CELEX: 62013TJ0015
Community design
Invalidity proceedings
Registered design representing a shower drainage channel
Earlier design
Grounds for invalidity
Novelty
Individual character
Visible features of the earlier design
Products at issue
Articles 4 to 7, 19 and 25(1)(b) of Regulation (EC) No 6/2002

Background to the dispute
On 28 November 2003, the intervener, Easy Sanitairy Solutions BV, filed an application for registration of a Community design with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (
OJ 2002 L 3, p. 1
). That application covered the design which is represented as follows:
The contested design was registered as Community design No 000107834-0025 and published in
Community Designs Bulletin
No 19/2004 of 9 March 2004. According to that registration, it relates to a ‘shower drain’.
On 31 March 2009, registration of the contested design was renewed. That renewal was published in
Community Designs Bulletin
No 61/2009 of 2 April 2009.
On 3 September 2009, I-drain BVBA submitted an application, under Article 52 of Regulation No 6/2002, for a declaration of invalidity of the contested design. In support of that application it relied on the ground for invalidity specified in Article 25(1)(b) of Regulation No 6/2002. As can be seen from Article 4(1) of Regulation No 6/2002, those requirements relate, inter alia, to the novelty (within the meaning of Article 5 of that regulation) and individual character (within the meaning of Article 6 of the same regulation) of the design concerned, assessed at the date on which it was made available to the public, determined in accordance with Article 7 of the regulation in question.
In support of its application for a declaration of invalidity, I-drain produced, inter alia, extracts from two catalogues of products made by the company Blücher (‘the Blücher catalogues’). The Blücher catalogues contain, inter alia, the following illustration:
On 30 August 2010, following a merger by acquisition, the applicant, Group Nivelles, succeeded to the rights and obligations of I-drain, which ceased to exist as a legal person.
By decision of 23 September 2010, the Invalidity Division of OHIM declared the contested design invalid, thereby granting I-drain’s application to that effect.
The Invalidity Division stated that it was clear from I-drain’s arguments that its application for a declaration of invalidity was based on the allegation that the contested Community design lacked novelty and individual character (paragraph 3 of the decision of the Invalidity Division). According to the latter, that design represented a plate, a collector and a siphon, and the only visible feature of the design was the top of the plate (paragraph 15 of the Invalidity Division’s decision). The plate is identical to the one shown in the centre of the illustration reproduced in paragraph 5 above and the contested design lacks novelty in relation to the design shown in that document (paragraph 19 of the Invalidity Division’s decision). The Invalidity Division also dismissed as irrelevant the intervener’s argument that the plate shown in the centre of the illustration reproduced in paragraph 5 above was used in a different environment from that in which the product to which the contested design related was intended to be used. In its view, ‘the use of the product in which the design is incorporated is not a feature of [its] appearance and hence this difference has no impact on the comparison of the two opposing designs’ (paragraph 20 of the Invalidity Division’s decision).
On 15 October 2010, the intervener appealed under Articles 55 to 60 of Regulation No 6/2002 against the decision of the Invalidity Division.
By decision of 4 October 2012 (‘the contested decision’) the Third Board of Appeal annulled the decision of the Invalidity Division of 23 September 2010. In essence, it held, in contrast to the Invalidity Division, that the contested Community design was novel, for the purposes of Article 5 of Regulation No 6/2002, since it was not identical to the plate shown in the centre of the illustration reproduced in paragraph 5 above, but contained differences in relation to it that were neither ‘minimal’ nor ‘difficult to appreciate objectively’ and which therefore could not be considered immaterial (paragraphs 31 to 33 of the contested decision). It remitted the case to the Invalidity Division ‘for further prosecution of the request for declaration of invalidity as far as it is based on Article 25(1)(b) in conjunction with Articles 4(1) and 6’ of Regulation No 6/2002 (point 2 of the operative part of the contested decision).
Forms of order sought by the parties
The applicant claims that the Court should:
—
annul the contested decision;
—
correcting the grounds as necessary, uphold the decision of the Invalidity Division of 23 September 2010.
OHIM contends that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
The intervener contends that the Court should:
—
dismiss the action;
—
annul the contested decision on a ground other than those relied on by the applicant;
—
order the applicant and OHIM to pay the costs.
In the pleading provided for in Article 135(3) of the Rules of Procedure, lodged by the applicant at the Court Registry on 30 September 2013, the applicant maintained its initial claims and stated that it also sought dismissal of the ‘incidental action’ brought by the intervener and an order that ‘OHIM [or] the intervener’ should pay the costs.
Law
Admissibility of the applicant’s second head of claim
OHIM contends that the applicant’s second head of claim is inadmissible. In its view, the applicant is asking the Court, in essence, to uphold the decision of the Invalidity Division of 23 September 2010. It is clear from case-law (judgments of 27 September 2011 in
El Jirari Bouzekri
v
OHIM — Nike International (NC NICKOL)
, T‑207/09,
EU:T:2011:537
, paragraphs 15 to 17, and 29 February 2012
Certmedica International and Lehning entreprise
v
OHIM — Lehning entreprise and Certmedica International (L112)
, T‑77/10 and T‑78/10,
EU:T:2012:95
, paragraph 32) that the General Court does not have jurisdiction to adopt confirmatory or declaratory judgments.
The intervener, for its part, does not contend expressly that the applicant’s second head of claim is inadmissible, but it does contend that the Court cannot uphold the decision of the Invalidity Division of 23 September 2010 and that if the Court annuls the contested decision the case should be remitted to the Board of Appeal, which should give its ruling taking into consideration the judgment annulling the measure.
Those arguments cannot be accepted.
First of all, the case-law relied upon by OHIM is irrelevant. In both the judgments cited by OHIM the claims are that the Court should uphold a decision of the Board of Appeal (and not a lower-level decision of OHIM) on a point on which that decision was favourable to the party that had brought the action before the Court. The Court therefore held that it was clear from Article 65(2) and (3) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (
OJ 2009 L 78, p. 1
) (which is identical in content to Article 61(2) and (3) of Regulation No 6/2002), that a claim is inadmissible where an applicant is merely seeking confirmation of the plea or arguments that he raised in the appeal before the Board of Appeal and the latter accepted (judgments in
NC NICKOL
, cited in paragraph 15 above,
EU:T:2011:537
, paragraph 17, and
L112
, cited in paragraph 15 above,
EU:T:2012:95
, paragraph 32).
Article 61(1) of Regulation No 6/2002 provides that actions may be brought before the Court against decisions of the Boards of Appeal; Article 61(2) provides that such actions may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of Regulation No 6/2002 or of any rule of law relating to their application or misuse of power; Article 61(3) provides that the Court has jurisdiction to annul or to alter the contested decision and, lastly, Article 61(4) provides that the action is to be open to any party to proceedings before the Board of Appeal adversely affected by its decision. It follows, moreover, by contrary inference from Article 61(4) that a party to proceedings before the Board of Appeal cannot lawfully appeal to the Court against a decision of that board that has wholly upheld that party’s claims.
In the present case, the applicant’s second head of claim does not seek the upholding, in whole or in part, of the contested decision, which, moreover, is unfavourable to the applicant. It asks the Court to take itself the decision which the Board of Appeal ought to have taken or could have taken, that is to say, the decision to dismiss the appeal before it and therefore uphold the decision of the Invalidity Division of 23 September 2010. In other words, it requests the Court to exercise its jurisdiction to alter the decision of the Board of Appeal, which is granted it under Article 61(3) of Regulation No 6/2002. That head of claim is therefore admissible (see, to that effect, judgment of 12 May 2010 in
Beifa Group
v
OHIM — Schwan-Stabilo Schwanhäußer (Instrument for writing)
, T‑148/08, ECR,
EU:T:2010:190
, paragraphs 40 to 44).
The taking into consideration of a page of Annex A.9 to the application
OHIM and the intervener maintain that the applicant submitted, on page 76 of Annex A.9 to the application, a document that had not been submitted to OHIM. They therefore request that that document should not be taken into consideration by the Court.
In that regard, it should be noted, from reading the file relating to the proceedings before OHIM, forwarded to the Court in pursuance of Article 133(3) of the latter’s Rules of Procedure, that the document submitted on page 76 of Annex A.9 to the application does not appear among the documents that the parties had submitted to OHIM. Page 75 of that annex comprises a copy of an e-mail of 5 October 2009, sent by Mr M. F. from the company Blücher to Mr R. G. of the company I-drain, that had been reproduced by the applicant in Annex 4 to the written observations it submitted to the Invalidity Division on 2 April 2010. However, the document submitted on page 76 of that annex does not appear among the annexes to those written observations nor, more generally, among the various documents submitted by the parties during the proceedings before OHIM. Moreover, at the hearing, in answer to a question from the Court, the applicant’s representative confirmed that the document reproduced on page 76 of the annex in question had not been submitted during the proceedings before OHIM.
It should be borne in mind that the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM as referred to in Article 61 of Regulation No 6/2002, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it.
Accordingly, the document submitted on page 76 of Annex A.9 to the application must be excluded, without it being necessary to assess its probative value (see, to that effect, judgment in
Grupo Promer Mon Graphic
v
OHIM — PepsiCo (Representation of a circular promotional item)
, T‑9/07,
EU:T:2010:96
, paragraph 24 and the case-law cited).
Admissibility of the intervener’s second head of claim
In its observations on the intervener’s request for removal from the file of the pleading provided for in Article 135(3) of the Rules of Procedure, lodged by the applicant on 30 September 2013, OHIM contended, inter alia, that the intervener’s second head of claim was inadmissible. According to OHIM, the intervener’s application for annulment of the contested decision is inadmissible since it is a decision in its favour. In support of its arguments it relies on the judgment of 16 December 2008 in
Budějovický Budvar
v
OHIM — Anheuser-Busch (BUD)
(T‑225/06, T‑255/06, T‑257/06 and T‑309/06, ECR,
EU:T:2008:574
, paragraphs 150 and 151).
Although the plea of inadmissibility concerning the intervener’s second head of claim cannot be raised by OHIM in its observations on the intervener’s request for removal from the file of the pleading provided for in Article 135(3) of the Rules of Procedure, it is necessary to examine it, since it is a matter that may, where appropriate, be examined by the Court of its own motion.
In that regard, it should be borne in mind first of all that, under Article 134(3) of the Rules of Procedure, an intervener, as referred to in Article 134(1) (which refers to parties to the proceedings before the Board of Appeal other than the applicant), may, in his response, seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application and put forward pleas in law not raised in the application.
Next, it is necessary to dismiss as irrelevant the reference to the judgment in
BUD
, cited in paragraph 25 above (
EU:T:2008:574
, paragraphs 150 to 151). In that judgment, the Court dismissed some of the intervener’s arguments in that case, stating that, ‘even if [the arguments in question] are to be construed as an independent plea based on Article 134(2) of the Rules of Procedure, that plea is incompatible with the form of order sought by the intervener … [which did not seek] either the annulment or alteration of [the decision of the Board of Appeal in that case] under Article 134(3) of the Rules of Procedure’ (judgment in
BUD
, cited in paragraph 25 above,
EU:T:2008:574
, paragraphs 150 and 151). In the present case, the intervener does in fact seek annulment of the contested decision.
With regard to OHIM’s argument that the contested decision is ‘in the intervener’s favour’, it should be borne in mind that, according to case-law, a decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board, when it grants the application of that party on the basis of only part of the arguments put forward by that party, even where it does not examine or where it dismisses the other grounds or arguments raised by that party (see judgment of 14 December 2011 in
Völkl
v
OHIM — Marker Völkl (VÖLKL)
, T‑504/09, ECR,
EU:T:2011:739
, paragraph 26 and the case-law cited). However, a decision of a Board of Appeal of OHIM does not uphold, for the purposes of Article 61(4) of Regulation No 6/2002, the claims of a party when it rules on an application filed before OHIM by that party in a manner unfavourable to it (see, by analogy, judgment in
VÖLKL
,
EU:T:2011:739
, paragraph 27 and the case-law cited).
In the present case, the Invalidity Division found that the applicant’s application for a declaration of invalidity was based, in essence, on the alleged lack of novelty and individual character of the contested Community design. It also held that that design was identical, within the meaning of Article 5(2) of Regulation No 6/2002, to an earlier design, namely one representing a plate shown in the centre of the illustration reproduced in paragraph 5 above.
Both before the Invalidity Division, in its written observations of 22 June 2010, submitted in response to the applicant’s observations of 2 April 2010 mentioned in paragraph 22 above, and before the Board of Appeal (see the summary of the intervener’s arguments in paragraph 14 of the contested decision, in particular the part entitled ‘The Invalidity Division wrongly took D1 into account in the assessment of whether the contested design is novel and has individual character’, pages 9 to 13 of the contested decision), the intervener contended, inter alia, that the illustration reproduced in paragraph 5 above, also reproduced in paragraph 8 of the Invalidity Division’s decision, did not show a shower drain, but only gratings for use in gullies.
The intervener, therefore, argued that the illustration reproduced in paragraph 5 above and, more generally, the products shown in the Blücher catalogues were completely different from the product to which the contested design related. According to the intervener, those products should therefore not be taken into account in the assessment of whether the contested design is novel and has individual character.
That line of argument was not accepted by the Board of Appeal. On the contrary, as the intervener correctly contends, in paragraph 31 of the contested decision, the Board of Appeal held that ‘the prior design [consisted] of a very simple rectangular shower drain’. It thus, implicitly but clearly, rejected the intervener’s argument that it was a grating for a gully. The rejection of that argument necessarily led to rejection of the intervener’s argument that the designs shown in the Blücher catalogues should not be taken into account in the assessment of whether the contested design is novel and has individual character.
Although the Board of Appeal annulled the decision of the Invalidity Division declaring that design invalid on the ground that it lacked novelty, it none the less remitted the case to the Invalidity Division ‘for further prosecution of the request for declaration of invalidity as far as it is based on Article 25(1)(b) in conjunction with Articles 4(1) and 6’ of Regulation No 6/2002, as stated in point 2 of the operative part of the contested decision. It is clear from the reference to Article 6 of that regulation, which concerns individual character, that where a case is remitted to it the Invalidity Division must assess whether the contested design has such a character. Furthermore, in the last sentence of paragraph 36 of the contested decision, the Board of Appeal expressly stated that that ‘re-examination should include taking into consideration the facts, arguments and evidence filed before the Invalidity Division, along with the new facts, arguments and evidence filed by both parties before the Board’ of Appeal, including, therefore, the Blücher catalogues which the intervener sought to exclude from that assessment.
The contested decision therefore rules on the intervener’s application in a manner unfavourable to it and, consequently, must be regarded as not upholding its claims, for the purposes of Article 61(4) of Regulation No 6/2002. The intervener may, therefore, seek its annulment, in its second head of claim, and OHIM’s arguments to the contrary must be rejected (see, to that effect, judgment of 17 March 2009 in
Laytoncrest
v
OHIM — Erico (TRENTON)
, T‑171/06, ECR,
EU:T:2009:70
, paragraph 21 and judgment in
VÖLKL
, cited in paragraph 29 above,
EU:T:2011:739
, paragraph 28).
The merits of the applicant’s first head of claim
In support of the action, the applicant puts forward a single plea, alleging that the Board of Appeal erred in comparing the contested design with earlier designs which had been relied on in support of the application for a declaration of invalidity. In its view, that error led the Board of Appeal to the incorrect conclusion that the contested design was novel for the purposes of Article 5 of Regulation No 6/2002.
Accordingly, it is necessary first to identify the earlier design which was taken into consideration by the adjudicating bodies of OHIM when assessing the application for a declaration of invalidity. Next, since the protection of a design for the purposes of Article 4(1) of Regulation No 6/2002 consists in the protection of the appearance of a product and, as is apparent from recital 12 in the preamble to that regulation, that protection should not be extended to those component parts which are not visible during normal use of the product concerned (see, to that effect, judgments of 9 September 2014 in
Biscuits Poult
v
OHIM — Banketbakkerij Merba (Biscuit)
, T‑494/12, ECR,
EU:T:2014:757
, paragraphs 19 and 20, and 3 October 2014
Cezar
v
OHIM — Poli-Eco (Insert)
, T‑39/13, ECR,
EU:T:2014:852
, paragraphs 40, 51 and 52), it is necessary to identify the visible elements of that earlier design. Lastly, the Court must determine whether the Board of Appeal made a correct comparison of the visible elements of the contested design and the earlier design.
Before undertaking that examination, it should be borne in mind, as a preliminary point, that in Article 3(a) of Regulation No 6/2002 ‘design’ is defined as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.
Also, Article 4(1) of the same regulation provides that a design is to be protected by a Community design to the extent that it is new and has individual character.
In that regard, Article 5 of Regulation No 6/2002, provides as follows:
‘1.   A design shall be considered to be new if no identical design has been made available to the public:
…
(b)
in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.
2.   Designs shall be deemed to be identical if their features differ only in immaterial details.’
Thus, according to Article 5(2) of Regulation No 6/2002, two designs are to be deemed to be identical if their features differ only in immaterial details, that is to say, details that are not immediately perceptible and that would not therefore produce differences, even slight, between those designs. By contrary inference, for the purpose of assessing the novelty of a design, it is necessary to assess whether there are any, even slight, non-immaterial differences between the designs at issue (judgment of 6 June 2013 in
Kastenholz
v
OHIM — Qwatchme (Watch dials)
, T‑68/11, ECR,
EU:T:2013:298
, paragraph 37).
It is also appropriate to summarise what was decided in the decision of the Invalidity Division and in the contested decision.
The Invalidity Division held, in paragraph 15 of its decision, that the contested design represented a ‘shower drain’ consisting of a plate, a collector and a siphon. It added, in that regard: ‘The collector and the siphon are mounted on the lower surface of the plate’.
If reference is made to the representation of the contested design, as reproduced in paragraph 1 above, it may be seen that, from left to right, the first picture shows the plate, with the collector (into which the water runs) underneath it, and in the centre of the collector the siphon fitting; the second picture shows the lower part of the collector with the siphon fitting in the centre, and, lastly, the third picture shows the top of the plate.
In paragraph 16 of its decision, the Invalidity Division stated that, ‘[i]n normal use, namely when the shower [was] running, the plate [was] integrated into the floor whereby the collector and siphon [were] not visible’. On the basis of that consideration, it concluded, in paragraph 19 of its decision, that ‘[t]he only visible feature of the contested design [was] the top surface of the plate’. Since, in its view, that visible feature of the contested design was identical to ‘the feature shown in D1’ it concluded that the contested design lacked novelty.
In its appeal before the Board of Appeal, the intervener maintained, inter alia, that the Invalidity Division was wrong to hold that the cover plate was the only visible element of the product to which the contested design related once it was installed. In its view, the side of the plate and the slots that are present on either side of the plate were also visible. Hence, the Invalidity Division did not compare all the relevant features of the contested design with the ‘features shown in D1’, so that the finding in the Invalidity Division’s decision that that design lacks novelty is incorrect.
Careful reading of the contested decision shows that, despite its somewhat ambiguous wording, the argument that the top of the cover plate is not the only element of that plate which remains visible once the shower drain to which the contested design relates has been installed was accepted by the Board of Appeal. The latter states in paragraph 31 of that decision that ‘the contested design consists not only of a rectangular cover plate, but also the side of the cover plate and the elongated slots that are present on either side of the cover plate in addition to the thin outer edges of the shower drain; all of these being visible when the product is in normal use’.
It should be noted in that regard that the product to which the contested design relates consists, as the Invalidity Division correctly stated, of a cover plate, a collector, and a siphon fitting. More specifically, water from the shower runs down into the collector and is directed, through the siphon, towards the drain. The collector is covered by the cover plate, a particular feature of which is that it is solid, that is to say, it does not have holes on the surface allowing water to run into the collector. Water runs into the collector through two slots on either side of the long sides of the plate.
Once the shower drain to which the contested design relates is installed, that is to say, is built into the floor of the shower, it is not only the top of the plate which is visible, but also, as the Board of Appeal stated correctly in paragraph 31 of the contested decision, the two side slots and the top of the rim of the collector. It is clearly to that last feature that the Board of Appeal refers when it mentions the ‘thin outer edges of the shower drain’. It is moreover those considerations which justify the finding that the sentence in paragraph 31 of the contested decision cited in paragraph 47 above must be interpreted as meaning that the Board of Appeal held, as did the intervener, that the parts of the shower drain to which the contested design relates that are ‘visible when the product is in normal use’, that is to say, once it is installed, were not only the top of the cover plate but also the other abovementioned elements of that product.
The applicant’s single plea should be assessed, taking the above considerations into account.
In the action, the applicant does not put forward any arguments that would call into question the considerations set out in paragraphs 47 to 49 above. It challenges rather the way in which the Board of Appeal compares the contested design with the ‘prior design’ referred to in paragraph 31 of the contested decision. In its view, that paragraph of the contested decision demonstrates that the Board of Appeal misread paragraph 19 of the Invalidity Division’s decision.
The applicant points out that in its decision the Invalidity Division used the abbreviation ‘D1’ to refer to all the extracts from the Blücher catalogues that had been placed on the file and not merely the illustration reproduced in paragraph 5 above, which was also reproduced in paragraph 8 of the Invalidity Division’s decision. That illustration is only part of the document called ‘D1’ in the Invalidity Division’s decision. Moreover, according to the applicant, the finding of the Invalidity Division contained in paragraph 8 of its decision was not totally correct, since that illustration did not represent a ‘drainage channel’, merely a ‘zero-grid’ for a drainage channel. The applicant explains that, ‘zero-grid’ means a grating placed in a drain collector built into the floor. That grid does not have any perforations on its horizontal surface, so it is possible for liquid waste to drain out only along the sides of the grid.
The applicant maintains that the ‘zero-grid’ shown in the illustration reproduced in paragraph 5 above corresponds to the ‘zero-grid’ of the contested design. Both are made of stainless steel and look like an elongated rectangle. Neither of them has perforations on its horizontal surface, so liquid waste can run into the drain collector only through the sides. The applicant explains, in that regard, that the sole purpose of the hole visible on the plate shown in the centre of that illustration is to enable the grid to be lifted off the collector for cleaning purposes. It concludes from this that the abovementioned picture shows no more and no less than a rectangular cover plate, in other words a ‘zero-grid’, originating from the Danish company Blücher, dating from 1998, the type designation of which is ‘Spaltrost’ (in German) or ‘Spalterist’ (in Danish), which means ‘slotted grid’.
The applicant contends that the contested decision contains an error, since paragraph 31 states that ‘[t]he prior design (D1) consists of a very simple rectangular shower drain consisting of a cover plate with a hole in it’. It is an acknowledged fact that a shower drain does not consist only of a cover plate, the purpose of which, as its name suggests, is to cover something, in the present case the shower drain or drain collector. In its view, the Board of Appeal did not therefore take into account the fact that the illustration reproduced in paragraph 5 above depicts only the appearance of a cover plate and not the full appearance, visible during normal use, of the shower drain that constitutes the earlier design contained in the Blücher catalogues.
The applicant accordingly maintains that it is clear from paragraphs 7 and 31 of the contested decision that the Board of Appeal, wrongly, compared the visible appearance in normal use of the contested design merely with the cover plate shown in the centre of the illustration reproduced in paragraph 5 above. It may be inferred from the Blücher catalogues, produced by the applicant before OHIM, that the ‘zero-grid’ visible in that picture should be placed between the straight outer edges of the drain collector and that the surface of the floor surrounding the collector, the straight outer edges of the collector, and the ‘zero-grid’ placed between them, would be at the same height. That is also the case for the contested design.
Furthermore, it is clear from the Blücher catalogues that the cover plate shown in the centre of the illustration reproduced in paragraph 5 above, and cover plates of other types, were intended to be placed between the straight edges of the drain collector built into the floor. The drain collector itself is shown on the first and last pages of the catalogues in question, the difference being that, in that representation, it has a grid with perforations on its surface.
According to the applicant, where the cover plate shown in the centre of the illustration reproduced in paragraph 5 above is placed in a drain collector such as that shown in the Blücher catalogues, such a shower drainage device has, in normal use, an appearance comprising not only the cover plate but also, contrary to what was held by the Board of Appeal, the sides or edges of that plate, the elongated slots either side of the plate and the thin outer edge of the drain collector.
The applicant therefore contends that the Board of Appeal based the contested decision on incorrect grounds and on an incorrect comparison of the designs at issue.
In that regard, it should be borne in mind that, as is clear from the considerations set out in paragraphs 45 to 47 above, the Board of Appeal was right to hold that, once the shower drain represented by the contested design was installed, the horizontal surface of the cover plate was not the only element of it that would remain visible. The Invalidity Division, which had reached the opposite conclusion in paragraph 16 of its decision, had thus committed an error which it fell to the Board of Appeal to rectify.
In the contested decision, the Board of Appeal did not draw the appropriate conclusions from the error it had found.
It is correct that, for purposes of assessing the novelty of the contested design, the Invalidity Division had wrongly made a comparison only of the cover plate contained in the contested design with the cover plate shown in the centre of the illustration reproduced in paragraph 5 above. However, that does not mean that it is possible to assess the novelty of the contested design by comparing all the elements of it which remain visible once it has been installed merely with the plate shown in the centre of the illustration in question. That is tantamount to making a comparison between, on the one hand, all the visible elements of a shower drainage device (the one represented by the contested design) and, on the other hand, a single element of an earlier shower drain.
In that regard, it is not necessary to determine whether, as the applicant maintains (see paragraph 54 above), it is an acknowledged fact that a shower drain does not consist only of a cover plate. It is sufficient to state that, in any event, examination of the evidence produced by the parties before OHIM could only lead to the conclusion that the cover plate shown in the centre of the illustration reproduced in paragraph 5 above was only part of a drainage device for liquid waste and that therefore assessment of the novelty of the contested design required a comparison between the latter’s visible features after installation and the visible features after installation of the earlier design, of which the abovementioned cover plate was one.
First, in the Blücher catalogues, extracts of which were produced by the applicant, the illustration reproduced in paragraph 5 above was preceded by the title ‘Roste für Rinnen und Aufsatzstücke’ which means ‘Gratings for gullies and top parts’. It is certain, therefore, that the plate shown in the centre of that illustration was merely a cover plate, acting as a grating for a drainage device for liquid waste, and did not represent the whole of such a device.
Secondly, another page (page 21) of the catalogues in question, also produced by the applicant before OHIM, contained a diagram showing how the various components supplied by Blücher could be combined in order to build a complete drainage device for liquid waste. In particular, that diagram showed six types of grating, including one without perforations, which could be fitted onto a collector, which would, in turn be fitted onto a siphon. Those gratings were square and not oblong, but it is clear that the same principle would apply to gratings of various shapes and dimensions.
In that regard, it should be noted that the grating without perforations (cover plate) shown in that diagram bore the model number 697.200.200.20. It is clear from page 34 of the same catalogue that it was a square version of the series of ‘Spaltrost’ cover plates available from Blücher. The same series contained other models (numbered 697.200.075.99, 697.200.150.99 and 697.200.200.99) having the same appearance (that is to say, no perforations on the horizontal surface) but oblong in shape. Furthermore, the page in question contained, alongside the dimensions of those models, a picture of a cover plate identical to that shown in the centre of the illustration reproduced in paragraph 5 above. Thus, it could easily be concluded from reading those catalogues that all the types of grating (or cover plate) shown in it could be combined with other components, also available from Blücher, for building a drainage device for liquid waste.
Thirdly, as the applicant maintains, the first and last pages of the Blücher catalogues, which were among the extracts from those catalogues which it had produced before OHIM, contained pictures of a device for draining away water, oblong in shape, available from Blücher, the difference being that in both pictures it was fitted with a cover plate containing perforations on its horizontal surface (a grating).
Fourthly, it should also be noted that it is clear from paragraphs 15 and 16 of the applicant’s observations of 2 April 2010 before the Invalidity Division of OHIM, that the cover plates without perforations shown in the Blücher catalogues, including the plate shown in the centre of the illustration reproduced in paragraph 5 above, were only part of a drainage device for liquid waste and did not, in themselves, form such a device.
Fifthly and lastly, it should be noted that the intervener did not deny before the adjudicating bodies of OHIM the fact that the ‘Spaltrost’ cover plate available from Blücher, was for use as part of a drainage device for liquid waste. On the contrary, in Annex 11 to its observations of 27 June 2010 before the Invalidity Division the intervener produced extracts from another of Blücher’s catalogues which contained a picture of a cover plate like the one shown in the centre of the illustration reproduced in paragraph 5 above, placed on a collector with a siphon on the underside of it. It notes that fact, moreover, in its response.
The intervener submitted that document in support of its argument, repeated moreover before the Court, that the Blücher cover plate in question and the drainage devices for liquid waste on which it could be used were not intended for use in a shower but for industrial use. Indeed, the wording appearing on the same page as that picture in the extract from the catalogue which the intervener produced before OHIM clearly shows that they are drainage devices for liquid waste that are used in the food industry.
That does not alter the fact, however, that it is clear from that picture that the cover plate shown in the centre of the illustration reproduced in paragraph 5 above was not, in itself, a drainage device for liquid waste (or a shower drain, as the Board of Appeal seems to have regarded it), but only part of such a device. It follows, therefore, that the Board of Appeal was wrong, when assessing the novelty of the contested design, to have made a comparison between the latter’s visible features after installation and that plate alone.
Those considerations are not called into question by OHIM’s arguments or those of the intervener.
OHIM relies on the judgment of 22 June 2010 in
Shenzhen Taiden
v
OHIM — Bosch Security Systems (Communications equipment)
(T‑153/08, ECR,
EU:T:2010:248
, paragraphs 23 and 24). In its view, it follows from that judgment that, since Article 6(1) of Regulation No 6/2002 refers to a difference between the overall impressions produced by the designs at issue, the individual character of a Community design cannot be examined in the light of specific features of various earlier designs. Therefore, a comparison should be made between, on the one hand, the overall impression produced by the contested Community design and, on the other hand, the overall impression produced by each of the earlier designs legitimately relied on by the party seeking a declaration of invalidity.
OHIM maintains that the reasoning of that judgment, which is applicable to the individual character of a design, applies
a fortiori
to the examination of novelty. Therefore, features of several earlier designs cannot be combined in order to call into question the novelty of a more recent design.
That argument must be rejected as being based on a mistaken perception of the argument put forward by the applicant. The latter does not criticise the Board of Appeal for not taking specific elements of various earlier designs and comparing them with the contested design, but for comparing the whole of the shower drain constituted by the contested design with only part, and not the whole, of the drainage device for liquid waste available from Blücher, relied on in support of the application for a declaration of invalidity.
OHIM also maintains that the applicant failed to demonstrate the existence of a design earlier than the contested design, possessing all the features of the latter. In its view, the applicant’s argument is based on the combination of two separate designs. Although made available to the public in the same catalogues (the Blücher catalogues), those two designs are not represented together. It considers that, even if the Blücher catalogues were to constitute disclosure, for the purposes of Article 5(1) of Regulation No 6/2002, each of the designs shown in it would need to be compared individually with the contested design.
That argument is based on the premiss that no picture representing the cover plate shown in the centre of the illustration reproduced in paragraph 5 above, placed in an oblong drain collector and thus comprising a complete drainage device for liquid waste, had been submitted to OHIM. The expression of that argument in OHIM’s response is preceded by arguments seeking to demonstrate, rightly (see paragraphs 22 and 23 above), that the document on page 76 of Annex A.9 to the application should not be taken into consideration. It is clear from paragraph 68 above that the premiss on which OHIM’s present argument is based is incorrect, which is sufficient for it to be rejected.
In any event, it should be noted that, more generally, where a design consists of several elements, it must be regarded as having been made available to the public, within the meaning of Article 5(1) of Regulation No 6/2002, when all the elements were made available to the public and it was clearly stated that those elements were intended to be combined to constitute a specific product, thus enabling the shape and features of that design to be identified.
In other words, it cannot be accepted that a design is novel, for the purposes of Article 5 of Regulation No 6/2002, where it consists only of a combination of designs that have already been made available to the public and in respect of which it has already been stated that they were intended to be used together.
In the present case that means that, since, for the reasons set out in paragraphs 63 to 67 above, it was clear from the Blücher catalogues that the cover plate shown in the centre of the illustration reproduced in paragraph 5 above was intended to be combined with collectors and siphons available from Blücher which also appeared in those catalogues, in order to make up a complete drainage device for liquid waste, it was necessary for OHIM, when assessing the novelty of the contested design, to compare it, inter alia, with a drain for liquid waste comprising the cover plate in question combined with the other elements of a drainage device for liquid waste available from Blücher, although no picture of such a combination appears in those catalogues.
OHIM also contends that the presence of a hole in the cover plate shown in the centre of the illustration reproduced in paragraph 5 above constitutes an additional element of differentiation between that plate and the contested design, although that difference was not mentioned by the Board of Appeal.
That argument must also be rejected. First, it is not possible to reject the applicant’s argument that the contested decision contains an error by making reference to an element not mentioned in that decision. Secondly and most importantly, the error committed by the Board of Appeal consists, according to the applicant’s argument which the Court holds to be well founded, in the fact that the Board of Appeal compared the whole of the device (shower drain) which constitutes the contested design with only one element of the earlier design. In other words, the error consists in the actual identification of the earlier design which was to be used for the purpose of that comparison and not, as OHIM’s argument would seem to suppose, in the features of the latter design.
The intervener, for its part, maintains that since the applicant’s main submission before OHIM had been that the contested design lacked novelty as regards only the plate shown in the centre of the illustration reproduced in paragraph 5 above, it is understandable that both the Invalidity Division and the Board of Appeal based their decisions on a comparison of that design with that plate alone.
That argument must also be rejected. It should be noted that, before the Invalidity Division, the applicant relied on several elements in support of its contention that the contested design lacked novelty and individual character. The Invalidity Division, having considered that the only visible element of the contested design, once installed, was its cover plate and that that was identical to the plate shown in the centre of the illustration reproduced in paragraph 5 above, upheld the application for a declaration of invalidity on that basis alone. It did not therefore make a comparison between the contested design and other designs that appeared in the documents produced by the applicant.
Since the Board of Appeal rightly held that other elements of the shower drain represented in the contested design remain visible after installation it should not, as already stated, have compared that design only with the cover plate shown in the centre of the illustration reproduced in paragraph 5 above. In order to assess the novelty of the contested design it should have examined whether there were differences that were not immaterial between all the visible features of that design and all those of the earlier design in question, without limiting itself only to the cover plate that was part of the earlier design.
The intervener also maintains that, although the applicant asserted, before the Board of Appeal, that it was possible to install only the cover plate shown in the centre of the illustration reproduced in paragraph 5 above in an elongated rectangular collector with a rim that remained visible after installation, it did not support those assertions with any evidence, and no picture of such installation appeared in the Blücher catalogues. In that context, the intervener notes that the document on page 76 of Annex A.9 to the application, which contains a representation of the cover plate in question, installed in an oblong collector, had not been submitted to OHIM and could not be taken into consideration.
However, on the grounds already stated in paragraphs 63 to 70 above, those arguments cannot be accepted.
It follows that the single plea in the action is well founded.
As already stated in paragraph 20 above, by its second head of claim, the applicant seeks, in essence, alteration of the contested decision, so that the intervener’s action before the Board of Appeal would be dismissed and the decision of the Invalidity Division, upholding the application for a declaration of invalidity, would be upheld, if appropriate with alteration of the grounds of the latter decision. The Court must therefore determine what the fate of the applicant’s claim for alteration should be.
The merits of the applicant’s second head of claim
It should be noted that the review carried out by the General Court under Article 61 of Regulation No 6/2002 is a review of the legality of the decisions of the OHIM Boards of Appeal. It may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 61(2) of that regulation. It follows that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (see, by analogy, judgment of 5 July 2011 in
Edwin
v
OHIM
, C‑263/09 P, ECR,
EU:C:2011:452
, paragraphs 71 and 72).
In the present case, it is true that the question of the novelty of the contested design was examined both by the Invalidity Division and by the Board of Appeal. However, it has been pointed out above that the examination conducted by those OHIM bodies was in both cases vitiated by errors: in the case of the Invalidity Division, it held, wrongly, that after installation of the shower drain represented by the contested design the only element remaining visible is the cover plate. It therefore compared that plate with the one shown in the centre of the illustration reproduced in paragraph 5 above, without taking into account the other evidence adduced before it by the applicant. For its part, the Board of Appeal correctly identified the Invalidity Division’s error, but instead of comparing the visible elements, after installation, of the shower drain represented by the contested design, with the visible elements of other earlier designs relied on by the applicant, including that of which the cover plate shown in the centre of that illustration was a part, the Board of Appeal merely, incorrectly, made a simple comparison between the contested design and that plate.
It follows that the examination of the novelty of the contested design, as regards the earlier designs relied on by the applicant, was incomplete. Accordingly, an examination, by the Court of the novelty of the contested design, with regard to all the evidence relied on by the applicant before the adjudicating bodies of OHIM, would imply, in essence, the exercise of administrative and investigatory functions specific to OHIM and would therefore upset the institutional balance on which the division of jurisdiction between OHIM and the Court is based. It follows that the applicant’s interests are sufficiently safeguarded by annulment of the contested decision (see, to that effect, judgment in
Instrument for writing
, cited in paragraph 20 above,
EU:T:2010:190
, paragraph 133; see also, to that effect and by analogy, judgment in
VÖLKL
, cited in paragraph 29 above,
EU:T:2011:739
, paragraph 121 and the case-law cited).
Accordingly, the applicant’s second head of claim cannot be upheld.
The merits of the intervener’s second head of claim
As noted above, by its second head of claim the intervener sought annulment of the contested decision on a ground other than those relied on by the applicant. In support of that claim, it maintains that the Board of Appeal infringed essential procedural requirements in finding in paragraph 31 of the contested decision that the illustration reproduced in paragraph 5 above depicted a very simple rectangular shower drain consisting of a cover plate with a hole in it. In the intervener’s view, that finding conflicts with the statements made by the parties during the proceedings before OHIM and did not state the reasons on which it was based, which means that the contested decision is not sufficiently comprehensible.
The intervener explains in that regard that the illustration reproduced in paragraph 5 above shows only gratings that may be used in a drainage channel for liquid waste. These include the plate shown in the centre of that illustration, which is closed on the horizontal surface and allows liquid waste to drain only through the slots on its sides.
The intervener contends, however, that it is clear from the extracts from one of the Blücher catalogues which the intervener itself submitted before the adjudicating bodies of OHIM that that cover plate was intended for industrial use and not for use as a component of a shower drain in a shower or bathroom. In particular, the picture of the plate in that catalogue contains a small picture of a van which, as is explained on another page of the same catalogue, means that the product is intended for industrial use.
The applicant did not give adequate reasons when challenging those contentions before the Board of Appeal. It merely denied, wrongly moreover, that that circumstance involved consequences as regards the validity of its application for a declaration of invalidity. Accordingly, the contested decision, which described the product in question as a shower drain, does not give adequate reasons and is incomprehensible.
In the pleading it submitted under Article 135(3) of the Rules of Procedure, the applicant maintains that ‘no weight can be ascribed to the intervener’s plea’, since ‘the most important thing is to answer the question whether the Board of Appeal was entitled to consider that document “D1” [did] not concern the Blücher [catalogue], as the Invalidity Division decided, only the cover plate’ shown in the centre of the illustration reproduced in paragraph 5 above. In the applicant’s view, the intervener’s plea seeks, in reality, to exploit the semantic confusion that exists in the contested decision as regards the identification of what is meant by ‘D1’, in order to ensure that the contested design is compared only with the abovementioned cover plate. The applicant therefore claims that that plea should be rejected.
Since, in support of its second head of claim, the intervener pleads infringement of the duty to state reasons, it should be borne in mind that, under Article 62 of Regulation No 6/2002, decisions of OHIM are required to state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, which provides that the reasoning of the author of the act must be shown clearly and unequivocally. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights, and to enable the Courts of the European Union to exercise their power to review the legality of the decision. The Boards of Appeal cannot, however, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see judgment of 25 April 2013 in
Bell & Ross
v
OHIM — KIN (Wristwatch case)
, T‑80/10,
EU:T:2013:214
, paragraph 37 and the case-law cited).
It must also be borne in mind that the duty to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds contain errors, those errors will affect the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment in
Wristwatch case
, cited in paragraph 98 above,
EU:T:2013:214
, paragraph 38 and the case-law cited).
It is apparent from the intervener’s arguments that it considers that the nature of the object shown in the centre of the illustration reproduced in paragraph 5 above and, in particular, the question whether it is intended for use as a component of a shower or for industrial use, as part of a drainage channel for liquid waste, was relevant as regards the outcome of the applicant’s application for a declaration of invalidity. Assuming that is the case, it is clear that the contested decision does contain adequate reasoning in that regard, since paragraph 31 of that decision states that it concerns a ‘shower drain’.
In reality, through its arguments the intervener seeks to call into question the validity of that finding of the Board of Appeal. That is what can be inferred from the intervener’s reference to the arguments and documents it relied on before the adjudicating bodies of OHIM, which prove that the object in question is designed for industrial use. In essence, the intervener considers that the abovementioned finding of the Board of Appeal is wrong, since the Board of Appeal did not take into account either those arguments or documents or the lack of any challenge by the applicant. That is also the way in which the intervener’s argument that the contested decision is ‘incomprehensible’ on that point must be understood.
Before reviewing, if necessary, the validity of the Board of Appeal’s finding in question, it is appropriate to examine its relevance for assessing the merits of the applicant’s application for a declaration of invalidity. It should be borne in mind in that regard that the intervener stresses the matter of the correct identification of the product shown in the centre of the illustration reproduced in paragraph 5 above, since it considers that if it emerged that that product was different from the one (the shower drain) to which the contested design relates, that circumstance would be sufficient to bring about the rejection of the applicant’s application for a declaration of invalidity (see also paragraphs 30 to 35 above). It is therefore necessary to determine whether the latter premiss is correct.
It is only if that were so that a hypothetical error on the part of the Board of Appeal in identifying the product to which the earlier design relates could justify annulment of its decision, as sought by the intervener in its second head of claim.
In that regard, it should be noted that the parties discussed, before the adjudicating bodies of OHIM, the relevance for the outcome of the application for a declaration of invalidity of the intended use of the products to which the earlier designs, relied on by the applicant in support of that application, and the contested design relate. Thus, in its observations of 22 June 2010 before the Invalidity Division, the intervener put forward the view that the earlier designs relied on by the applicant, including those shown in the Blücher catalogues, cannot call into question the novelty and individual character of the contested design since they cover different products, namely drainage channels for liquid waste, intended for industrial use.
In support of its view, the intervener relied on an extract from the joint commentary of the Governments of the Benelux countries concerning the Protocol of 20 June 2002 amending the Uniform Benelux Law on Designs (‘the LBDM’). The purpose of that amendment was to adapt the LBDM in order to comply with Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (
OJ 1998 L 289, p. 28
), the provisions of which in relation to novelty and individual character of a design are drafted in essentially the same terms as the corresponding provisions of Regulation No 6/2002.
In particular, the extract from that commentary, relied on by the intervener, reads:
‘Design law currently protects the novel aspect of a product with a utilitarian function. Those three concepts — aspect, product and utilitarian function — are inseparable, as the Hoge Raad (Supreme Court) of the Netherlands confirmed in its judgment of 10 March 1995 (NJ 1995, 670,
Kinderkapperstoel
). An existing item which is given a different utilitarian function from that which was registered may therefore acquire autonomous protection as a design, even if the item has not undergone any significant alteration and constitutes the characteristic element of the product having the new utilitarian function. Although the directive does not recognise a “utilitarian function”, the result is the same, since protection is linked, through the design and the product, to an object and a child’s seat in a hairdresser’s salon is a different object from a toy car.’
The reference in that extract to ‘a child’s seat in a hairdressing salon’, which is ‘a different object from a toy car’ relates to the circumstances of the case that gave rise to the judgment of the Hoge Raad der Nederlanden (Netherlands Supreme Court) of 10 March 1995, cited in paragraph 106 above. As is clear from a copy of that judgment produced by the intervener in response to a request for the production of documents from the General Court, that case concerned an application for registration, as a design protected throughout the Benelux countries, of a child’s seat in a hairdressing salon comprising, as its main element, a toy car, apparently already present on the market in Benelux countries and well known to the circles concerned. The Hoge Raad ruled that it was difficult to see how the fact that a product comprised, inter alia, an object which has a different original utilitarian function and is known within the relevant industrial and commercial circles, precluded the conclusion that it was a product with a new aspect that could be protected as a registered design.
In paragraph 20 of its decision, the Invalidity Division dismissed those arguments of the intervener as irrelevant. In its view, ‘use of the product in which the design is incorporated is not a feature of appearance and hence this difference has no impact on the comparison of the two opposing designs’.
As stated in paragraph 31 above, in its action before the Board of Appeal the intervener none the less repeated its arguments summarised in paragraphs 104 to 107 above, considering that those arguments had been wrongly dismissed by the Invalidity Division.
In its observations of 10 May 2011 before the Board of Appeal the applicant challenged the intervener’s arguments summarised in paragraphs 104 to 107 above. It maintained inter alia that, contrary to what was stated in the joint commentary of the Governments of the Benelux countries, referred to in paragraph 105 above, the view accepted by the Hoge Raad in its judgment of 10 March 1995, cited in paragraph 106 above, does not apply as regards the interpretation of the provisions of Directive 98/71 and of Regulation No 6/2002. It relied in that regard on the Opinion of Advocate General Verkade of 4 February 2005 in Case C 04/27 HR before the Hoge Raad. In response to a request for the production of documents from the General Court, it produced a copy of that Opinion. As regards whether the view accepted in the abovementioned judgment would apply following the amendment of the LBDM in accordance with Directive 98/71, the Advocate General stated that it was not a question of an ‘acte clair’ and that, if the Hoge Raad considered that that question was relevant for the outcome of the dispute before it a reference should be made to the Court of Justice for a preliminary ruling. The applicant also relied on the judgment of the Court of Appeal (England & Wales) of 23 April 2008, [2008] EWCA Civ 358, which, it contends, also supports its view. It attached a copy of that judgment to its observations.
The parties also discussed that question in the reply and rejoinder lodged before the Board of Appeal. However, the latter did not comment in the contested decision on the questions raised by the parties.
In order to determine whether, in accordance with Regulation No 6/2002, the nature of the product to which a design relates may influence the assessment of its novelty or individual character, it should be noted that, as is clear from Article 3(a) of that regulation (see paragraph 38 above), the term ‘design’ as used in that regulation, means the appearance of the whole or a part of a product. It follows that the ‘protection of a design’ for the purposes of Article 4(1) of Regulation No 6/2002 consists in the protection of the appearance of a product (judgment of 9 September 2014 in
Biscuits Poult
v
OHIM — Banketbakkerij Merba (Biscuit)
, T‑494/12, ECR,
EU:T:2014:757
, paragraph 19).
Moreover, according to Article 19(1) of Regulation No 6/2002, a registered Community design, such as the contested design, confers on its holder the exclusive right to use it and to prevent any third party not having his consent from using it, and ‘use’ means, ‘in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes’.
It should also be borne in mind that, according to Article 36(2) of Regulation No 6/2002, the application for registration of a Community design must 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, paragraph 6 of that article states that the information mentioned in paragraph 2 ‘shall not affect the scope of protection of the design as such’.
Taking into account, inter alia, Article 36(6) of Regulation No 6/2002 and the reference to ‘a product’ in the second sentence of Article 19(1) of that regulation, the conclusion must be drawn that a registered Community design confers on its holder the exclusive right to use on any sort of product (and not only on the product stated in the application for registration) the design in question and, under Article 10 of that regulation, any design which does not produce on the informed user a different overall impression. It also confers on its holder the right to prevent any third party from using on any sort of product the design which it holds and any design which does not produce on the informed user a different overall impression. If it were otherwise, the second sentence of Article 19(1) would refer not to ‘a product’, but merely to the product (or products) stated in the application for registration.
With regard to that finding, it should also be held that a Community design cannot be regarded as being novel, for the purposes of Article 5(1) of Regulation No 6/2002, if an identical design has been made available to the public before the dates specified in that provision, even if that earlier design is intended to be incorporated into a different product or to be applied to a different product. In the contrary situation, the subsequent registration of that design as a Community design intended to be incorporated in a different product from that made available to the public or to be applied to that other product, would, for the reasons stated in paragraph 115 above, allow the holder of that subsequent registration to prevent its use even for the product that was made available to the public earlier. Such a result would be paradoxical.
Nor can the first sentence of Article 7(1) of Regulation No 6/2002 lead to a different conclusion.
The first sentence of Article 7(1) of Regulation No 6/2002 provides that ‘[f]or the purpose of applying Articles 5 and 6 [of that regulation], a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b) [of that regulation], as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the [European Union]’.
A literal interpretation of the first sentence of Article 7(1) of Regulation No 6/2002 leads to the conclusion that the ‘sector concerned’, within the meaning of that provision, can only be the one to which the product into which the disclosed design has been incorporated or to which it has been applied belongs. Thus, according to that provision, an earlier design, incorporated into, or applied to, a specific product is deemed to have been disclosed to the public if it has been published, except where that event could not reasonably have become known in the normal course of business to the circles specialised in the sector to which the product in question belongs, operating within the European Union.
The preparatory work for Regulation No 6/2002 confirms that interpretation. The drafting of Article 7 of that regulation reflects a proposal, worded in a broadly similar way, appearing in paragraph 3.1.4 of the Opinion of the Economic and Social Committee on the proposal for a European Parliament and Council Regulation on the Community design (
OJ 1994 C 388, p. 9
). As justification for that proposal, paragraphs 3.1.2 and 3.1.3 of that opinion read as follows:
‘3.1.2.   [The] provision [relating to the novelty of a Community design], as worded, would be difficult to apply in many fields, and particularly in the textiles industry. Sellers of counterfeit products often obtain false certification stating that the disputed design had already been created in a third country.
3.1.3.   In these circumstances, the aim should be dissemination to interested parties within the European Community before the date of reference.’
In other words, by requiring that the making available to the public of an earlier design should be known to the circles specialised in the sector concerned, operating within the European Union, Article 7(1) of Regulation No 6/2002 seeks to avoid the possibility of an allegedly earlier design being taken into consideration for the purpose of the application of Articles 5 and 6 of that regulation, although even the circles specialised in the sector to which the product in question belongs (which, in general, may be deemed to have a much better knowledge of the corpus of designs at the date the contested design was filed in the sector at issue than the public in general) are not aware of that design. On the other hand, the justification contained in the abovementioned proposal of the Economic and Social Committee does not cover the situation in which the earlier design is known to the circles concerned in a specific sector within the European Union but not the circles concerned in another sector to which different products belong.
It is clear from the above considerations that the ‘sector concerned’, within the meaning of Article 7(1) of Regulation No 6/2002, is not limited to that of the product in which the contested design is intended to be incorporated or applied.
Accordingly, an earlier design incorporated in or applied to a product that is different from the one to which the later design relates is, in principle, relevant for the purposes of assessing the novelty, within the meaning of Article 5 of Regulation No 6/2002, of that later design. The wording of that article precludes a design being considered as being new if an identical design was made available to the public earlier, whatever the product in which that earlier design is intended to be incorporated or applied.
However, the sector to which the earlier design relates may, where appropriate, have a certain relevance for the purpose of assessing the individual character, within the meaning of Article 6 of Regulation No 6/2002, of a design.
Article 6 of Regulation No 6/2002 reads as follows:
‘Article 6
Individual character
1.   A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:
(a)
in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;
(b)
in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.
2.   In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.’
It is clear from Article 6 of Regulation No 6/2002 that the individual character of a design must be assessed according to the overall impression it produces on the informed user.
It follows from case-law that the concept of ‘informed user’ must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who needs not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks at issue, and the sectoral expert, who is an expert with detailed technical expertise. Thus, although the informed user is not the reasonably well-informed and reasonably observant and circumspect average consumer who normally perceives a design as a whole and does not proceed to analyse its various details, nor is he an expert or specialist capable of observing in detail the minimal differences that may exist between the designs at issue (see judgment of 21 November 2013 in
El Hogar Perfecto del Siglo XXI
v
OHIM — Wenf International Advisers (Corkscrew)
, T‑337/12, ECR,
EU:T:2013:601
, paragraphs 21 and 22 and the case-law cited).
Case-law also states that the status of ‘user’ implies that the person concerned uses the product covered by the design in accordance with the purpose for which that product is intended. The qualifier ‘informed’ suggests, in addition, that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them (see judgment in
Corkscrew
, cited in paragraph 127 above,
EU:T:2013:601
, paragraph 23 and the case-law cited).
It follows that the user to be taken into consideration, for the purposes of assessing the individual character of a design within the meaning of Article 6 of Regulation No 6/2002, is a user of the product to which that design applies or in which the latter is incorporated.
It is appropriate in that regard to bear in mind also the wording of recital 14 in the preamble to Council Regulation No 6/2002, which reads: ‘[t]he assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design’. It is also clear from that recital that the nature of the product to which a contested design relates and the industrial sector to which that product belongs must be taken into account when assessing the individual character of the design in question.
In that regard, it cannot be excluded that the informed user of the product to which a particular design applies or in which it is incorporated also has knowledge of the corpus of designs relating to different products, even if that knowledge cannot be presumed automatically.
It follows that identification of the product to which an earlier design applies or in which the latter is incorporated, relied on in order to dispute the individual character, within the meaning of Article 6 of Regulation No 6/2002, of a later design, is relevant for that assessment. It is through the identification of the product concerned that it will be possible to determine whether the informed user of the product to which the later design applies or in which the later design is incorporated is aware of the earlier design. It is only if that latter condition is fulfilled that the earlier design may prevent the later design from being recognised as having individual character.
Applied in the present case, the above considerations lead to the conclusion that, although the identification of the precise product in which the earlier design, relied on in support of the application for a declaration of invalidity, was incorporated was not relevant for the purposes of assessing the novelty, within the meaning of Article 5 of Regulation No 6/2002, of the contested design, it was none the less relevant for assessing the individual character, within the meaning of Article 6 of that regulation, of the latter design.
It should be borne in mind that in the contested decision the Board of Appeal annulled the decision of the Invalidity Division and remitted the case to the latter ‘for further prosecution of the request for declaration of invalidity as far as it is based on Article 25(1)(b) in conjunction with Articles 4(1) and 6’ of Regulation No 6/2002 (see point 2 of the operative part of the contested decision) or, in other words, for the purposes of assessing the individual character of the contested design. Consequently, since the Board of Appeal decided to rule itself on the nature of the product in which the earlier design was incorporated and not to leave that question to be assessed by the Invalidity Division, it was required to base its conclusion on a correct assessment of the relevant evidence submitted to it by the parties. It is therefore necessary to review the validity of that assessment, as requested in essence by the intervener.
In that regard, it must be stated that there is nothing in OHIM’s file that would permit the cover plate shown in the centre of the illustration reproduced in paragraph 5 above to be described as a ‘shower drain’ or a component of such a drain. As the intervener correctly maintains, the extracts from the Blücher catalogues submitted by the applicant before OHIM show drainage channels for liquid waste and gratings (including the abovementioned plate) that could be used with them. Such channels, with their gratings or cover plates, may, in general, be used in a number of different places.
As the intervener rightly observes, in the Blücher catalogues the depiction of the cover plate shown in the centre of the illustration reproduced in paragraph 5 above includes a small picture of a van. It is clear from the extracts from those catalogues, attached by the intervener itself as Annex 9 to its observations of 22 June 2010 before the Invalidity Division, that the picture of the little van indicates the ‘load class’ of each grating (or plate) available for sale in those catalogues. In other words, it is a reference to the maximum load which the grating or plate in question can bear.
In total in the Blücher catalogues there are five ‘load classes’: one for ‘barefoot areas’ (bathrooms etc.), one for ‘pedestrian areas’ (shopping centres etc.), one for ‘pallet trucks, trolleys’ (light industry), one for ‘vans, trucks’ (industry, factories) and one for ‘large forklifts’ (heavy industry etc.). The ‘load class’ indicated by the picture of the little van corresponds, therefore, to the second maximum load that can be borne by the grating or plate in question. Objects in that ‘load class’ are suitable, according to the explanations given, for industrial use, in a factory for example, and can bear the loads that such use involves. However, contrary to what the intervener seems to presume, that does not mean that they cannot be used also in other places, inter alia in a shower, where they would normally bear less significant loads.
The fact remains that, since there is nothing in the file to indicate that the cover plate shown in the centre of the illustration reproduced in paragraph 5 above was intended, exclusively or mainly, for use as a component of a shower drain, the Board of Appeal was wrong to describe it as a ‘shower drain’ in paragraph 31 of the contested decision. It should have used a more general description for it that corresponded with the information contained in the Blücher catalogues, describing it, for example, as a cover plate for a drainage channel for liquid waste.
Accordingly, the intervener’s arguments seeking to call into question the validity of the Board of Appeal’s finding that the object shown in the centre of the illustration reproduced in paragraph 5 above is a shower drain must be accepted.
It is clear from all the above considerations that both the applicant’s single plea and the incidental plea raised by the intervener are well founded. It is therefore necessary to annul the contested decision, as claimed by both the applicant and the intervener. However, as was stated in paragraph 92 above, the applicant’s claim for alteration of the contested decision must be rejected.
Costs
Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
In the present case, OHIM has been unsuccessful and both the applicant and the intervener have applied for costs against it. In view of the fact that the applicant did not apply for costs until after the action was lodged, it should be noted that, according to case-law, it is open to the parties to apply for costs subsequently, even at the hearing, although they did not do so when the action was lodged (see, to that effect, judgment of 14 December 2006 in
Mast-Jägermeister
v
OHIM — Licorera Zacapaneca (VENADO with frame and Others)
, T‑81/03, T‑82/03 and T‑103/03, ECR,
EU:T:2006:397
, paragraph 116 and the case-law cited). Accordingly, that application by the applicant is admissible.
OHIM must therefore be ordered to pay the costs incurred by the applicant and the intervener, in accordance with the forms of order sought by them.

On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:

1.
Annuls the decision of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 October 2012 (Case R 2004/2010-3);

2.
Dismisses the action as to the remainder;

3.
Orders OHIM to bear its own costs and to pay those incurred by Group Nivelles and by Easy Sanitairy Solutions BV.

Gratsias
Kancheva
Wetter
Delivered in open court in Luxembourg on 13 May 2015.
[Signatures]
(
*1
)	Language of the case: Dutch.