Easing the Path from Prototype to Product: EU General Court Clarifies Design Grace Period

In its recent judgment of 12 March 2025 in case T-66/24, Lidl Vertriebs GmbH & Co. KG v EUIPO and Liquidleds Lighting Corp., the General Court of the European Union delivered significant clarification on the scope and application of the “grace period” in EU design law under Article 7(2) of EU Regulation No. 6/2002 on Community designs (hereinafter: “CDR”). In short, the General Court held that a registered design must not be identical to the earlier disclosed version to benefit from the grace period, as long as both versions produce the same overall impression.

The facts: disclosure before filing

The dispute concerns a registered Community design for a LED light bulb, initially disclosed by its owner, the Taiwanese company Liquidleds Lightning Corp. (hereinafter: “Liquidleds”), prior to registration. The German company Lidl Vertriebs GmbH (hereinafter: “Lidl”) challenged the validity of the design, alleging a lack of novelty and individual character because of this prior disclosure.

In its defence, Liquidleds relied on the grace period – a twelve-month window that allows a designer to disclose a design without jeopardising future protection, provided the design is registered within that period. However, Lidl argued that the version disclosed, and the version eventually registered were not identical and therefore fell outside the scope of protection of the grace period.

The legal issue: must the designs be identical?

At the heart of the case was a critical legal question: does the grace period require that the disclosed design and the registered design be identical? Lidl argued that any change disqualified the later design from the grace period. Liquidleds, on the other hand, argued that iterative changes made during product testing should not preclude protection as long as the overall impression remains the same.

The Court’s reasoning: a functional approach to design disclosure

In a well-reasoned judgment, the General Court rejected Lidl’s strict interpretation. It held that Article 7(2) CDR does not require that the disclosed and registered designs be identical. Instead, it is sufficient that the registered design produces the same overall impression on the informed user as the earlier disclosed version.

Referring to recital 20 of the CDR, the General Court emphasised that the purpose of the grace period is to allow a designer to market a design for a period of twelve months before having to proceed with the formalities of registration. During that period, the designer may thus ascertain whether the design concerned is a commercial success before incurring the costs of registration, without having to fear that the disclosure made at that time may be successfully relied on in invalidity proceedings brought after the possible registration of the design concerned (paragraph 36 of the judgment).

According to the General Court, the pursuit of this aim “would be undermined if, after having tested a design in the market place, the designer or his or her successor in title, who wishes to rely on the grace period, was, in any event, required to apply for registration of the design as it was initially tested in the market place, without being able to take into account the specific results of that test, in order to make any necessary adjustments to the design to ensure its commercial success, and without therefore being able to apply for registration of a design which, although not identical, would produce the same overall impression as the one initially tested in the market place” (paragraph 38 of the judgment).

Harmonisation with UK case law and the upcoming EU design reform

This judgment follows the approach taken by the Court of Appeal of England and Wales in its judgment of 27 February 2025 in the case Marks and Spencer PLC v Aldi Stores Ltd. In that case, the Court of Appeal also held that the grace period protects the designer from the adverse consequences of any disclosure by him (or a successor in title) of (a) the registered design or (b) any design which does not produce a different overall impression from that of the registered design.

Moreover, the General Court’s interpretation is in line with the forthcoming EU Regulation No. 2024/2822, which modifies the CDR and extends grace period protection to prior self-disclosures of designs which are “identical or do not differ in their overall impression” (Article 1, point 11).

Conclusion

The General Court’s judgment reflects a pragmatic and innovation-oriented understanding of design development. By confirming that modest adaptations do not invalidate the grace period protection, the General Court allows creators to balance commercial viability with legal certainty.