JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
27 February 2020 (*)
(Community design — Invalidity proceedings — Registered Community design representing an item of furniture — Ground for invalidity — No individual character — Disclosure of the earlier design — Proof of disclosure — Article 7 and Article 25(1)(b) of Regulation (EC) No 6/2002)
In Case T‑159/19,
Bog-Fran sp. z o.o. sp.k., established in Warsaw (Poland), represented by M. Mikosza, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Fabryki Mebli “Forte” S.A., established in Ostrów Mazowiecka (Poland), represented by H. Basiński, lawyer,
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 14 January 2019 (Case R 291/2018-3), relating to invalidity proceedings between Bog-Fran and Fabryki Mebli “Forte”,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann (Rapporteur), President, U. Öberg and O. Spineanu-Matei, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 14 March 2019,
having regard to the response of EUIPO lodged at the Court Registry on 12 June 2019,
having regard to the response of the intervener lodged at the Court Registry on 10 June 2019,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 17 September 2013, the intervener, Fabryki Mebli “Forte” S.A., filed 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), an application for registration of a Community design which is represented as follows:
2        The goods to which the contested design was intended to be applied are in Class 6 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended, and correspond to the following description: ‘Furniture’.
3        The contested design was registered as a Community design under the number 001384002-0034 on 17 September 2013 and published in Community Designs Bulletin
No 222/2013 of 21 November 2013.
4        On 14 March 2016, the applicant, Bog-Fran sp. z o.o. sp.k., filed an application, pursuant to Article 52 of Regulation No 6/2002, for a declaration that the contested design was invalid.
5        The ground relied upon in support of the application for a declaration of invalidity was that set out in Article 25(1)(b) of Regulation No 6/2002. The applicant submitted that the contested design was not new and that it lacked individual character for the purposes of Article 4 of Regulation No 6/2002, read in conjunction with Articles 5 and 6 of that regulation.
6        In support of its application for a declaration of invalidity, the applicant submitted the following documents:
–        an extract from a catalogue entitled ‘NABYTKU — Novinka 2008 — WHITE’, containing the following representations of an item of furniture named ‘skrin 2D WH9’, to which it was claimed that the earlier design had been applied:
–        an invoice in Czech dated 14 August 2008 relating to the printing of 25 000 copies of the catalogue referred to above;
–        three invoices, dated 14 August, 4 November and 28 November 2008 respectively, relating to sales of furniture to A JE TO CZ, S.r.o., with confirmation of the receipt of the goods referred to.
7        By decision of 21 December 2017, the Invalidity Division upheld the application for a declaration of invalidity, finding that the contested design did not have the individual character required by Article 6 of Regulation No 6/2002.
8        On 6 February 2018, the intervener filed a notice of appeal, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Invalidity Division.
9        By decision of 14 January 2019 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the appeal and annulled the Invalidity Division’s decision, on the ground that the earlier design had not been made available to the public in accordance with Article 7(1) of Regulation No 6/2002.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        grant the application for a declaration that the contested design is invalid;
–        order EUIPO and the intervener to pay the costs.
11      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility
12      The intervener disputes the admissibility of the action, on the ground that the authority to act that was submitted by the applicant was signed by persons entitled to represent ‘Bog-Fran spółka z ograniczoną odpowiedzialnością sp. k.’, a company established in Poland, and not ‘Bog-Fran sp. z o.o. sp.k.’, which does not exist and cannot, under Polish law, constitute an abbreviation of the name of the abovementioned company.
13      Article 61(4) of Regulation No 6/2002 provides that an action before the Court is to be open to any party to proceedings before the Board of Appeal adversely affected by its decision.
14      In the present case, in the contested decision, the Board of Appeal identified and referred to the applicant, first, by using the name which the applicant has used in the application and, secondly, as being the invalidity applicant with regard to the contested design and the respondent in the appeal before it. Furthermore, on 28 January 2019, EUIPO, in accordance with Article 66 of Regulation No 6/2002, notified the applicant of the contested decision. In addition, it must be stated that the address of the applicant’s company seat that is referred to in the contested decision is the same as that set out in the application and, moreover, as that of the company referred to by the intervener.
15      It cannot therefore be disputed that the present action was brought by a party to proceedings before the Board of Appeal, in accordance with Article 61(4) of Regulation No 6/2002. Consequently, the intervener’s arguments seeking to dispute the admissibility of the present action must be rejected.
Substance
16      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 7(1) of Regulation 6/2002, by which it submits that the Board of Appeal infringed that provision by finding that the evidence submitted did not prove that the earlier design had been made available in accordance with that provision.
17      Article 7(1) of Regulation No 6/2002 provides that, for the purpose of applying Articles 5 and 6 of that regulation, a design is to be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date of filing of the application for registration, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union. The design is not, however, to be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.
18      Under Article 7(2)(b) of Regulation No 6/2002, a disclosure is not to be taken into consideration if a design for which protection is claimed has been made available to the public during the 12-month period preceding the date of filing of the application or, if a priority is claimed, the date of priority.
19      According to the case-law, a design is therefore deemed to have been made available once the party asserting it has proved the events constituting disclosure. In order to rebut that presumption, the party disputing disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those events from becoming known in the normal course of business to the circles specialised in the sector concerned (judgment of 21 May 2015, Senz Technologies v OHIM — Impliva (Umbrellas), T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 26).
20      In order to establish that there has been disclosure of an earlier design, it is thus necessary to carry out a two-stage analysis, consisting in examining, in the first place, whether the evidence submitted in the application for a declaration of invalidity shows, first, that there have been events constituting disclosure of a design and, secondly, that that disclosure occurred before the date of filing or priority of the contested design and, in the second place, if the holder of the contested design has claimed the contrary, whether those events could reasonably have become known in the normal course of business to the circles specialised in the sector concerned operating within the European Union, failing which a disclosure will be considered to have no effect and will not be taken into account (judgment of 13 June 2019, Visi/one v EUIPO — EasyFix (Document holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 24).
21      Commission Regulation (EC) No 2245/2002 of 21 October 2002 laying down detailed rules for the application of Regulation No 6/2002 (OJ 2002 L 341, p. 28) does not contain any details as to the evidence of disclosure of the earlier design that has to be provided by the applicant for a declaration of invalidity. In particular, Article 28(1)(b)(v) of Regulation No 2245/2002 merely requires that where the application for a declaration of invalidity is based on, inter alia, the lack of individual character of the Community design for which protection is claimed, it must contain the indication and the reproduction of the design held by the applicant for a declaration of invalidity that could form an obstacle to the individual character of the Community design for which protection is claimed, as well as documents proving the previous disclosure of the earlier design. Moreover, neither Regulation No 6/2002 nor Regulation No 2245/2002 specifies a compulsory form of evidence that the applicant for a declaration of invalidity must provide in order to prove that there was disclosure of its design before the date of filing of the application for registration of the design for which protection is claimed. Thus, Article 28(1)(b)(v) and (vi) of Regulation No 2245/2002 merely requires that the application for a declaration of invalidity is to contain ‘documents proving the existence [of the earlier design]’ and ‘an indication of the facts, evidence and arguments submitted in support of [the grounds on which that application is based]’. Similarly, Article 65(1) of Regulation No 6/2002 provides only a non-exhaustive list of possible measures of inquiry in proceedings before EUIPO. It follows that the applicant for a declaration of invalidity is free to choose the evidence which it considers useful to submit to EUIPO in support of its application for a declaration of invalidity (see judgment of 17 May 2018, Basil v EUIPO — Artex (Baskets adapted for cycles), T‑760/16, EU:T:2018:277, paragraph 41 and the case-law cited).
22      Furthermore, the disclosure of an earlier design cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual disclosure of the earlier design on the market. In addition, the items of evidence provided by the applicant for a declaration of invalidity must be assessed in relation to each other. Although some of those items of evidence might be insufficient on their own to prove the disclosure of an earlier design, the fact remains that, when combined or read in conjunction with other documents or information, they may nevertheless contribute to establishing disclosure. Lastly, in order to assess the evidential value of a document, it is necessary to verify the plausibility and the accuracy of the information which that document contains. It is necessary to take account of, inter alia, the origin of the document, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears to be sound and reliable (see judgment of 17 May 2018, Baskets adapted for cycles, T‑760/16, EU:T:2018:277, paragraph 42 and the case-law cited).
23      In the present case, the Board of Appeal based the rejection of the applicant’s application for a declaration of invalidity on the fact that the applicant had not provided proof that the earlier design had been made available to the public, within the meaning of Article 7(1) of Regulation No 6/2002.
24      It must therefore be ascertained whether the evidence submitted by the applicant before EUIPO, taken as a whole, was capable of proving to the requisite legal standard that the earlier design had been made available, within the meaning of Article 7(1) of Regulation No 6/2002.
25      In the present case, it is common ground that the applicant submitted the following documents before the Invalidity Division and the Board of Appeal as evidence of disclosure:
–        an extract from a catalogue entitled ‘NABYTKU — Novinka 2008 — WHITE’, containing the following representations of an item of furniture named ‘skrin 2D WH9’:
–        an invoice in Czech dated 14 August 2008 relating to the printing of 25 000 copies of the catalogue referred to above;
–        three invoices, dated 14 August, 4 November and 28 November 2008 respectively, relating to sales of furniture to the company A JE TO CZ, S.r.o., including confirmation of the receipt of the goods.
26      The Board of Appeal pointed out that it was impossible, without any further more specific information, to ascertain that the catalogue, from which the extract provided by the applicant came, had become public before the filing date of the contested design and that that design had become known to the circles specialised in the sector concerned. It added that, in any case, none of those pages from the catalogue contained any specific proof of the existence and distribution of those catalogues, as it was impossible to determine when, where and to what extent the catalogues had been distributed and whether they had reached the specialist circles. Furthermore, it pointed out that the invoice relating to the printing of the catalogue in question concerned the printing of that catalogue, but not its distribution, and that only one of the three invoices relating to the sale of furniture which had been provided contained a reference to the product code for the item of furniture to which the earlier design had been applied.
27      The applicant submits that, in the light of the large number of copies that were printed of the catalogue from which it produced an extract, namely 25 000, at least some of those catalogues should be regarded as having gone to distributors, furniture stores, competing undertakings, furniture designers and other representatives of the furniture industry. It adds that, taken together, the extract from that catalogue, the invoice relating to the printing of that catalogue and the invoices relating to sales of furniture prove that the item of furniture to which the earlier design has been applied has been promoted and placed on the market.
28      The intervener claims that the extract from the catalogue submitted by the intervener and the invoices relating, respectively, to the printing of that catalogue and to sales of furniture to which the earlier design was applied, are not authentic and could have been prepared solely for the purposes of the action. In particular, it submits that computer technology, as it currently stands, makes it easily possible to fabricate such documents and that the quality of the extract from the catalogue submitted as an Annex to the application is superior to that of the extract submitted in the course of the proceedings before EUIPO.
29      It must be held that those claims, which have not been substantiated, are not capable of casting doubt on the authenticity of the extract from the catalogue and the invoices submitted by the applicant and that, consequently, the existence of that catalogue and also the printing in 2008 of 25 000 copies of that catalogue and the sale on 14 August 2008 of furniture to which the earlier design has been applied have been proved to the requisite legal standard.
30      As regards whether that evidence proves that there have been events constituting disclosure for the purposes of the case-law referred to in paragraph 19 above, it must be borne in mind, as far as the catalogue is concerned, that the title of the extract submitted by the applicant contains a reference to the year 2008 and that the invoice relating to the printing of 25 000 copies of that catalogue is dated 14 August 2008. However, as the Board of Appeal rightly pointed out, the applicant has not established with certainty that that catalogue had been published or distributed before the filing date of the contested design.
31      As has been stated in paragraph 22 above, the disclosure of an earlier design cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual disclosure of the earlier design on the market.
32      Consequently, it cannot be presumed, although it is likely, that the catalogue was distributed after 25 000 copies thereof had been printed.
33      However, the printing of 25 000 copies of a catalogue suggests that that printing took place with a view to distributing that catalogue. Consequently, although the extract from the catalogue submitted by the applicant is insufficient, on its own, to prove the disclosure of an earlier design, that does not mean, in accordance with the case-law referred to in paragraph 22 above, that, when combined or read in conjunction with the other items of evidence put forward by the applicant, that extract from the catalogue cannot contribute towards establishing the disclosure of the earlier design.
34      As regards the three invoices for the sale of furniture submitted by the applicant, which contain a confirmation of the receipt of the goods, the Board of Appeal rightly pointed out, a finding which the applicant does not dispute, that they were addressed to the same undertaking and that only one of those invoices referred to the product code for the item of furniture to which the earlier design had been applied. That invoice is dated 14 August 2008.
35      As was, in essence, rightly pointed out by the Board of Appeal, that sales invoice shows that the earlier design was used in trade, within the meaning of Article 7(1) of Regulation No 6/2002.
36      Consequently, that invoice proves an event constituting disclosure of the earlier design, consisting of the sale, to an undertaking, of furniture to which that design had been applied and the actual receipt of that furniture by that undertaking.
37      In that regard, EUIPO’s doubts as to the applicant’s independence with regard to the undertaking to which the invoice was addressed, on account of the information on a stamp that that company is a wholesaler of the applicant, are not substantiated and cannot therefore call into question the conclusion drawn in paragraph 35 above.
38      Furthermore, that event constituting disclosure predates by more than twelve months the filing of the application for registration of the contested design on 17 September 2013.
39      In the light of the items of evidence submitted by the applicant, which must, according to the case-law referred to in paragraph 22 above, be assessed in relation to each other, it must be held that the applicant has proved events constituting the disclosure of the earlier design, disclosure which occurred before the date of filing of the contested design, in accordance with the case-law referred to in paragraphs 19 and 20 above.
40      As is apparent from that case-law, where such events are proved, it gives rise to the presumption that the earlier design has been made available, for the purposes of Article 7(1) of Regulation No 6/2002, save where the intervener establishes that the circumstances of the case could reasonably prevent the events constituting the disclosure in question from becoming known in the normal course of business to the circles specialised in the sector concerned.
41      It follows that, in the present case, since the applicant had proved the veracity of the events constituting disclosure of the earlier design, it was for the Board of Appeal to presume, in accordance with the case-law referred to in paragraphs 19 and 20 above, that that design had been made available before, if appropriate, examining the intervener’s arguments alleging that the events constituting the disclosure in question were not known to the circles specialised in the sector concerned.
42      However, by finding, on the basis of the evidence submitted by the applicant, that the earlier design had not been made available, for the purposes of Article 7(1) of Regulation No 6/2002, the Board of Appeal erred in its assessment of that evidence and misapplied that provision.
43      On that ground, the contested decision must be annulled, without it being necessary to rule on the arguments of EUIPO and the intervener relating to the lack of knowledge, on the part of the circles specialised in the sector concerned, of the events constituting disclosure at issue or the admissibility, which the intervener disputes, of some items of evidence that the applicant submitted for the first time before the Court.
44      As regards the applicant’s head of claim that the Court should grant the application for a declaration that the contested design is invalid, it must be pointed out that, by that head of claim, the applicant has made an application for alteration, under Article 61(3) of Regulation No 6/2002, requesting that the Court adopt the decision that the Board of Appeal should have taken (see, to that effect, judgment of 7 February 2018, Şölen Çikolata Gıda Sanayi ve Ticaret v EUIPO — Zaharieva (Display box for cornets), T‑793/16, not published, EU:T:2018:72, paragraph 85 and the case-law cited).
45      In that regard, it must be borne in mind that the power of the Court to alter decisions pursuant to Article 61(3) of Regulation No 6/2002 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (see judgment of 7 February 2018, Display box for cornets, T‑793/16, not published, EU:T:2018:72, paragraph 86 and the case-law cited).
46      In the present case, the Court cannot assess those matters, since the Board of Appeal has not, inter alia, adopted a position either on the arguments by which the intervener maintained that the events constituting disclosure that were invoked by the applicant could not reasonably have come to the knowledge of the circles specialised in the sector concerned or on the individual character of the contested design.
47      In those circumstances, it must be held that the conditions for the exercise of the Court’s power to alter decisions pursuant to Article 61(3) of Regulation No 6/2002 are not satisfied.
48      Consequently, the applicant’s head of claim that the Court should grant the application for a declaration that the contested design is invalid must be rejected.
Costs
49      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 EUIPO has essentially been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
50      Pursuant to Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Annuls the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 January 2019 (Case R 291/2018-3), relating to invalidity proceedings between Bog-Fran sp. z o.o. sp.k. and Fabryki Mebli “Forte” S.A.;
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO to bear its own costs and to pay those incurred by Bog-Fran;
4.      Orders Fabryki Mebli “Forte” to bear its own costs.
Spielmann
Öberg
Spineanu-Matei
Delivered in open court in Luxembourg on 27 February 2020.
E. Coulon
M. J. Costeira
Registrar
President
*      Language of the case: English.