62020TO0329_RES
Case T‑329/20
4B Company Srl
v
European Union Intellectual Property Office
Order of the General Court (Second Chamber), 25 October 2021
(Community design – Invalidity proceedings – Registered Community design representing a pendant (jewellery) – Maintenance of the Community design in an amended form – Article 25(6) of Regulation (EC) No 6/2002 – Interest in bringing proceedings – Inadmissibility)
Community designs – Grounds for invalidity – Use of a distinctive sign in a subsequent design – Invalidity of the subsequent design – Maintenance in an amended form – Action brought by the applicant for a declaration of invalidity against the decision to maintain in an amended form – Interest in bringing proceedings – No such interest
(Council Regulation No 6/2002, Art. 25(1)(e), (3) and (6))
(see paragraphs 35, 39, 40, 44-47, 52, 53, 57-61, 63, 66)
Résumé
A was the holder of the right to a Community design representing a pendant in the shape of a heart on which the word ‘pianegonda’ was engraved.
4B Company Srl filed an application for a declaration of invalidity of that design with the European Union Intellectual Property Office (EUIPO), on the ground that in that design an earlier distinctive sign was used. (
1
) That application was based on the use of its EU word mark PIANEGONDA registered for goods falling within the category of jewellery.
In the invalidity proceedings, A requested that the contested design be maintained in an amended form, in accordance with Article 25(6) of Regulation No 6/2002, (
2
) without the engraving of the word corresponding to the word mark PIANEGONDA. 4B Company opposed the maintenance of the design in an amended form on the ground that, in its view, the removal of the mark did not make it possible to retain the identity of the design. That design was subsequently assigned to Deenz Holding Ltd.
The Invalidity Division of EUIPO dismissed the application to have the contested design maintained in an amended form and declared it invalid in its entirety. Following the appeal brought by Deenz Holding, the Board of Appeal of EUIPO declared the contested design invalid in so far as it used the word mark PIANEGONDA and granted the application for maintenance in an amended form.
The Court dismisses the action brought by 4B Company on the ground that it has no interest in bringing proceedings in an application for maintenance of the registration of the contested design, following the annulment of that design.
Findings of the Court
First of all, the Court notes that the system put in place for the registration of Community designs is based on the principle that all applications which satisfy formal requirements are to be entered in the Register of Community designs. It is only following an application for a declaration of invalidity of a Community design which has been registered that that design may be declared invalid, inter alia, if use is made of an earlier distinctive sign, on application by the holder of the right to that sign.
Next, the Court observes that Article 25(6) of Regulation No 6/2002 allows registration of a Community design to be maintained by removing the element vitiated by irregularity. That possibility, as an alternative solution to the invalidity of the design in its entirety, ensures that the sanction is proportionate. The maintenance of the contested design, to the extent to which that maintenance is conditional on a partial disclaimer, is intended both to protect the interests of the holder of the right to that design and those of the holder of the right to the sign the use of which has led to the design being annulled.
Finally, the Court finds that the Invalidity Division ruled on two applications:
– the application for a declaration of invalidity brought by 4B Company, which was upheld;
– the application by the holder of the right to the contested design to maintain it in an amended form, which was dismissed. That part of the decision cannot be regarded as a decision granting an application made by 4B Company.
Therefore, the decision of the Invalidity Division could be the subject of an appeal only by the party whose claims had not been upheld, namely Deenz Holding. The Board of Appeal also acceded to 4B Company’s request. Accordingly, the action before the Court cannot procure any advantage for it.
Furthermore, 4B Company cannot seek annulment of the decision of the Board of Appeal in so far as it upheld the application for the contested design to be maintained in an amended form. To allow such a possibility would amount to allowing 4B Company to interfere in the part of the proceedings concerning the application of the holder of the right to the contested design. By claiming an infringement of Article 25(6) of Regulation No 6/2002, whereas its application for a declaration of invalidity had been based on Article 25(1)(e) of that regulation, 4B Company seeks to alter the subject matter of its application for a declaration of invalidity and the grounds relied on in support of that application.
In addition, the fact that 4B Company would like to have the design declared invalid in its entirety cannot constitute a vested and present interest in having the decision of the Board of Appeal annulled.
Consequently, the Court finds that 4B Company has no interest in having that decision annulled.
(
1
)	Under Article 25(1)(e) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), according to which a Community design is to be declared invalid if, in that design, an earlier distinctive sign is used.
(
2
)	Under Article 25(6) of Regulation No 6/2002, a registered Community design which has been declared invalid pursuant to Article 25(1)(e) of that regulation may be maintained in an amended form, if in that form it complies with the requirements for protection and the identity of the design is retained.