Opinion of the Advocate General — ECLI:EU:C:2017:80
Date: 2017-02-01
Language of the case: Dutch
Subject matter: Intellectual, industrial and commercial property;Designs
Procedure: Action for annulment;Appeal - unfounded
Origin: Netherlands

Summary — Judgment of the Court (Fourth Chamber), 21 September 2017 1. Community designs — Surrender and invalidity — Application for a declaration of invalidity based on the existence of an earlier design — Burden of proof (Council Regulation No 6/2002, Recital 12, Arts 3(a), 5 to 7, 25(1)(b), 52(1) and (2) and 53(1) and (2); Commission Regulation No 2245/2002, Art. 28(1)(b)(v)) 2. Appeal —Grounds — Grounds of a judgment vitiated by an infringement of EU law — Operative part well founded for other legal reasons — Rejection (Art. 256(1) TFEU; Statute of the Court of Justice, Art. 58, first para.) 3. Community designs — Grounds for invalidity — Lack of novelty — Previous disclosure of identical design — Earlier design intended to be incorporated into a different product or to be applied to such product — Irrelevant (Council Regulation No 6/2002, Arts 5(1), 10, 19 and 36) 4. Community designs — Grounds for invalidity — No individual character — Design not giving the informed user a different overall impression from that produced by the earlier design — Informed user — Concept — Informed user’s knowledge of an earlier design incorporated into a product in an industry sector that differs from the relevant sector for the contested design or is applied to such a product — Irrelevant (Council Regulation No 6/2002, Arts 5 to 7) 1. First, according to Article 28(1)(b)(v) of Regulation No 2245/2002 implementing Regulation No 6/2002 on Community designs, where an application for a declaration of invalidity of a registered Community design is based on the fact that the design does not fulfil the requirements set out in Article 5 or 6 of Regulation No 6/2002, the application for a declaration of invalidity must contain information on, and a reproduction of, the prior designs capable of forming an obstacle to establishing the novelty or individual character of the registered Community design, as well as documents proving the existence of those earlier designs. Second, in the context of an application for a declaration of invalidity based on Article 25 of Regulation No 6/2002, it follows from Article 52(1) and (2) and from Article 53(1) and (2) of that regulation, that it is not for the European Union Intellectual Property Office (EUIPO or for the General Court, but for the applicant relying on the ground of invalidity referred to in Article 25(1)(b) of that regulation to provide evidence to demonstrate the truth of that ground. Consequently, when an applicant for a declaration of invalidity refers to the ground of invalidity set out in Article 25(1)(b) of Regulation No 6/2002, it is for him to provide evidence to demonstrate that the contested design does not fulfil the requirements of Articles 4 to 9 of that regulation. In addition, as regards the argument relating to the infringement of Article 5 of Regulation No 6/2002, it should be added that, by requiring that, in order for a design to be considered to be new, ‘no identical design has been made available to the public’, that provision implies that the assessment of the novelty of a design must be conducted in relation to one or more specific, individualised, defined and identified designs from among all the designs which have been made available to the public previously. In that regard, it should be noted that, according to Article 3(a) of that regulation, a design is defined as being ‘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’. It follows that, in the context of the system set out by Regulation No 6/2002, appearance is the decisive factor of a design. Consequently, the fact that a characteristic of a design is visible is an essential feature of that protection. It is stated in recital 12 of Regulation No 6/2002 that the protection of designs should not be extended to those component parts which are not visible during normal use of a product, nor to those features of such part which are not visible when the part is mounted and that those characteristics should not, for those reasons, be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection. It follows from the foregoing that it is essential that the departments of EUIPO have an image of the earlier design that makes it possible to see the appearance of the product in which the design is incorporated and to identify the earlier design precisely and with certainty, so that they may, in accordance with Articles 5 to 7 of Regulation No 6/2002, assess the novelty and individual character of the contested design and carry out a comparison of the designs at issue as part of that assessment. It is a prerequisite of an examination whether the contested design does in fact lack novelty or individual character that a specific and defined earlier design is available. It follows that it is for the party who lodged the application for a declaration of invalidity to provide EUIPO with the necessary information and, in particular, to identify and reproduce precisely and entirely the design that is allegedly earlier in order to demonstrate that the contested design cannot be validly registered. (see paras 58-65) 2. It is apparent from the case-law of the Court of Justice that an error of law committed by the General Court does not invalidate a judgment under appeal if its operative part is well founded on other legal grounds. (see para. 73) 3. It follows from Article 5(1)(b) of Regulation No 6/2002 on Community designs that a design is considered new if no identical design has been made available to the public, 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. The wording of that provision does not mean that the novelty of a design is dependent on the products in which it is capable of being incorporated or to which it is capable of being applied. In addition, it should be noted that, in accordance with Article 10(1) of Regulation No 6/2002, the protection conferred by a Community design is to include ‘any design’ which does not produce on the informed user a different overall impression. Accordingly, if the position that a design’s protection depends on the nature of the product in which that design is incorporated or to which it is applied were to be accepted, such protection would be limited only to the designs belonging to a specific sector. Such a position cannot therefore be accepted. In addition, it follows from both Article 36(6) and Article 19(1) of Regulation No 6/2002 that a registered Community design confers on its holder the exclusive right to use the relevant design in all types of products, and not only in the product indicated in the application for registration. Under Article 36(6), the information referred to, inter alia, in paragraph 2 of that same article is not to affect the scope of protection of the design as such. Consequently, that information, consisting of an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied, cannot limit the protection of that design, as is provided for, in particular, in Article 10 of Regulation No 6/2002. With regard to Article 19(1) of that regulation, the reference to ‘a product’ in which the design is incorporated or to which it is applied, does not permit the conclusion that the scope of protection of the Community design will be limited to the product in which the design is incorporated or to which it is applied. Having regard to the interpretation of Articles 10, 19 and 36 of Regulation No 6/2002, a Community design cannot be regarded as being new, within the meaning of Article 5(1) of that regulation, if an identical design has been made available to the public before the dates specified in that provision, even if that earlier design was intended to be incorporated into a different product or to be applied to a different product. The fact that the protection granted to a design is not limited only to the products in which it is intended to be incorporated or to which it is intended to be applied must therefore mean that the assessment of the novelty of a design must also not be limited to those products alone. (see paras 89-96) 4. In accordance with Article 6 of Regulation No 6/2002 on Community designs, a design is to 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. The Court of Justice has already held that the concept of the ‘informed user’, which is not defined in that regulation, may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question. It is true that, according to the case-law of the Court of Justice, the adjective ‘informed’ suggests 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. However, the concept of an informed user cannot be interpreted as meaning that it is only if that user knows the earlier design that the earlier design could prevent recognition of the individual character of a subsequent design. Such an interpretation runs counter to Article 7 of Regulation No 6/2002. In that regard, it should be noted that, under Articles 5 and 6 of Regulation No 6/2002, it is not necessary to compare one design with another to establish both the novelty and the individual character of the first design, unless the second has been made available to the public. When a design is considered to have been made available to the public, within the meaning of Article 7(1) of Regulation No 6/2002, that disclosure is valid for the purposes of the assessment both of novelty, within the meaning of Article 5 of that regulation, of the design to which the disclosed design is compared, and of the individual character of that first design, within the meaning of Article 6 of that regulation. In addition, 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 to which it is intended to be applied. The view that it is only if the informed user knows the earlier design that that earlier design could prevent recognition of the individual character of a subsequent design, amounts to saying that, for the purposes of examining the individual character of a design, within the meaning of Article 6(1) of Regulation No 6/2002, the earlier design, whose disclosure to the public has been proved, within the meaning of Article 7(1) of that regulation, must be known to the informed user of the contested design. However, nothing in Article 7(1) permits the conclusion that it is necessary for an informed user of the product in which the contested design is incorporated or to which it is applied to know the earlier design when it is incorporated in a product in an industry sector that differs from the relevant sector for the contested design, or is applied to such a product. (see paras 124-131)