures under Article 7(2) must consider not only the timing and origin of the disclosure but also its perceptual equivalence to the registered design. This interpretive stance resonates with the comparative methodology inherent in the assessment of individual character and ensures that the grace period exception operates meaningfully in practice.
For practitioners, the judgment has tangible ramifications. Designers can confidently disclose their designs and pursue iterative refinements within the twelve‑month window without risking invalidity challenges predicated on those disclosures, so long as the final registered design produces the same overall impression. Conversely, parties seeking to invalidate registered designs must engage rigorously with the question of whether prior disclosures fall within the statutory exception, focusing on overall impression rather than formal identity.
VI. A Balanced and Coherent Interpretation
The General Court’s decision in T‑66/24 constitutes an authoritative articulation of the grace period’s scope within the EU design protection framework. By eschewing rigid formalism and embracing an interpretation aligned with both the letter and the purpose of the Regulation, the Court reaffirmed the grace period as a substantive mechanism that accommodates the realities of design development while safeguarding the foundational requirements of novelty and individual character.
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