Judgment;Abstract;Judgment (extracts) — ECLI:EU:T:2021:767
Date: 2021-11-10
Language of the case: English
Court formation: Fifth Chamber
Subject matter: Intellectual, industrial and commercial property;Designs
Procedure: Action for annulment - unfounded

summary of the features of the designs at issue and in the assessment carried out by the Board of Appeal with regard to their number, size and position. It is also apparent from paragraph 53 of the contested decision that the Board of Appeal took the view that those differences were not insignificant, even though it then found that they were insufficient to produce a different overall impression in the mind of the informed user. 87 Accordingly, the applicant’s argument that those differences were ignored must be rejected. 88 Fifthly, in so far as the applicant submits that those differences were incorrectly regarded as being insufficient to produce a different overall impression in the mind of the informed user, it must be held that the Board of Appeal put the effect of those prints marks on the informed user into context, in view of their technical function. 89 According to the applicant, the shapes and lengths of those print marks are not merely technical. It claims that the intervener bore the burden of proof in that regard. It adds that, since the European patent was silent as to the size and shape of the print marks, that patent could not be regarded as proving that they were purely functional in nature. The applicant also submits that the evidence adduced, in particular the designer’s affidavit, the probative value of which the applicant emphasises, demonstrated that the choice of the shape and length of the print marks was arbitrary. It concludes from this that the informed user will not overlook the print marks on the ground that they also have a technical function. 90 It must be noted that it is for the applicant to prove what it puts forward before the Court. In that regard, it is apparent from the file that the intervener submitted evidence to the Board of Appeal showing that the print marks, read by the printers’ sensors, were used to detect the start of the labels and therefore to initiate the printing process and control it by identifying and regulating the position, speed, timing and amount of material to be advanced. The technical nature of the print marks was established on the basis of, inter alia, an expert opinion, two European patents No 1718472 B1 and No 0934168 B1 in which the markings are the print marks, and an affidavit of 17 June 2016 by C, a mechanical engineer for the intervener, referring to a catalogue which was also submitted. 91 It is thus apparent from the information in the file that the technical function of the print marks has been established. 92 Sixthly, the fact, relied on by the applicant, that there are other designs for those print marks or that the European patents referred to indicate that the dimensions are given by way of example does not invalidate the finding that those print marks perform a technical function. 93 As regards the shape and length of the print marks, the Board of Appeal stated that it was apparent from the expert opinion submitted to it that the rectangular shape of the print marks was due to the scanning operation carried out by the sensors and that their position, spacing, shape (straight contours), width and length were determined by the printer’s sensor and the corresponding software control. Thus, even though those features linked to the shape and length of those print marks may vary, the fact remains that they must nevertheless correspond to the sensors of printers used and therefore have a technical function. 94 As regards the designer’s affidavit, produced by the applicant in Annex 18 to its application, it must be noted that the particulars in an affidavit made by a person linked, in any manner whatsoever, to the company relying on it must, in any event, be supported by other evidence (see, to that effect, judgment of 18 November 2015, Liu v OHIM – DSN Marketing (Case for a portable computer), T‑813/14, not published, EU:T:2015:868, paragraph 29). 95 In the present case, although the designer’s intention may be taken into account (see, to that effect, Opinion of Advocate General Saugmandsgaard Øe in DOCERAM, C‑395/16, EU:C:2017:779, point 67), the fact remains that that mere intention is not sufficient in itself to cast doubt on the fact that a feature of the appearance of a product also results from its technical function. Furthermore, and in any event, it also follows from that affidavit that the shape and size of the print marks may differ in so far as they correspond with the printers’ sensors, which is the technical function of those print marks. 96 It is therefore apparent from the information in the file that those features relating, inter alia, to the arrangement, shape and length of the print marks, which may influence the appearance of those print marks, are linked not to an aesthetic but a technical choice, which depends on the configuration of the printer with which the design at issue is required to function. Moreover, those features do not have a significant influence on the configuration and, therefore, on the shape and general appearance of the label roll design itself. 97 The Board of Appeal was therefore right to conclude that the informed user, aware of that technical function of the print marks on the back of the label strip and of the fact that printer labels were available in different sizes depending on their intended purpose, did not pay particular attention to the differences thus noted. 98 Seventhly and lastly, contrary to what the applicant claims with regard to the informed user’s attention, the Board of Appeal did not in any way exclude the print marks from its assessment relating to the overall impression of the designs at issue. It considered only that, because of his or her knowledge of printer label rolls and the corresponding printers, the informed user should be regarded as being aware of ‘the features of appearance that a label roll must possess in order to fulfil its intended purpose to interact with the printer’s sensor’ and that he or she would not therefore pay particular attention to the difference in the size of the labels. 99 It follows from all of the foregoing that the Board of Appeal did not make an error of assessment in finding that the designs at issue produced the same overall impression on the informed user, or in concluding therefore that the contested design lacked individual character, for the purposes of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, in view of the earlier design. 100 Consequently, the third plea in law raised by the applicant must be rejected as unfounded and, therefore, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim requesting that the Court reject the application for a declaration of invalidity of the contested design, since that head of claim depends on the action for annulment being upheld, so that it is made only in the event that the first head of claim succeeds (see, to that effect, judgment of 27 February 2019, Aytekin v EUIPO – Dienne Salotti (Dienne), T‑107/18, not published, EU:T:2019:114, paragraph 84 and the case-law cited). Costs 101 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. 102 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Fifth Chamber) hereby: 1. Dismisses the action; 2. Orders Sanford LP to pay the costs. Spielmann Öberg Mastroianni Delivered in open court in Luxembourg on 10 November 2021. E. Coulon S. Gervasoni Registrar President * Language of the case: English. 1 This judgment is published by extracts.