ORDER OF THE COURT (Ninth Chamber)

30 January 2018 ([\*](#Footnote*))

(Appeal — Article 181 of the Rules of Procedure of the Court — Community design — Invalidity proceedings — Community Design No 002-159-640-0002 (electronic wristband) — Rejection of the application for a declaration of invalidity)

In Case C‐538/17 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 13 September 2017,

**Thomas Murphy,** residing in Dublin (Ireland), represented by N. Travers, Senior Counsel, J. Gormley, Barrister-at-Law, and M. O’Connor, Solicitor,

appellant,

the other parties to the proceedings being:

**European Union Intellectual Property Office (EUIPO),**

defendant at first instance,

**Nike Innovate CV,** established in Beaverton (United States), represented by C. Spintig, S. Pietzcker and M. Prasse, Rechtsanwälte,

intervener at first instance,

THE COURT (Ninth Chamber),

composed of C. Vajda, President of the Chamber, E. Juhász and C. Lycourgos (Rapporteur), Judges,

Advocate General: M. Wathelet,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to rule by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court,

makes the following

**Order**

1        By his appeal, Mr Thomas Murphy asks the Court to set aside the judgment of the General Court of the European Union of 4 July 2017, *Murphy* v *EUIPO — Nike Innovate (electronic wristband)* (T‐90/16, not published, ‘the judgment under appeal’, EU:T:2017:464), whereby the General Court dismissed his action seeking annulment of the decision of the Third Chamber of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 November 2015 (Case R 736/2014-3), concerning invalidity proceedings between Mr Murphy and Nike Innovate CV.

2        In support of his appeal, the appellant puts forward a single ground of appeal, divided into three parts, alleging infringement of Article 4, Article 6 and Article 25(1)(d) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

**The appeal**

3        Pursuant to Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

4        That provision should be applied in the present case.

5        On 13 December 2017, the Advocate General took the following position:

‘1.      In his appeal brought on 14 September 2017 against the judgment under appeal, Mr Murphy relies on a single ground of appeal alleging infringement by the General Court of Article 4, Article 6 and Article 25(1)(d) of Regulation No 6/2002. That ground is divided into three parts.

2.      For the following reasons, I propose that the Court should dismiss the appeal as, in part, manifestly inadmissible and, in part, manifestly unfounded.

**The first part of the single ground of appeal**

3.      By the first part of his single ground of appeal, Mr Murphy claims that the General Court disregarded, in paragraphs 26 and 72 of the judgment under appeal, the principle that an earlier design which constitutes a significant advance compared to the prior art may benefit from more extensive protection, and incorrectly held that the burden of proof as regards that significant advance rested on him.

4.      I am of the opinion that the existence of such a principle is not apparent from the judgment of the General Court of 18 March 2010, *Grupo Promer Mon Graphic* v *OHIM — PepsiCo**(Representation of a circular promotional item)* (T‐9/07, EU:T:2010:96), or from the Opinion of Advocate General Mengozzi in *PepsiCo* v *Grupo Promer Mon Graphic* (C‐281/10 P, EU:C:2011:302), relied on by Mr Murphy.

5.      Far from establishing such a principle, the General Court merely stated, in paragraph 72 of its judgment of 18 March 2010, *Grupo Promer Mon Graphic* v *OHIM — PepsiCo (Representation of a circular promotional item)* (T‐9/07, EU:T:2010:96), that the degree of freedom of the designer in developing the contested design should be taken into consideration and that the more that freedom was restricted, the more likely minor differences between the designs at issue could be sufficient to produce a different overall impression on the informed user.

6.      Nothing else may be inferred from paragraph 32 of the Opinion of Advocate General Mengozzi in *PepsiCo* v *Grupo Promer Mon Graphic* (C‐281/10 P, EU:C:2011:302). Although Advocate General Mengozzi accepted that the rules for the protection of designs were basically intended to reward the developers of innovative goods, by providing them with a system of protection, nothing in that passage suggests that designs representing a significant technical advance warrant more extensive protection.

7.      Finally, as regards the burden of proof, it should be borne in mind that each party bears the burden as regards the presentation of its own arguments. In that regard, Mr Murphy puts forward no specific legal principle which would justify his request that the burden of proof be transferred to the person who denies the originality of his earlier design, when it is he who claims its originality.

8.      Consequently, the General Court did not err in law in rejecting, for lack of evidence, Mr Murphy’s claim that his earlier design constituted a significant technical advance compared to the prior art.

9.      In the light of the foregoing considerations, I propose that the Court should reject the first part of the single ground of appeal as manifestly unfounded.

**Second and third parts of the single ground of appeal**

10.      By the second part of his single ground of appeal, Mr Murphy argues that the General Court has, in paragraphs 55 and 56 of the judgment under appeal, incorrectly assessed the extent of the protection of the earlier design as shown in the application for registration by holding that the lines and symbols indicated on the representation of the wristband in question formed an integral part of it. According to Mr Murphy, the General Court should have taken into account other features to which he referred in his explanations before the Board of Appeal.

11.      By the third part of his single ground of appeal, Mr Murphy submits that the General Court, in paragraph 69 of the judgment under appeal, disregarded the degree of freedom of the designer of electronic wristbands, as it took the view that such wristbands had to have a circular shape so as to fit the wrist.

12.      In accordance with Article 256 TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal is limited to points of law. The General Court thus has exclusive jurisdiction to find and evaluate the relevant facts and to assess the evidence. Thus, the assessment of those facts and of that evidence does not, save where the facts or evidence are distorted, constitute a point of law, which is subject, as such, to review by the Court of Justice on appeal (judgment of 2 September 2010, *Calvin Klein Trademark Trust* v *OHIM*, C‐254/09 P, EU:C:2010:488, paragraph 49).

13.      In the present case, Mr Murphy does not claim that the General Court distorted the facts or evidence. However, he does call into question the assessment of the overall impression of the earlier design made by the General Court in paragraphs 55, 56 and 69 of the judgment under appeal. In doing so, he seeks to obtain a fresh assessment of the facts and the evidence.

14.      In the light of the foregoing considerations, I propose that the Court should reject the second and third parts of the single ground of appeal as manifestly inadmissible.

15.      As Mr Murphy’s appeal has been unsuccessful in its entirety, he should also be ordered to bear his own costs, in accordance with Article 137 and Article 184(1) of the Rules of Procedure.’

6        It should be added, as regards the third part of the single ground of appeal, that concerning, first, the applicant’s claim that the General Court, in paragraph 70 of the judgment under appeal, took the view, without having afforded him the opportunity to address the issue, that the closing clasp in the design at issue should not be considered a feature that is important to the informed user, it must be observed that it is clear from that paragraph of the judgment under appeal that the General Court responded to the appellant’s arguments and that, therefore, he had the opportunity to express his view on the grounds or evidence on which the assessment of the General Court was based.

7        Second, with regard to the applicant’s argument that paragraph 70 of the judgment under appeal is vitiated by a failure to state reasons, it suffices to note that the General Court fulfilled its obligation to state reasons since it addressed the applicant’s argument by recalling the relevant case-law and by examining the differences between the contested design and the earlier design, and the overall impression produced by the contested design.

8        On those grounds, and on those set out by the Advocate General, the appeal must be dismissed.

**Costs**

9        Under Article 137 of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. Since the present order was adopted before the appeal was served on the respondent and therefore before the latter could have incurred costs, it is appropriate to decide that Mr Murphy shall bear his own costs.

On those grounds, the Court (Ninth Chamber) hereby orders:

1.      **The appeal is dismissed.**

2.      **Mr Thomas Murphy shall bear his own costs.**

Luxembourg, 30 January 2018.

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| A. Calot Escobar | | C. Vajda |

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| Registrar | | President of the Ninth Chamber |

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[\*](#Footref*)      Language of the case: English.