Judgment — ECLI:EU:T:2013:298
Date: 2013-06-06
Language of the case: German
Court formation: Sixth Chamber
Subject matter: General provisions;Intellectual, industrial and commercial property;Designs
Procedure: Action for annulment - unfounded
Origin: Germany

summary manner, the different views of the earlier design ‘Farbfolge II, 12 Stunden im 5-Minuten Takt’, which was the only one that enabled the change of the colours and of the intensity of the shades at five-minute intervals to be recognised immediately, and compared it to the contested design. 46 Moreover, the Board of Appeal stated, in paragraph 25 of the contested decision, that ‘no two uniform shades or colours [were] possible in the 12 o’clock and 6 o’clock positions in the earlier designs’, which constituted a significant difference between the designs at issue. The representation of the dial in the 12 o’clock position in the contested design, which displays one half in white and the other in black, both being uniform, is different from that in the first view from the left of the earlier design ‘Farbfolge II, 12 Stunden im 5-Minuten Takt’, represented in colour in paragraph 5 above. [The latter] displays a graded combination of dark colours and of white. Indeed, as the applicant himself concedes, the contested design cannot achieve the 12 o’clock position as it appears in the earlier design ‘Farbfolge II, 12 Stunden im 5-Minuten Takt’. Similarly, contrary to what the applicant claims, the 6 o’clock position in the contested design, which is represented by two uniform tones of grey, is different from the seventh view from the left of the earlier design ‘Farbfolge II, 12 Stunden im 5-Minuten Takt’, which displays a graded combination of red and of green giving rise to, at least, four different shades. 47 It follows from the above that the Board of Appeal did carry out a comparison of the contested design with the earlier design ‘Farbfolge II, 12 Stunden im 5-Minuten Takt’, represented in colour in paragraph 5 above, and that it concluded therefrom that the features of the designs at issue differed significantly. 48 The applicant also claims that, when comparing the designs at issue, the Board of Appeal should have taken account of the fact that the contested design was registered in black and white, and that it should consequently have found that colour is irrelevant as far as concerns novelty. 49 That argument must be rejected as irrelevant. As has been stated by the Court in paragraph 40 above, the Board of Appeal based its assessment as to novelty, as set out in paragraph 27 of the contested decision, on the differences established in the course of its examination of whether the contested design had individual character, as is clear from paragraph 25 of the contested decision. Accordingly, it found that, in the case of the earlier designs, the graded sequence of the discs that compose [those designs] was able to produce a wide spectrum of colours, the combination and intensity of which changed with the time, whereas in the case of the contested design, only two uniform colours were displayed in the 12 o’clock and 6 o’clock positions or four colours in the positions for other times with no variation in intensity. The Board of Appeal’s reasoning is thus based on the ability of the designs at issue to produce a more or less wide spectrum of colours, and a permanent change in tones, and not on the difference in colour between them. Therefore, the Board of Appeal cannot be accused, in the assessment of the differences between the designs at issue, of failing to take account of the fact that the contested design was registered in black and white and [cannot be criticised] for not finding that colour was irrelevant in circumstances such as those of this case. 50 Having regard to all of the foregoing, it must be concluded that the Board of Appeal was correct to find, in paragraph 27 of the contested decision, that the designs at issue could not be deemed to be identical within the meaning of Article 5 of Regulation No 6/2002. 51 This first plea must, therefore, be rejected. Second plea, alleging infringement of Articles 4 and 6, read in conjunction with Article 25(1)(b), of Regulation No 6/2002 52 First, the applicant submits that the Board of Appeal should have upheld a less strict interpretation of the concept of individual character and should not have equated the identity of the overall impression produced by the designs at issue for the purposes of Article 6 of Regulation No 6/2002, with identity or ‘identi[[ty] except in] immaterial details’ for the purposes of Article 5 of that regulation. Secondly, the applicant submits that [the Board of Appeal] should not have taken account of the differences in colours between the designs at issue for the purpose of assessing the individual character of the contested design. 53 In addition, the applicant claims that the Board of Appeal did not examine, in the contested decision, the overall impression produced on the informed user by the designs at issue, but confined itself to finding that some differences led to a different perception by the informed user. 54 The intervener contends that the degree of freedom of the designer is limited by the technical requirements imposed by the presence of the coloured, moving, overlapping foils which necessarily form part of a dial whose colours change with the movement of the hands. Consequently, even slight differences would suffice to establish the individual character of the contested design. 55 Under Article 6(1)(b) of Regulation No 6/2002, individual character is to be assessed, in the case of a registered Community design, in the light of the overall impression produced on the informed user, which must be different from that produced by any design made available to the public before the date on which the application for registration was filed or, if a priority is claimed, the date of priority. Article 6(2) of Regulation No 6/2002 states that, for the purposes of that assessment, the degree of freedom of the designer in developing the design must be taken into consideration. 56 In that regard, it should be noted that, contrary to what the applicant claims, the Board of Appeal did not equate the identity of the overall impression produced by the designs at issue for the purposes of Article 6 of Regulation No 6/2002, with identity or ‘identi[[ty] except in] immaterial details’ for the purposes of Article 5 of that regulation. The Board of Appeal recorded, in paragraph 25 of the contested decision, the differences between the designs at issue, namely, as regards the earlier designs, the possibility of obtaining a larger combination of colours and a variation in the intensity of those colours; and it found, in paragraph 26 of the contested decision, that, from the point of view of the informed user, those differences were sufficiently important as to produce a different overall impression. 57 According to the case-law, the informed user is a person who is particularly observant and who has some awareness of the previous state of the art, that is to say, the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design (Case T‑9/07 Grupo Promer Mon Graphic v OHIM – PepsiCo (Representation of a Circular Promotional Item) [2010] ECR II‑981, paragraph 62, and judgment of 9 September 2011 in Case T‑11/08 Kwang Yang Motor v OHIM – Honda Giken Kogyo (Internal Combustion Engine), not published in the ECR, paragraph 23). 58 The status of ‘user’ implies that the person concerned uses the product in which the design is incorporated, in accordance with the purpose for which the product is intended (Case T‑153/08 Shenzhen Taiden v OHIM – Bosch Security Systems (Communications Equipment) [2010] ECR II‑2517, paragraph 46, and Internal Combustion Engine, paragraph 24). 59 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 (Communications Equipment, paragraph 47, and Internal Combustion Engine, paragraph 25). 60 In the present case, it is apparent from paragraph 10 of the contested decision that the Invalidity Division found that the informed user was a person familiar with the design of timepieces. That conclusion was not disputed by the applicant before the Board of Appeal. According to the case-law, the decision of the Invalidity Division, together with its statement of reasons, forms part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to carry out fully its judicial review as to whether the assessment of individual character of the design at issue was well founded (see, to that effect, judgment of 6 October 2011 in Case T‑246/10 Industrias Francisco Ivars v OHIM – Motive (Mechanical Speed Reducer), not published in the ECR, paragraph 20). Therefore, it is the point of view of the informed user, as defined by the Invalidity Division, that the Board of Appeal used to establish that the differences between the designs at issue were important enough to produce a different overall impression and to recognise, as a consequence, the individual character of the contested design. 61 Contrary to what the applicant claims, the Board of Appeal did not take account of the difference in colour between the designs at issue for the purpose of assessing the individual character of the contested design. As stated in paragraph 49 above, the Board of Appeal based its assessment on the fact that, in the case of the earlier designs, the graded sequence of the discs that compose [those designs] was able to produce a wide spectrum of colours, the combination and intensity of which changed with the time, whereas in the case of the contested design, only two uniform colours were displayed in the 12 o’clock and 6 o’clock positions or four colours in the positions for other hours with no variation in intensity. The Board of Appeal’s reasoning is thus based on the ability of the designs at issue to produce a more or less wide spectrum of colours, and a permanent change in tones, and not on the difference in colour between them. 62 Even if, as the applicant claims, the differences between the designs at issue could be regarded as slight, they will easily be perceived by the informed user. Further, when assessing whether a design has individual character, account should be taken of 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 (Communications Equipment, paragraph 43). In the present case, concerning watch dials, parts of watch dials and hands of dials, the view must be taken that they are intended to be worn visibly on the wrist and that the informed user will pay particular attention to their appearance. Indeed, he will examine them closely and will therefore be able to see, as was stated in paragraph 56 above, that the earlier designs produce a larger combination of colours than the contested design and, unlike the latter, a variation in the intensity of the colours. Given the importance of the appearance of those products to the informed user, the differences, even if assumed to be slight, will not be regarded by him as being insignificant. 63 Therefore, it must be concluded that the Board of Appeal was correct to hold that the differences mentioned in paragraph 56 above had a significant impact on the overall impression produced by the designs at issue, so that they produce a different overall impression from the point of view of an informed user. 64 The applicant argues also that watch dial designs can give rise to a practically unlimited number of reproductions or representations and that it was, therefore, open to the designer of the contested design not to reproduce the original idea of the earlier designs, first developed in those designs, that is, to show the time by the change in colours. 65 The Board of Appeal pointed out, in paragraph 22 of the contested decision, that the degree of freedom of the designer was limited only by the need to track and display the changing hours. 66 In response to a question put to it by the Court at the hearing, formal note of which question and response was taken in the minutes of the hearing, the intervener stated that, by its arguments relating to the degree of freedom of the designer, [and] taking account of the fact that, in the intervener’s view, the freedom of the designer was limited by technical reasons, it intended to dispute the assessment made by the Board of Appeal on that point. 67 Inasmuch as the intervener was successful as regards the issue of the existence of a similarity between the designs at issue, disputed in the present proceedings, it has established that it has an interest in applying, under the second subparagraph of Article 134(2) of the Rules of Procedure, for an independent form of order, seeking alteration of the contested decision so far as concerns the degree of freedom of the designer, which [it contends] is highly relevant to the assessment of the individual character of the contested design (see, by analogy, Case T‑405/05 Powerserv Personalservice v OHIM – Manpower (MANPOWER) [2008] ECR II‑2883, paragraph 24). This conclusion cannot be invalidated by the merely formal circumstance that the intervener did not expressly seek the alteration of the contested decision in its submissions (see, by analogy, judgment of 14 September 2011 in Case T‑485/07 Olive Line International v OHIM – Knopf (O-live), not published in the ECR, paragraph 65). 68 However, contrary to what the intervener contends, the degree of freedom of the designer is not limited in the circumstances of the present case. As is apparent from paragraph 3 above, the products in respect of which the contested design was registered correspond to the following description: ‘Watch dials, parts of watch dials, hands of dials’. That description is quite broad, for it does not contain any detail as to the type of watches or the way in which they show the time. Therefore, the intervener cannot contend that, for technical reasons, the freedom of the designer is limited. 69 Accordingly, the finding of the Board of Appeal that the degree of freedom of the designer is limited only by the need to track and display the changing hours must be upheld. 70 As regards the applicant’s argument that the designer of the contested design should not have reproduced the original idea of the earlier designs, that argument must be rejected as unfounded. It is true that the possibilities for the design of a watch dial are practically unlimited and include, inter alia, those in which the colour or colours change. Some models may be more complex in form, such as that of the earlier designs in which the time is represented by the colours or shades of colours generated by the superposition of discs or half-discs of a single colour, enabling the user to tell the time on the basis of the change in those colours or of their shades. The form of the earlier designs is conceived in such a way that the intensity of the colours increases or decreases around the disc. 71 The contested design is an uncomplicated form of a watch dial that changes colour and that, as stated in paragraph 62 above, from the point of view of the informed user, differs from the earlier designs in significant, not inconsiderable features concerning the appearance of the dials. The contested design cannot, therefore, be regarded as a reproduction of the earlier designs or of the original idea that was developed for the first time in them. 72 Moreover, as is apparent from Articles 1 and 3 of Regulation No 6/2002, as a rule, the law relating to designs protects the appearance of the whole or a part of a product, but does not expressly protect the ideas that prevailed at the time of its conception. Therefore, the applicant cannot seek to obtain, on the basis of the earlier designs, a protection for those designs’ underlying idea, that is, the idea of a watch dial that makes it possible to tell the time on the basis of the colours of the discs that compose it. 73 In the light of all the foregoing, the second plea must be rejected. Third plea, alleging infringement of Article 25(1)(f) of Regulation No 6/2002 74 The applicant submits that the Board of Appeal failed to take into consideration the fact that the earlier designs constituted a work of art protected by German copyright law, the principal idea of which work of art, namely, the representation of time by different colours and shades, has been used without authorisation in the contested design. 75 In addition, he claims that the expert’s report drafted by an expert on the works of Paul Heimbach was not taken into consideration by the Board of Appeal, despite its being relevant for the purpose of determining the extent of the protection conferred by copyright. 76 As a preliminary point, it must be noted that, as the administrative file shows, the expert’s report was submitted outside the prescribed period and it was therefore for the Board of Appeal to decide on its admissibility. 77 It must also be noted that, as stated in paragraph 21 above, it is not for the expert to make a legal assessment of the extent of the protection conferred by copyright and on the existence of an infringement of that right. 78 Therefore, the Board of Appeal was right not to take into account the considerations of a legal nature contained in the expert’s report submitted by the applicant during the administrative procedure. 79 So far as concerns the applicant’s allegation of infringement of copyright of the earlier works of art, under Article 25(1)(f) of Regulation No 6/2002 a Community design may be declared invalid if it constitutes an unauthorised use of a work protected under the copyright law of a Member State. Accordingly, the protection may be invoked by the copyright holder when, in accordance with the law of the Member State conferring the protection on him, he can prevent the use of that design. 80 Notwithstanding the provisions of national law to which he referred in paragraph 39 of the application, the applicant has, however, not provided in the present case any information as to the scope of copyright protection in Germany, in particular as to whether, under German law, copyright protection prohibits the unauthorised reproduction of the idea underlying the earlier works of art, and is not limited to protecting the configuration or features of those works. 81 As the Board of Appeal stated in paragraph 32 of the contested decision, in accordance with the international agreements on copyright to which Germany is a party, copyright protection extends to the configuration or to the features of the work and not to ideas. 82 In the light of the foregoing, the third plea must be rejected and, therefore, the action in its entirety. Costs 83 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. As the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Mr Erich Kastenholz to pay the costs. Kanninen Soldevila Fragoso Popescu Delivered in open court in Luxembourg on 6 June 2013. [Signatures] * Language of the case: German.