Judgment;Abstract — ECLI:EU:T:2020:255
Date: 2020-06-10
Language of the case: Spanish
Subject matter: Intellectual, industrial and commercial property;Designs
Procedure: Action for annulment - successful
Origin: Spain

Summary of the facts’), during the examination of the applicant’s appeal the communication of 16 May 2018 was addressed to the parties on the basis of Article 59(2) of Regulation No 6/2002. In that communication, it was stated that the contested design should be declared invalid because the conditions provided for in Article 4 of Regulation No 6/2002 were not complied with, since the product covered by the design constituted a component part (that is to say a coupling element) of a complex product (namely the combined engine, coupling and compressor unit) which, once incorporated into that product, was no longer visible during the normal use of the product. Indeed, the Board of Appeal pointed out that the compressor, which occupied a considerable volume of the engine, covered the part in question and that the complex product was itself entirely obscured by the vehicle bonnet when it was closed, in other words in the normal operating position. 88 Next, it should be emphasised, as is also set out in the ‘Summary of the facts’ contained in the contested decision and recalled in paragraph 14 above, the parties were invited, in accordance with Article 59(2) of Regulation No 6/2002, to file observations on that communication during the invalidity proceedings, which they did on 16 July and 17 September 2018 respectively. The intervener explained, in essence, that the part which was the subject of the contested design was used to connect various components and not just the engine of a vehicle with a compressor and so could not be regarded as a component part of a complex product and that it was normally visible when in use. The applicant, for its part, contended that, by virtue of its technical features, the part at issue was intended solely to connect a refrigeration system to the engine of a vehicle and that, consequently, once the bonnet was closed, it disappeared entirely from the user’s view. 89 Lastly, in the part entitled ‘Motivos de la decisión’ (‘Grounds of the decision’), the Board of Appeal made no reference to the communication of 16 May 2018 or to the subsequent observations of the parties and, in particular, it did not indicate the conclusions that it drew from that communication or from those observations. As has been repeatedly stated, the Board of Appeal itself did not address the question of the application, in the present case, of Article 4(2) and (3) of Regulation No 6/2002 either, regardless of any reference to that communication and to those observations (see paragraphs 15, 38, 42 to 44 and 75 above). 90 It should be borne in mind, however, that the reasoning behind the contested act may be implicit, on condition that it enables the persons concerned to know the reasons for the adoption of the decision and provides the competent court with sufficient material for it to exercise its review (see judgment of 14 March 2018, Footwear, T‑424/16, not published, EU:T:2018:136, paragraph 35 and the case-law cited). 91 It is therefore appropriate to consider whether the position of the Board of Appeal on the question of the application to the present case of Article 4(2) and (3) of Regulation No 6/2002 cannot be deduced implicitly from the grounds of the contested decision. 92 In that respect, it should be emphasised first of all that, as is apparent from the content of the communication of 16 May 2018, the Board of Appeal reached the conclusion that the contested design should be declared invalid on the basis of Article 4(2)(a) of Regulation No 6/2002. 93 Since the contested decision concludes that the application for a declaration of invalidity filed by the applicant is to be rejected, it may be deduced from this that the Board of Appeal set aside the considerations on which the communication of 16 May 2018 was based as well as from those set out in the applicant’s observations referred to in paragraph 88 above. 94 This being the case, it must be said that, even if the Board of Appeal set aside those considerations, the reasons why it did so do not emerge clearly from the contested decision. 95 In the first place, as has been stated in paragraph 42 above, in the first part of the contested grounds, in which the Board of Appeal set out its interpretation of Article 25(1)(b) of Regulation No 6/2002, it referred only to Articles 5, 6, 8 and 9 of that regulation, of which the Board of Appeal considered that the applicant intended to claim a breach, but failed to mention, in that context, the requirements of Article 4(2) and (3) of that regulation. 96 As explained in paragraphs 42 to 44 above, this omission is difficult to reconcile with the Board of Appeal’s interpretation of Article 25(1)(b) of Regulation No 6/2002, since the wording of that provision refers expressly to Articles 4 to 9 of that regulation and does not exclude Article 4(2) and (3), the provisions of which lay down specific requirements for the protection of a design if it relates to a component part of a complex product within the meaning of Article 3(c) of the said regulation. The Board of Appeal has not, however, provided any explanation as to why, notwithstanding this interpretation, it held that the application for a declaration of invalidity filed by the applicant relied solely on non-compliance with the requirements of Articles 5, 6, 8 and 9 of the regulation in question. 97 In the second place, the explanations provided by EUIPO in its written response and at the hearing regarding the implicit position of the Board of Appeal on the application of Article 4(2) and (3) of Regulation No 6/2002 to the present case are unconvincing. 98 In that respect, it is appropriate to recall EUIPO’s argument that the Board of Appeal took the view that, by invoking the application of Article 4(2) and (3) of Regulation 6/2002 in the communication of 16 May 2018, it had contravened Article 63(1) of that regulation by going beyond the grounds put forward by the parties and the relief sought and that it refrained from any reference to that communication in the legal grounds of its decision so as to avoid ruling ultra petita. 99 This presumed position of the Board of Appeal cannot, however, be clearly and unequivocally deduced from the contested decision. 100 On the one hand, it suffices to recall that the Board of Appeal held Article 25(1)(b) of Regulation No 6/2002, which was invoked before it in the present case, to refer to all of the requirements of Articles 4 to 9 of that regulation. On the other hand, it should be noted, with regard to the requirements of Articles 8 and 9 of the same regulation, that the Board of Appeal expressly stated that, while the applicant should be regarded as relying on those latter requirements in support of its application for a declaration of invalidity, since the applicant did not advance any argument to that effect, the Board of Appeal had no option, on the basis of Article 63(1) of the regulation in question, but to reject that part of the application for a declaration of invalidity. 101 It therefore seems logical to conclude from these grounds of the contested decision that if, as EUIPO states, the Board of Appeal had considered itself unable, in the light of the second sentence of Article 63(1) of Regulation No 6/2002, to rule on the application of Article 4(2) and (3) of that regulation to the contested design, it would have said so explicitly. Such explicit reasoning would have been all the more essential in such an eventuality, because in actual fact the Rapporteur, in the communication of 16 May 2018, had clearly identified those provisions as covered by the wording of Article 25(1)(b) of the regulation and had seemed to consider that it followed from the parties’ submissions and their supporting documentation that those provisions were applicable and that it was for him to raise the question of that application. 102 In any event, the premiss underlying the EUIPO hypothesis is erroneous. In fact, contrary to EUIPO’s assertions, the second sentence of Article 63(1) of Regulation No 6/2002 did not prohibit the Board of Appeal from referring to the subject of the communication of 16 May 2018 in the grounds of the contested decision. Accordingly, even if it is accepted that the Board of Appeal had considered that those provisions prevented it from applying Article 4(2) and (3) of the regulation to the contested design, they nevertheless did not hinder it from stating the reasons why, contrary to the conclusions set out in the aforementioned communication, it held such application was impossible. 103 It must therefore be concluded that the grounds on which EUIPO relied before the EU judicature to justify the fact that the Board of Appeal had not applied the provisions of Article 4(2) and (3) of Regulation No 6/2002 to the contested design do not emerge clearly and unequivocally from the content of the contested decision. 104 These reasons, moreover, cannot be taken into account by the Court as additional reasons supporting the contested decision. According to settled case-law, the reasoning for a measure must be provided to the person concerned by the measure before the latter brings an action against it, and non-compliance with the duty to state reasons cannot be regularised by the fact that the person concerned becomes cognisant thereof during proceedings before the EU judicature. That would undermine the rights of defence of the party concerned and his right to an effective judicial remedy, as well as the principle of equality of parties before the EU Courts (see judgment of 14 March 2018, Footwear, T‑424/16, not published, EU:T:2018:136, paragraph 34 and the case-law cited). 105 In the third place, it should be stated that the contested decision contains a description of the product to which the contested design is applied and of its use, a description that does not differ in essence from that contained in the communication of 16 May 2018. 106 As can be seen from paragraph 38 of the contested decision, the Board of Appeal describes the conflicting designs as relating to a part which serves to connect the compressor of a refrigeration system with the engine block of a vehicle. It also indicates that the part in question is screwed onto the engine block and that the compressor feeding the refrigeration equipment is then screwed onto that part. It may therefore be deduced from this description that the Board of Appeal did not envisage any other use for the part to which the contested design relates than the connection of a refrigeration or air-conditioning system to the engine block of the vehicle to which it is to be adapted. Furthermore, nothing in that description indicates that the Board of Appeal had departed from the characterisation as a complex product within the meaning of Article 3(c) of Regulation No 6/2002 that had been used in the communication of 16 May 2018 for the combined unit comprising the engine, the component part represented in the contested design and the compressor. 107 As a result, it is not possible to deduce clearly from the grounds of the contested decision that the position of the Board of Appeal had evolved since the time of the communication of 16 May 2018 on the question whether the product represented in the contested design fell, as a component part of a complex product, within the scope of Article 4(2) and (3) of Regulation No 6/2002. In particular, it is not apparent from that decision that the Board of Appeal had come to endorse the intervener’s observations of 16 July 2018 in which it contested the characterisation as a complex product and cited numerous uses other than that described in paragraph 106 above. 108 It is true that, in paragraphs 39 and 40 of the contested decision, the Board of Appeal defined the informed user referred to in Article 6(1) of Regulation No 6/2002 with respect to whom the individual character of the contested design is assessed as, for example, the installer of the refrigeration equipment or the manager of a vehicle engineering workshop who would select the part with a view to fitting it to the vehicle. These findings may seem to contradict those set out in the communication of 16 May 2018, according to which the component part, once it has been fitted, is no longer visible during normal use within the meaning of Article 4(3) of the said regulation, that is to say utilisation by the end user excluding maintenance, servicing and repair work. 109 While this may be so, the criteria of Article 4(2) and (3) of Regulation No 6/2002 differ from those of Article 6(1) of that regulation. The appraisal of the individual character of the contested design is determined by the overall impression it produces on an informed user, which implies, by definition, that the part to which the design relates must be visible to the user. On the other hand, the concept of normal use referred to in Article 4(3) of the said regulation is of no relevance to such an appraisal. The identification of the informed user in paragraphs 39 and 40 of the contested decision is therefore without prejudice to the analysis conducted by the Board of Appeal regarding fulfilment of the criteria of the same Article 4(2) and (3) in the present case. In any event, it does not serve to clarify the reasons why the Board of Appeal held that it was not for it to examine the application of those criteria. 110 It is evident from all the foregoing that the conclusions of the Board of Appeal with regard to the application of Article 4(2) and (3) of Regulation No 6/2002 to the present case were not clearly discernible in the reasoning of the contested decision for either the parties or the EU judicature. 111 It is therefore appropriate to examine whether those conclusions relate to facts and legal considerations of decisive importance in the context of the contested decision within the meaning of the case-law cited in paragraph 84 above. 112 On the one hand, it should be borne in mind that, as is apparent from paragraphs 56 and 62 above, the lack of visibility of the features of a component part of a complex product is likely, in the conditions set out in Article 4(2) and (3) of Regulation No 6/2002, to result in the invalidity of the entire contested design relating to that component part or, if only some of its features are affected, in its partial invalidity. Accordingly, as may be inferred from the wording of Article 4(2), an examination of the novelty and individual character of the design at issue in the light of the criteria laid down in Articles 5 and 6 of the same regulation is no longer necessary in the first of these scenarios and must be limited to the features that remain visible in the second scenario. The question whether Article 4(2) and (3) is applicable to the present case is therefore likely, in principle, to be of decisive importance in the context of the contested decision, given its potential impact on the grounds and the operative part of that decision, the more so as the Board of Appeal held that the applicant had relied on a lack of novelty and individual character in the contested design. 113 On the other hand, it should be stated that, as is apparent from the terms of the communication of 16 May 2018, the Board of Appeal had held, at that stage in the proceedings, that the parties’ assertions and the evidence provided in support of those assertions had shown that the requirements of Article 4(2) and (3) of Regulation No 6/2002 were not fulfilled. In addition, the parties had taken a position on that question in their observations on that communication, and those observations had not been found inadmissible by the Board of Appeal. 114 As observed in paragraph 93 above, however, since the rejection of the applicant’s appeal in the operative part of the contested decision appears to reflect a complete reversal on the part of the Board of Appeal of the position it adopted on the application of Article 4(2) and (3) of Regulation No 6/2002 in the communication of 16 May 2018, it is incumbent on the Board of Appeal to explain clearly the reasons for that change. 115 Only if the Board of Appeal had decided to allow the applicant’s appeal and declare the invalidity of the contested design for reasons other than the application of Article 4(2) and (3) of Regulation No 6/2002 to the said design could it have refrained, for reasons of procedural economy, from explaining those reasons (see, to that effect and by analogy, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 80). 116 In the absence of such reasoning it is difficult for the applicant to contest effectively before the Court the absence of an examination, on the merits, of the requirements of Article 4(2) and (3) of Regulation 6/2002. The most it can do – and has done, moreover, in the application – is to reiterate the arguments that it had already advanced during the appeal proceedings in its observations of 17 September 2018 to endorse the conclusions set out in the communication of 16 May 2018. It is unable, on the other hand, to contest effectively the reasons that prompted the Board of Appeal to depart from those conclusions. 117 Similarly, the Court is unable to verify that these reasons are well founded and so perform its duty properly. In this respect, it should be borne in mind that the Court is authorised, within the framework of Article 61(2) of Regulation No 6/2002, to carry out a full review of the legality of the decisions of EUIPO Boards of Appeal, if necessary examining whether those Boards of Appeal have made a correct legal classification of the facts of the dispute or whether their assessment of the facts submitted to them was flawed (see judgment of 18 October 2012, Neuman and Galdeano del Sel v Baena Grupo, C‑101/11 P and C‑102/11 P, EU:C:2012:641, paragraph 39 and the case-law cited). 118 The arguments of EUIPO and the intervener are not such as to call this conclusion into question. 119 First of all, as has already been set out in paragraph 104 above, EUIPO’s arguments cannot remedy the lack of reasoning in the contested decision without undermining the applicant’s rights of defence, its right to an effective judicial remedy and the principle of equality of parties before the EU Courts. 120 Then, it is true that, under Article 63(1) of Regulation No 6/2002, only if it could be held that the applicant is relying on non-compliance with the requirements of Article 4(2) and (3) is it for the Board of Appeal to examine those requirements in the light of the points of fact and law underpinning the application for a declaration of invalidity. For the reasons set forth in paragraphs 51 to 72 above, EUIPO could not be regarded as automatically bound to examine non-compliance on the ground that the said application for a declaration of invalidity was based on Article 25(1)(b) of the same regulation. 121 As observed in paragraphs 87 to 110 above, however, the position of the Board of Appeal on the question whether it was for it to examine the application of Article 4(2) and (3) of Regulation No 6/2002 in the present case is not evident, even implicitly, from the contested decision, even though that instance had expressed its view on the question at an earlier stage in the proceedings. 122 It is settled case-law that the Court, when reviewing the legality of decisions of a EUIPO Board of Appeal, does not have the power to substitute its own reasoning for that of the Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72). In particular, it is not for the Court to act in lieu of the Board of Appeal in the examination of arguments, facts and evidence submitted by the applicant in support of its application for a declaration of invalidity of which that instance is seized, without prejudice to any essential questions of law pertaining to the application of the relevant provisions or to any well-known facts, with a view to determining whether the application of Article 4(2) and (3) of Regulation 6/2002 was at issue in the dispute of which it was seized (see, to that effect and by analogy, judgment of 11 December 2014, CEDC International v OHIM – Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 101 and the case-law cited). 123 In any event, contrary to what EUIPO contends, the circumstance that, in its written submissions to the Cancellation Division, the applicant had explicitly cited Article 4(1) of Regulation No 6/2002 and not Article 4(2) and (3) of that regulation does not, of itself, suffice to demonstrate that the application of the latter provisions was not part of the subject of the dispute. In particular, it cannot be ruled out without an examination of all the matters of fact and law put forward by the applicant in the invalidity procedure that the applicant might be held, in the light of those matters, to be relying, in essence, on those provisions. 124 Lastly, although – as EUIPO rightly affirms – the Board of Appeal could not be considered bound by the communication of 16 May 2018, it was nevertheless incumbent on the Board of Appeal to provide a proper statement of its reasoning for departing from the conclusions of that communication, given that the latter, along with the subsequent observations from the parties, was part of the context in which it adopted the contested decision (see, to this effect and by analogy, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 66). 125 As regards the intervener’s arguments, it should be pointed out, on the one hand, that the assertion that the applicant’s complaint alleging a lack of reasoning is inadmissible on the ground that the applicant did not rely, in support of its application for a declaration of invalidity, on the fact that the product which is the subject of the contested design is a component part of a complex product must be rejected in any case, since, as stated in paragraph 122 above, it is not for the Court to carry out an assessment on which that Board of Appeal has not yet adopted a position. 126 On the other hand, the fact that the applicant, as part of a separate procedure, filed an application for registration of a design that was identical to the contested design cannot lead to the rejection of the complaint in hand on the ground that its substance is at odds with the arguments on which the applicant relied in support of the maintenance of the registration at issue. 127 Article 52(1) of Regulation No 6/2002, which lays down that, subject to Article 25(2) to (5) of that regulation, any natural or legal person, as well as a public authority empowered to do so, may submit an application for a declaration of invalidity of a registered Community design, does not subordinate the admissibility of such an application, let alone of supporting facts, evidence and arguments, to demonstration of an interest in bringing proceedings or of an actual or potential economic interest in having the contested design declared invalid (see, to that effect and by analogy, judgment of 25 February 2010, Lancôme v OHMI, C‑408/08 P, EU:C:2010:92, paragraphs 37 to 44). It should also be pointed out that, in contrast to the grounds for invalidity specified in Article 25(1)(c) to (g) of that regulation, the grounds for invalidity specified in points (a) and (b) of that paragraph may, in principle, be relied upon by any natural or legal person (see judgment of 13 June 2019, Visi/one v EUIPO – EasyFix (Document holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 64). 128 Consequently, the fact that the applicant had sought to register a design that was identical to the contested design and, in the invalidity proceedings brought by the applicant in respect of the latter design, had defended the novelty and individual character of that design, although it is now contesting these in the present case, has no impact whatsoever on the admissibility of the present complaint and, moreover, on the assessment of its merits. 129 It follows from all of the foregoing that the complaint alleging a breach of the obligation to state reasons is well founded. 130 Before the consequences of the finding set out in paragraph 129 above on the operative part of the contested decision are determined, it is necessary to examine the second complaint lodged by the applicant in the second part of the fifth plea in law, alleging an error of assessment in that the Board of Appeal, in the contested decision, did not find the contested design to be invalid, even though it represents a component part of a complex product within the meaning of Article 4(2) of Regulation No 6/2002 which, once it has been incorporated into the complex product, is no longer visible. (b) The second complaint, alleging an error of assessment, in that the Board of Appeal did not find that the application of Article 4(2) and (3) of Regulation No 6/2002 to the case in hand rendered the contested design invalid 131 As stated in paragraph 122 above, according to case-law the Court, when reviewing the legality of a decision of an EUIPO Board of Appeal, does not have the power to substitute its own reasoning for that of the Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. 132 In the present case, as noted in paragraph 13 above, in the communication of 16 May 2018, the Board of Appeal examined, as part of the appeal proceedings, the question whether the contested design should be declared invalid on the ground that it represented a component part of a complex product within the meaning of Article 4(2) of Regulation No 6/2002 which, once it had been incorporated into the complex product, was no longer visible during normal use thereof. However, it was concluded in paragraph 110 above that the position of the Board of Appeal on this question was not sufficiently clearly and unequivocally discernible in the contested decision. 133 Consequently, the Court is unable to rule on the application of Article 4(2) and (3) of Regulation No 6/2002 to the present case, and the complaint must therefore be rejected. 134 However, if the first complaint is upheld, that is sufficient reason for annulment of the contested decision. It is settled case-law that, if an obligation to state reasons is an essential procedural requirement within the meaning of Article 61(2) of Regulation No 6/2002 – infringement of which, moreover, may be established by the judicature of its own motion – such infringement renders the contested decision null and void (see, to that effect and by analogy, judgments of 30 March 1995, Parliament v Council, C‑65/93, EU:C:1995:91, paragraph 21, and of 10 July 2008, Bertelsmann and Sony Corporation of America v Impala, C‑413/06 P, EU:C:2008:392, paragraph 174). Accordingly, the head of claim seeking annulment must be upheld. 135 On the other hand, in the light of the case-law cited in paragraph 131 above, the Court cannot alter the contested decision, and so the applicant’s head of claim seeking such alteration must be rejected. 136 It follows from all of the foregoing that, with no need to examine the second, third and fourth pleas in law, the first part of the fifth plea and the sixth plea of the application, the contested decision must be annulled and the remainder of the claims must be dismissed. IV. Costs 137 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 138 However, under Article 135(1) of the Rules of Procedure, if equity so requires, the Court may decide that an unsuccessful party is to pay only a proportion of the costs of the other party in addition to bearing its own costs, or even that it is not to be ordered to pay any costs. 139 As EUIPO and the intervener have been essentially unsuccessful, firstly EUIPO must be ordered to bear its own costs and to pay those of the applicant in accordance with the latter’s pleadings; secondly, the intervener must be ordered to bear its own costs. On these grounds, THE GENERAL COURT (Ninth Chamber) hereby: 1. Annuls the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 November 2018 (Case R 1397/2017-3); 2. Dismisses the action as to the remainder; 3. Orders EUIPO to bear its own costs and to pay those incurred by L. Oliva Torras, SA; 4. Orders Mecánica del Frío, SL, to bear its own costs. Costeira Gratsias Kancheva Delivered in open court in Luxembourg on 10 June 2020. [Signatures] * Language of the case: Spanish