JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
18 October 2018  (*)
(Community design — Invalidity proceedings — Registered Community design representing an electrically operated lifting column — Earlier Community design — Ground for invalidity — No individual character — Informed user — No different overall impression — Article 6 of Regulation (EC) No 6/2002)
In Case T‑368/17,
Linak A/S, established in Nordborg (Denmark), represented by V. von Bomhard and J. Fuhrmann, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented initially by G. Sakalaite-Orlovskiene and A. Folliard-Monguiral, and subsequently by G. Sakalaite-Orlovskiene and J. Ivanauskas, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being:
ChangZhou Kaidi Electrical Co. Ltd, established in Changzhou (China),
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 21 March 2017 (Case R 1412/2015-3), relating to invalidity proceedings between Linak and ChangZhou Kaidi Electrical,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, I. Labucka and I. Ulloa Rubio (Rapporteur), Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 9 June 2017,
having regard to the response lodged at the Court Registry on 22 August 2017,
further to the hearing on 23 April 2018,
gives the following
Judgment
Background to the dispute
1        On 1 November 2003, the applicant, Linak A/S, filed an application for registration of a Community design with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
2        The Community design in respect of which registration was sought is represented in the following seven views in black and white:
3        The products in respect of which registration has been sought are in Classes 06-06 and 15-99 of the Locarno Agreement of 8 October 1968 Establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Electrically operated lifting column, in particular for tables’.
4        The design referred to in paragraph 2 above was registered under number 101159-0002 on the day on which the application for registration was submitted and was published in Community Designs Bulletin No 2014/018 of 9 March 2004, with a date of priority of 6 May 2003.
5        On 30 April 2014, ChangZhou Kaidi Electrical Co. Ltd filed an application with EUIPO for a declaration of invalidity of the contested design. The ground relied on in support of its application was that set out in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4 to 9 of that regulation. In support of its application, ChangZhou Kaidi Electrical produced the following documents:
–        the product sheet of the lifting column DESKLIFT DL3, published in March 2002, represented as follows:
–        an extract from the applicant’s homepage, as obtained from the internet archive ‘Wayback Machine’, and containing the lifting column DL3, as last updated on 18 January 2001;
–        the product sheet of the lifting column DESKLIFT DL1 from the applicant, published in April 2002, represented as follows:
–        an extract of the applicant’s homepage of 27 November 1999, as obtained from the internet archive ‘Wayback Machine’ and relating to the DESKLINE system.
6        By decision of 13 May 2015, the Invalidity Division of EUIPO upheld the application for a declaration of invalidity of the contested design on the ground that the design was not new within the meaning of Article 5 of Regulation No 6/2002. It based its assessment on the prior design.
7        On 15 July 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the Invalidity Division’s decision.
8        By decision of 21 March 2017 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal. It held that the contested design had to be declared invalid owing to its lack of individual character within the meaning of Article 6(1) of Regulation No 6/2002. More specifically, the Board of Appeal found, first, that the informed user to be taken into account was anyone who habitually purchases electrically operated lifting columns, puts them to their intended use and has become informed on the subject by browsing through catalogues of, or including, electrically operated lifting columns, by visiting the relevant stores or by downloading information from the internet. Second, the Board of Appeal took the view that the freedom of the designer in developing an electrically operated lifting column was limited to the extent that the column must be sufficiently stable to support the table and has to contain an electrical drive motor that can be integrated into it. Third, the Board of Appeal considered that the overall impression on the informed user remained unchanged in view of the main features of the inverted rectangular L-shape. It also stated that the features that influenced the overall impression the most were the inverted L-shape of the lifting column, the rounded edges of the telescopic tubes and the position of the housing, which is placed on top of the telescopic arm. The Board of Appeal therefore considered that, irrespective of the angle from which the contested design is observed, the overall impressions produced by the designs at issue on the informed user are too close for him to consider them to be different for the purposes of Article 6 of Regulation No 6/2002.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
10      EUIPO
contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
11      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 6 of Regulation No 6/2002, read in conjunction with Article 25(1)(b) of that regulation.
12      The applicant complains, in essence, that the Board of Appeal wrongly held that the contested design and the earlier design produced the same overall impression and that consequently the contested design did not have individual character.
13      The applicant puts forward four complaints in support of the single plea in law raised against the contested decision. By its first complaint, it maintains that the Board of Appeal failed to take account of the nature of the products and the industry concerned. By its second complaint, the applicant submits that the Board of Appeal took an incorrect approach to the concept of the informed user. By its third complaint, the applicant criticises the Board of Appeal for holding that the differences between the designs at issue must be obvious in order to produce a different overall impression. By its fourth complaint, the applicant complains that the Board of Appeal attached less importance to certain views of the contested design.
14      EUIPO disputes all the applicant’s arguments.
15      Article 25(1)(b) of Regulation No 6/2002 provides that a Community design may be declared invalid only if it does not fulfil the requirements in Articles 4 to 9 of that regulation.
16      Under Article 4(1) of Regulation No 6/2002, a design is to be protected by a Community design to the extent that it is new and has individual character.
17      It follows from the wording of Article 6(1)(b) of Regulation No 6/2002 that individual character must, in the case of a registered Community design, be assessed in the light of the overall impression that it produces on the informed user. The overall impression produced on the informed user 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 in the assessment of individual character, the degree of freedom of the designer in developing the design is to be taken into consideration.
18      Finally, in accordance with the case-law, the individual character of a design results from an overall impression of difference, or lack of ‘déjà vu’, from the point of view of an informed user in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions (see judgment of 7 November 2013, Budziewska v OHIM — Puma (Bounding feline), T‑666/11, not published, EU:T:2013:584, paragraph 29 and the case-law cited).
Nature of the products and the industrial sector concerned
19      The applicant submits that the Board of Appeal did not take into account the nature of the products and the industry concerned. In that regard, it maintains that, given that the present case concerns electrically operated lifting columns, the market situation for producers of and customers for those specific products is essential in the examination of the individual character of the contested design. Furthermore, the applicant provided the Board of Appeal with ample information showing that electric lifting columns usually consist of vertical extendable tubes and mostly feature a horizontal housing, with the result that the different dimensions of the housing and any possible differences in the diameter of the inner vertical tube which are visible when the lifting column is deployed are significant to the informed user. Lastly, the applicant submits that the Board of Appeal also failed to recognise that electrically operated lifting columns are products intended for furniture manufacturers whose profession consists of selecting different furniture parts.
20      It is apparent from recital 14 of Regulation No 6/2002 that, 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 (judgment of 28 January 2015, Argo Development and Manufacturing v OHIM — Clapbanner, T‑41/14, not published, EU:T:2015:53, paragraph 29 and the case-law cited).
21      In the present case, as regards, first, the nature of the products concerned, the point should be made that the applicant does not dispute either (i) the features common to the designs at issue to which the Board of Appeal drew attention in point 35 of the contested decision –– namely an inverted L-shape, a smooth surface, a telescopic arm consisting in two telescoping tubes with rounded edges, a smaller rectangular plaque positioned at the lower tube of the telescopic arm, the housing on top of the telescopic arm and the rectangular shape of the housing –– or (ii) the differences as regards the housings, the telescopic arms and the colour of the designs at issue, to which the Board of Appeal drew attention in point 36 of the contested decision.
22      As regards, second, the industrial sector concerned, it should be noted that the Board of Appeal held, in points 31, 34 and 39 of the contested decision, that the sector in question is the furniture industry, which is not disputed by the applicant. It should also be noted that the applicant does not put forward anything which makes it possible to ascertain how the sector in question could have modified the Board of Appeal’s assessment.
23      Consequently, the Court confirms the Board of Appeal’s conclusions regarding the nature of the product and the industrial sector concerned.
24      Accordingly, this complaint must be rejected as unfounded.
The informed user
25      The applicant asserts that the Board of Appeal took an incorrect approach to the concept of the informed user. It maintains that the informed user is a furniture manufacturer, whose profession it is to select different furniture parts and whose level of attentiveness is higher than that of an end consumer.
26      With regard to the interpretation of the concept of informed user, it must be held that 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 that product is intended. The qualifier ‘informed’ suggests in addition that, without being a designer or a technical expert, the user is familiar with 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 (see judgment of 15 October 2015, Promarc Technics v OHIM —PIS (Part of door), T‑251/14, not published, EU:T:2015:780, paragraph 42 and the case-law cited).
27      The concept of ‘informed user’ must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks at issue, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the ‘informed user’ 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 (see judgment of 15 October 2015, Part of door, T‑251/14, not published, EU:T:2015:780, paragraph 43 and the case-law cited).
28      In the present case, the Board of Appeal, in point 31 of the contested decision, defined the informed user of an electrically operated lifting column as ‘anyone who habitually purchases such an item, puts it to its intended use and has become informed on the subject by browsing through catalogues of, or including, electrically operated lifting column, visiting the relevant stores, downloading information from the internet, etc’.
29      The Court finds that that definition corresponds to the interpretation of the concept of informed user set out in paragraph 26 above. The Board of Appeal defined the informed user of an ‘electrically operated lifting column, in particular for tables’ as, on the one hand, a person who purchases an electrically operated lifting column for the purpose for which it is intended and, on the other, a person who, without being a designer or a technical expert, has acquired information by browsing through catalogues, carrying out internet searches and visiting stores selling lifting columns and who shows a relatively high degree of attention when he uses such columns. Accordingly, the Board of Appeal correctly described the informed user as a purchaser of lifting columns.
30      As regards the applicant’s criticism of the Board of Appeal concerning the definition of the informed user, it must be held that the definition formulated by the Board of Appeal also encompasses sellers and distributors of electrically operated lifting columns. ‘Electrically operated lifting columns’ are in fact items which may also be intended for sellers and distributors as well as for users who purchase them for their own needs. Therefore, in the light of the principles referred to in paragraph 26 above, the informed user must, in the present case, be held to be both the end consumer and commercial sellers.
31      In any event, the fact that one of the two groups of informed users mentioned above perceives the designs concerned as producing the same overall impression is sufficient for a finding that the contested design lacks individual character (judgment of 9 September 2011, Kwang Yang Motor v OHIM — Honda Giken Kogyo (Internal combustion engine), T‑10/08, not published, EU:T:2011:446, paragraph 23). Accordingly, the fact that the contested decision does not mention professionals among the informed users of ‘electrically operated lifting columns’ does not affect the legality of that decision (judgment of 14 June 2011, Sphere Time v OHIM — Punch (Watch attached to a lanyard), T‑68/10, EU:T:2011:269, paragraphs 56 and 57).
32      In that regard, it must be held that, even if the contested decision did not include professionals within the definition of informed user, it is sufficient to conclude, on the basis of the last-mentioned case-law and in the interests of procedural economy, that the overall impression produced by the design at issue in relation to one of the two groups of informed users is the impression produced on an expert with a high level of attention.
33      The Board of Appeal’s assessment concerning the definition of the informed user is correct and should be confirmed.
34      This complaint must therefore be rejected as unfounded.
The assessment of individual character
35      First, the applicant complains that the Board of Appeal considered that the minor differences between the designs at issue will not be obvious to an informed user. In that regard, the applicant submits, first of all, that there is no legal provision which requires that design differences must be ‘obvious’. It adds, next, that the informed user who knows the existing design corpus will certainly notice the differences between the designs in question, will be able to differentiate between those designs, and will base purchasing decisions on those differences. Lastly, the applicant concludes that the Board of Appeal, by requiring that the differences between the designs at issue must be ‘obvious’, applied a higher threshold than that laid down by Article 6 of Regulation No 6/2002.
36      It should be recalled that, as has been stated in paragraph 18 above, it is settled case-law that the individual character of a design results from an overall impression of difference, or lack of ‘déjà vu’, from the point of view of an informed user in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions (see judgment of 4 July 2017, Murphy v EUIPO — Nike Innovate (Electronic wristband), T‑90/16, not published, EU:T:2017:464, paragraph 43 and the case-law cited).
37      In the present case, the point should be made, as the Board of Appeal noted in points 35 and 36 of the contested decision, that, on the one hand, the appearance and structure of the designs at issue are the same and, on the other, the only differences between the designs at issue are found in the details of the finish and in the thickness of the housing on top of the telescopic arm, the diameter and shape of the telescopic arm and the colour of the designs at issue, as noted in paragraph 21 above.
38      The differences pointed out by the Board of Appeal are not significant and do not affect the functioning or the overall structure of the designs at issue. Therefore, it must be held that the Board of Appeal uses the word ‘obvious’ to convey that the differences are not ‘sufficiently marked or significant’.
39      Accordingly, the Board of Appeal was fully justified in concluding, in point 37 of the contested decision, that the minor differences between the designs at issue will not be obvious to an informed user and that consequently the designs at issue are too similar to be able to produce a different overall impression on the informed user.
40      Consequently, the applicant’s arguments must be rejected.
41      Second, the applicant complains that the Board of Appeal attached less importance to the view from above and the front view of the contested design, thus disregarding some significant design differences. In that regard, according to the applicant, the Board of Appeal found that the differences between the designs at issue were barely perceptible, assuming that, in the context of normal use of the lifting column by the informed user, the housing is rarely visible from the side of the desk. The applicant further argues that the Board of Appeal erred in finding that the visibility of the differences in the designs at issue was limited when the lifting columns were integrated into a desk. Lastly, the applicant submits that electrically operated lifting columns are not end consumer products, but are directed at furniture manufacturers who pay special attention to the designs of products before integrating them into a desk.
42      In the present case, the Court notes first of all, as has been stated in paragraph 39 above, that the designs at issue are too similar to be able to produce a different overall impression on the informed user. The designs at issue therefore do not differ from one another before or after their incorporation in a piece of furniture.
43      It should be borne in mind that recital 12 of Regulation No 6/2002 states that the protection of designs should not be extended to those component parts which are not visible during normal use of a product. In that regard, the Court considers that, in the present case, the contested design is being used normally, at least so far as end users are concerned, when it is incorporated in a table. Given that the housing of the lifting column is rarely visible when the table in which the contested design is incorporated is being used normally, the informed user would be prevented from perceiving the possible features of the design of the housing, which would not be eligible for protection, as stated in recital 12 of Regulation No 6/2002.
44      In any event, as the Board of Appeal correctly stated in point 39 of the contested decision, even when the designs are looked at from all possible angles, the overall impression remains unchanged given the coincidence of the main features of the designs at issue. Features of the designs at issue are the inverted L-shape of the lifting column, the rounded edges of the telescopic tubes and the position of the housing, which is placed on top of the telescopic arm. However, the slight differences examined by the Board of Appeal between the two designs at issue are barely perceptible for the purpose of producing a different overall impression on the informed user.
45      In the light of the foregoing, the present complaint must be rejected as unfounded.
46      Accordingly, the Board of Appeal rightly held that, when the contested design is incorporated in a table, it does not display differences that are sufficiently marked for it to produce a different overall impression on the informed user and to be found to have individual character.
47      The applicant’s single plea in law must therefore be rejected and, consequently, the action must be dismissed in its entirety.
Costs
48      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Linak A/S to pay the costs.
Gratsias
Labucka
Ulloa Rubio
Delivered in open court in Luxembourg on 18 October 2018.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.