JUDGMENT OF THE GENERAL COURT (Second Chamber)
21 February 2024 (*)
(Community design – Invalidity proceedings – Registered Community design representing toilet units (part of – ) – Earlier Community design – Grounds for invalidity – Individual character – Different overall impression – Degree of freedom of the designer – Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002)
In Case T‑82/23,
Nextrend GmbH, established in Flörsheim am Main (Germany), represented by T. Weiland and C. Corbet, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez, acting as Agent,
defendant,
the other parties to the proceedings before the Board of Appeal of EUIPO, interveners before the General Court, being
Xiamen Axent Corporation Ltd, established in Haicang (China),
Axent Switzerland AG, established in Rapperswil-Jona (Switzerland),
represented by M. Ring and A. Wan, lawyers,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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
1        By its action based on Article 263 TFEU, the applicant, Nextrend GmbH, seeks, in essence, annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 December 2022 (Case
R 1604/2021-3) (‘the contested decision’).
Background to the dispute
2        On 6 November 2019, the applicant filed with EUIPO an application for a declaration of invalidity relating to the registered Community design following an application filed by the interveners, Xiamen Axent Corporation Ltd and Axent Switzerland AG, on 9 September 2015, claiming priority as of 9 March 2015. The contested design is represented in the following views:
View 1.1
View 1.2
View 1.3
4
View 1.5
View 1.6
3        The products for which the design, the invalidity of which was sought, was intended to be used fell within Class 32(2) of the Locarno Agreement of 8 October 1968 Establishing an International Classification for Industrial Designs, as amended, and corresponded to the following description: ‘Toilet units (part of – )’.
4        The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), read in conjunction with Article 6 of that regulation.
5        In the application for a declaration of invalidity, the applicant claimed that the contested design lacked individual character, since it did not produce on the informed user a different overall impression from that of earlier design No 2167882-0002 (‘earlier design D1’), which is represented in the following views:
View 2.1
View 2.2
View 2.3
View 2.4
View 2.5
View 2.6
View 2.7
6        On 17 November 2020, in its observations in response to the interveners’ observations, the applicant also claimed that the contested design lacked individual character in so far as it did not produce on the informed user an overall impression different from that produced by the earlier German design DM/073 640-5, which was registered on 21 May 2010 and published on 13 November 2011.
7        On 19 July 2021, the Invalidity Division rejected the application for a declaration of invalidity.
8        On 17 September 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Invalidity Division. In addition, in the statement of grounds of 19 November 2021, it claimed that the contested design lacked individual character in relation to earlier design D1 and German design DM/073 640-6. In its reply of 1 April 2022 to the interveners’ submissions, it argued that the reference to design DM/073 640-5 was an obvious typing error, given that the views represented showed design DM/073 640-6.
9        By the contested decision, the Board of Appeal dismissed the appeal. In essence, it found that, considering the freedom of the designer, which was limited with respect to the shape of a toilet lid, the differences between the designs were sufficient to consider that the contested design produced a different overall impression on the informed user than that produced by the earlier design D1. As regards the German designs DM/073 640-5 and DM/073 640-6, which were not submitted in the application for a declaration of invalidity, it took the view that they could not be taken into consideration, since they would extend the subject matter of the proceedings. Lastly, the Board of Appeal found that, since the contested design produced a different overall impression on informed users, it also had to be considered new, pursuant to Article 5 of Regulation No 6/2002.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        declare the contested Community design invalid;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs if an oral hearing is convened.
12      The interveners contend, in essence, that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred before the General Court and before the Board of Appeal.
Law
Substance
13      The applicant relies on three pleas in law, alleging, first, infringement of the obligation to state reasons laid down in Article 62 of Regulation No 6/2002, second, infringement of Article 63(2) of that regulation, read in conjunction with Article 53(2) thereof, and, third, infringement of Article 25(1)(b), read in conjunction with Article 6(2)(b), of that regulation.
The first plea, alleging infringement of the obligation to state reasons, laid down in Article 62 of Regulation No 6/2002
14      The applicant submits that the Board of Appeal ignored its arguments without giving any reason, in finding that the toilets were standardised with respect to their openings and that the freedom of the designer was very limited in that respect. It claims to have shown that the informed user was aware of the variety of shapes of toilet lids. The fact that the toilet lid is intended to fit the toilet seat does not mean that its shape must match exactly that of the toilet seat. The interveners have not submitted any evidence in support of the claim that the shape of toilet lids was standardised. Nor did the Board of Appeal give any reason for finding that the presence of a rectangular recess at the back of the toilet lid was a ‘rather unusual fixation’, even though the applicant had submitted a large number of earlier designs showing such a recess. Lastly, the Board of Appeal limited its assessment of the overall impression produced by the designs at issue to the criterion of the freedom of the designer, without taking into consideration the perspective of the informed user in the context of normal use of the product. It took account of minimal differences, notwithstanding its claim that the informed user would not pay attention to the details.
15      EUIPO and the interveners dispute the applicant’s claims.
16      Under Article 62 of Regulation No 6/2002, decisions of EUIPO have to state the reasons on which they are based. That obligation to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally, and its purpose is twofold: first, to enable the parties concerned to ascertain the reasons for the measure taken in order to defend their rights and, second, to enable the European Union Courts to exercise their power to review the legality of the decision. The Boards of Appeal cannot, however, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see 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 15 and the case-law cited).
17      Furthermore, it must be borne in mind that, according to settled case-law, the obligation to state reasons is an essential procedural requirement, as distinct from the question whether the reasons given are well
founded, which goes to the substantive legality of the contested measure (see judgment of 22 May 2012, Evropaïki Dynamiki v Commission, T‑17/09, not published, EU:T:2012:243, paragraph 40 and the case-law cited).
18      As regards, in the first place, the applicant’s criticism of the inadequacy of the statement of reasons for the contested decision as regards the criterion of the degree of freedom of the designer, it is clear that that decision contains an adequate statement of reasons in that regard. It should be noted that, first of all, in paragraph 36 of the contested decision, the Board of Appeal stated that the degree of freedom of the designer in developing the design was established, inter alia, by the constraints imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product, and that those result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned.
19      Next, the Board of Appeal stated, in paragraphs 38 and 39 of the contested decision, first, that the toilets had a more or less standardised form, especially with respect to their upper part. Second, it referred to the technical restrictions associated with a toilet lid, concluding that the freedom of the designer was limited, whether in developing a design for toilet seats or toilet lids (see paragraphs 38, 39 and 50 of the contested decision). Moreover, the Board of Appeal stated that it did not wish to depart from the findings in the judgment of 21 June 2017, Kneidinger v EUIPO –
Topseat International (Toilet lid) (T‑286/16, not published, EU:T:2017:411), according to which the freedom of a design for toilet lids was limited.
20      Lastly, as regards the applicant’s claims relating to the variety of toilet lids’ shapes, relied on before EUIPO, in addition to the fact that, as noted in paragraph 16 above, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them, the Court finds that, in paragraphs 34 and 35 of the contested decision, the Board of Appeal, after defining the informed user, stated that he or she had knowledge of toilet seats, on the basis of inspections of advertising materials and catalogues, and on account of visits to sales outlets or trade fairs.
21      In the second place, as regards the failure to refer to the reasons why the Board of Appeal found, in paragraph 44 of the contested decision, that the presence of a rectangular recess at the back of the toilet lid constituted a ‘rather unusual fixation’, it should be noted that it is apparent from that paragraph of the contested decision that that is the opinion of the Board of Appeal. Furthermore, if, as the applicant submits, that statement of reasons does not rule on the evidence submitted in that regard by the applicant before EUIPO, it is sufficient to state that, as noted in paragraph 16 above, the statement of reasons does not have to be exhaustive. In so far as the applicant’s criticism relates to the consequences to be drawn from an alleged failure to take into consideration certain items of evidence submitted before EUIPO, that criticism will be analysed in the context of the third plea in law (see paragraph 58 below).
22      In the third place, as regards the applicant’s other criticisms identified in paragraph 14 above, it should be noted that the statement of reasons for the differences between the designs under comparison, as is apparent in particular from paragraphs 41 to 50 of the contested decision, is sufficient in the light of the case-law referred to in paragraph 16 above. In particular, the Board of Appeal referred to specific elements relating to the overall impression produced by the contested designs, the taking into account of the informed user, and the ‘normal use of the product according to its purpose’, which is the subject of the applicant’s criticisms. Any inconsistencies, criticised by the applicant in the context of the alleged consideration of details, form part of an analysis of the merits of the grounds.
23      In the light of the foregoing, the applicant’s plea alleging infringement of the obligation to state reasons must be rejected.
The second plea, alleging infringement of Article 63(2) of Regulation No 6/2002, read in conjunction with Article 53(2) of that regulation
24      The applicant submits that the failure to take into account the ‘earlier design DM 640’ constitutes an infringement of Article 63(2) of Regulation No 6/2002, read in conjunction with Article 53(2) of that regulation. In that context, it asks the Court to reconsider its recent ‘restrictive’ interpretation of Article 63(2) of Regulation No 6/2002 and Article 28(1)(b)(v) of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Regulation No 6/2002 (OJ 2002 L 341, p. 28), set out in the judgment of 27 April 2022, Group Nivelles v EUIPO –
Easy Sanitary Solutions (Shower drainage channel) (T‑327/20, EU:T:2022:263), according to which a design which was not mentioned in the application for a declaration of invalidity but submitted at a later stage of the proceedings changes the subject matter of the proceedings and must be rejected. It submits that that case-law would result in the perpetuation, for formal reasons, of invalid
registered Community designs.
25      EUIPO and the interveners dispute the applicant’s claims.
26      As a preliminary point, it should be noted that it is common ground between the parties that German designs DM/073 640-5 and DM/073 640-6 were not relied on or represented at the time the application for a declaration of invalidity was filed, but only on 17 November 2020 in the applicant’s observations in response to the interveners’ observations.
27      Next, it follows from paragraphs 25 to 29 of the contested decision that the Board of Appeal found, in essence, that the application for a declaration of invalidity defined the subject matter of the proceedings as resulting, on the one hand, from the contested design and, on the other hand, from the claimed earlier designs. It was therefore no longer possible, after the filing of the application, to introduce into the proceedings further earlier designs which might be prejudicial to the novelty or individual character of the design. According to the Board of Appeal, Article 63(2) of Regulation No 6/2002 did not preclude such an interpretation, since that provision did not allow the applicant to extend the subject matter of the proceedings.
28      In that regard, it is apparent from the case-law that Article 52(2) of Regulation No 6/2002 provides that an application for a declaration of invalidity must be submitted in writing and must state the reasons on which it is based. Article 28(1)(b)(i) and (vi) of Regulation No 2245/2002 provides that an application for a declaration of invalidity must contain a statement of the grounds on which the application for a declaration of invalidity is based and an indication of the facts, evidence and arguments submitted in support of those grounds. Article 28(1)(b)(v) of that regulation provides, in addition, that where the application for a declaration of invalidity is based on the lack of novelty and individual character of the registered Community design, it must contain the indication and the reproduction of the earlier designs that could form an obstacle to the novelty or individual character of the registered Community design, as well as documents proving the existence of those earlier designs (judgment of 27 April 2022, Shower drainage channel, T‑327/20, EU:T:2022:263, paragraph 49).
29      In paragraph 53 of the judgment of 27 April 2022, Shower drainage channel
(T‑327/20, EU:T:2022:263), the Court found that the proper conduct of the proceedings and the preservation of the legitimate interest of the holder of the contested design in not being exposed to a dispute the subject matter of which is in constant change preclude an applicant from relying, at will, on other earlier designs in the course of the invalidity proceedings. For that reason, compliance with Article 28(1)(b)(v) of Regulation No 2245/2002 is a condition of admissibility of the application for a declaration of invalidity under Article 30(1) of that regulation.
30      As is apparent from paragraphs 57 to 59 of the judgment of 27 April 2022, Shower drainage channel (T‑327/20, EU:T:2022:263), the discretion conferred on EUIPO by Article 63(2) of Regulation No 6/2002 as regards taking into account ‘facts or evidence which are not submitted in due time by the parties concerned’ can apply only to the ‘facts [and] evidence’ referred to in Article 28(1)(b)(vi) of Regulation No 2245/2002, and not to the ‘indication and the reproduction of the prior designs’ required under Article 28(1)(b)(v) of that regulation. In particular, Article 63(2) of Regulation No 6/2002 does not apply to the issue of identifying the earlier design.
31      The applicant’s arguments seeking to call into question the case-law referred to in paragraphs 28 to 30 above cannot be upheld.
32      In the first place, contrary to what the applicant claims, Article 53(2) of Regulation No 6/2002, read in conjunction with Article 63(2) of that regulation, cannot be interpreted as allowing a party to respond ‘as often as necessary’ to the arguments of the other parties to the proceedings before EUIPO itself by relying on additional earlier designs which were not referred to in the application for a declaration of invalidity. Although Article 63(2) of Regulation No 6/2002 allows additional evidence to be taken into account, such as a more precise representation or proof of publication of a design already relied on in the application for a declaration of invalidity, it does not, however, allow the legal framework of that application to be expanded by the production of completely new evidence, by allowing the applicant to base that application on other earlier designs, since such a process would alter the subject matter of the dispute, in addition to the fact that it would prolong the length of the proceedings (judgment of 27 April 2022, Shower drainage channel, T‑327/20, EU:T:2022:263, paragraph 60). EUIPO and the interveners are correct in arguing before the General Court that if an applicant for a declaration of invalidity could continue to introduce new grounds for invalidity or new earlier designs during the course of the invalidity proceedings before EUIPO, it could unduly prolong those proceedings, thereby impeding the economic activity of the proprietor of the contested design. The proper conduct of the proceedings and the preservation of the legitimate interest of that holder in not being exposed to a dispute the subject matter of which is in constant change preclude the abovementioned interpretation proposed by the applicant.
33      In the second place, that conclusion is not controverted by the applicant’s argument based on Article 52(3) of Regulation No 6/2002. The applicant submits that that provision prevents the applicant for a declaration of invalidity from bringing other invalidity proceedings having the same subject matter and cause of action, which, taken together with the other provisions referred to in paragraph 32 above, and with Article 91(1) of Regulation No 6/2002 relating to specific rules on related actions, means relying on all the grounds for invalidity in a single set of proceedings on grounds of procedural efficiency.
34      In that regard, it should be borne in mind that, under Article 52(3) of Regulation No 6/2002, an application for a declaration of invalidity is inadmissible if an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on by a Community design court and the resulting decision
has acquired the force
of res judicata.
35      First of all, it should be noted that the constraints imposed when an application for a declaration of invalidity is filed are by no means unusual in the context of legal proceedings, including where such an application is made in response to an action for infringement. It is for the party applying for a declaration of invalidity to define the subject matter of the dispute at the initial stage, by submitting all the earlier designs on which it intends to rely.
36      Next, the applicant’s claim based on Article 52(3) of Regulation No 6/2002 is ineffective because, in the present case, the applicant has in no way relied on a decision of a Community design court having the same subject matter and the same cause of action and which has acquired the force of res judicata.
37      Lastly, as regards the applicant’s claim that, where a decision rejecting an application for a declaration of invalidity has acquired the force of res judicata, the holder of the contested design must have legal certainty as to its validity, suffice it to note that the force of res judicata thus acquired does not preclude that design from being challenged by a third party on the basis of other, earlier rights.
38      In those circumstances, and without it being necessary to rule on the plea of inadmissibility put forward by the interveners, to the effect that the earlier design put forward in their pleadings of 17 November 2020 was also inadmissible because it was not identifiable, the applicant’s second plea must be rejected.
The third plea, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6(1)(b) of that regulation
39      The applicant’s arguments consist, in essence, of three parts, concerning, first, the informed user, second, the degree of freedom of the designer and, third, the assessment of the individual character of the contested design. According to the applicant, the Board of Appeal disregarded the applicable legal framework as regards the perspective of the informed user and his or her knowledge of existing designs. It based its decision on the existence of a restricted degree of freedom of the designer, although the applicant had presented a wide variety of designs of toilet lids showing the contrary. Lastly, according to the applicant, the contested design and the earlier design D1 produced the same overall impression, with the result that the former lacked individual character. The Board of Appeal limited its assessment of the overall impression produced by the designs to minimal differences, notwithstanding the fact that it had upheld the Invalidity Division’s findings that the restrictions of the designer’s freedom did not apply to the overall shape of the lid and its other features.
40      EUIPO and the interveners dispute the applicant’s claims.
–       The informed user
41      With regard to the interpretation of the concept of ‘informed user’, the Court finds 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 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 or her interest in the products concerned, shows a relatively high degree of attention when he uses them (see judgment of 21 June 2017, Toilet lid, T‑286/16, not published, EU:T:2017:411, paragraph 19 and the case-law cited).
42      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 in conflict, 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 or her personal experience or his or her extensive knowledge of the sector in question (see judgment of 21 June 2017, Toilet lid, T‑286/16, not published, EU:T:2017:411, paragraph 20 and the case-law cited).
43      In the present case, in paragraphs 34 and 35 of the contested decision, the Board of Appeal, after referring to the relevant case-law, stated that the designs at issue concerned toilet seats and that the informed user knew about toilet seats. According to the applicant, the informed user had obtained his or her knowledge by consulting advertising materials and catalogues, and by visiting sales outlets or trade fairs.
44      The applicant submits that the Board of Appeal erred in limiting the knowledge of an informed user to the elements referred to in paragraph 35 of the contested decision (knowledge obtained by consulting advertising materials and catalogues, and by visiting sales outlets or trade fairs), whereas it ought to have taken into consideration the numerous examples of pre-existing designs produced by the applicant. If the Board of Appeal had taken those factors into consideration, it would have found that the informed user was aware of a wide variety of shapes of toilet lids and a wide variety of positions and shapes of single knobs on the sides of the lids. Furthermore, according to the applicant, the Board of Appeal did not determine the perspective of the informed user in the context of normal use of the product in which the contested design was incorporated, since that user essentially perceives the front view, the view from above and the views slightly from the sides of toilet lids.
45      In that regard, contrary to the applicant’s assertions, the Board of Appeal’s approach cannot be regarded as ‘restrictive’. First, in paragraph 34 of the contested decision, referring to the relevant case-law, the Board of Appeal observed that the informed user possessed a certain degree of knowledge of the different designs in the sector concerned and, because of his or her interest in the products concerned, displayed a relatively high degree of attention. Thus, the Board of Appeal did not fail to take into consideration the fact that the informed user knew about different models of toilet lids. Second, it is not apparent from the considerations set out in paragraph 35 of the contested decision, concerning the situations in which the informed user may have acquired knowledge of the sector concerned, that the Board of Appeal excluded the possibility that that user might have knowledge of the examples of designs submitted by the applicant during the administrative procedure before EUIPO. Lastly, it is apparent from the part of the contested decision relating to the overall impression that the Board of Appeal took account of the situations of normal use of the product, in which the contested design was incorporated, when examining the perception of the informed user (see paragraphs 63 and 64 below).
46      In those circumstances, the applicant’s claims that the Board of Appeal excessively limited the concept of ‘informed user’ must be rejected.
–       The degree of freedom of the designer
47      It is apparent from the case-law that the designer’s degree of freedom in developing his or her design is established, inter alia, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (see judgment of 21 June 2017, Toilet lid, T‑286/16, not published, EU:T:2017:411, paragraph 25 and the case-law cited).
48      Accordingly, the greater the designer’s freedom in developing the design, the less likely it is that minor differences between the designs at issue will be sufficient to produce different overall impressions on an informed user. Conversely, the more the designer’s freedom in developing the design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce different overall impressions on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs that do not have significant differences produce the same overall impression on an informed user (see judgment of 21 June 2017, Toilet lid, T‑286/16, not published, EU:T:2017:411, paragraph 26 and the case-law cited).
49      The applicant submits that the Board of Appeal’s findings that ‘toilets [were] standardised with respect to their openings’ and that ‘the freedom of the designer [was] very limited with this respect’ were not in line with the existing designs. The Board of Appeal, by stating that ‘possible differences in other aspects, which [were] a pure aesthetic choice of the designer, [had] a bigger impact’ in the overall impression of the contested design, did not distinguish between features whose shape was due to their technical function and the other features. The designer remains free to determine the shape of the toilet lid, its dimensions, its thickness and, where appropriate, the position of any knobs.
50      In the present case, as is apparent from paragraph 19 above, the Board of Appeal defined the freedom of the designer as being limited as regards toilet seats and lids. To that end, it rightly referred both to the constraints of the overall shape and the use of the products incorporating the designs at issue, and to the relevant case-law. It is apparent from paragraph 27 of the judgment of 21 June 2017, Toilet lid
(T‑286/16, not published, EU:T:2017:411), that the degree of freedom of a designer of a toilet lid is limited to the view of the lid since the external shape is dictated by the dimensions of the toilet bowl and by the technical function, namely to cover the seat of the bowl.
51      It is true that the applicant submitted to EUIPO a certain variety of shapes of toilet lids. However, the fact that there may be variants of lids of asymmetrical or extravagant shape does not preclude the Board of Appeal’s findings which, taking into account technical functions and constraints, conclude that there is a limitation of the degree of freedom of the designer, from which it is apparent that minor aspects, including those of a purely aesthetic choice, have a greater impact.
52      Furthermore, it must be stated that even the examples, submitted by the applicant before the adjudicating bodies of EUIPO, reproduce on numerous occasions the typical shape of toilet lids, namely that with, in addition to a straight rear, two parallel straight sides joining in the middle forming a type of curve or semicircle, which constitutes an additional indication confirming the restrictions imposed by the technical function. Furthermore, during the administrative proceedings before EUIPO, in particular in paragraph 2.2 of its pleadings setting out the grounds of the application for a declaration of invalidity of 11 June 2019, the applicant itself had also accepted the existence of a certain limitation of the designer’s freedom in that context, while taking the view that toilet lids could have different shapes.
53      In those circumstances, the applicant’s claims that the Board of Appeal made an error of assessment in defining the degree of freedom of the designer must be rejected.
–       Assessment of individual character
54      According to the applicant, the contested design and the earlier design D1 produced the same overall impression, with the result that the former lacked individual character (see paragraph 39 above).
55      In that regard, the individual character of a design results from an overall impression of difference, or lack of ‘déjà vu’, from the point of view of the informed user, in relation to the earlier design relied on, 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 (judgment of 21 April 2021, Bibita Group v EUIPO – Benkomers (Beverage bottles), T‑326/20, EU:T:2021:208, paragraph 42).
56      The comparison of the overall impressions produced by the designs in conflict must be synthetic and may not be limited to an analytic comparison of a list of similarities and differences. That comparison must take as a basis the characteristics disclosed of the contested design and must relate solely to the characteristics protected, without taking account of the characteristics, in particular technical features, excluded from the protection (see, to that effect, judgment of 27 April 2022, Shower drainage channel, T‑327/20, EU:T:2022:263, paragraph 114 and the case-law cited).
57      The Board of Appeal found, first of all, that certain coincidences between the designs at issue, as regards the movable part of toilet lids, mainly due to the fact that the toilets were standardised with respect to their openings and that the freedom of the designer was very limited, did not lead to the conclusion that there was the same overall impression. Consequently, any differences in other aspects, which were a purely aesthetic choice of the designer, had, in its view, a greater impact. Next, it highlighted the presence of a rectangular recess at the back of the toilet lid and a fixed rear rectangular cover to the toilet lid, constituting two differences which were not insignificant and would not be overlooked. Lastly, the Board of Appeal further pointed to the existence of three other differences, namely:
–        the presence of a single control knob in the contested design, compared to the two knobs included on both side edges of the earlier design;
–        the fact that the contested design’s knob was of the same thickness and its shape matched the curvature of the rear edge of the toilet lid, while the lateral knobs of the earlier design were smaller and were not placed at the very end of the rear curvature of the toilet lid;
–        the difference in the rear edges of the lids: while the rear edge of the contested design had a semicircular curvature, the upper part of the rear edge of the earlier design D1 formed a right angle with the back of the lid and continued on slightly curved to the lower part of the lid.
58      In the first place, it is necessary to reject the applicant’s claim based on evidence which it had submitted before EUIPO and consisting of examples of toilet lids, and according to which the informed user would understand that the presence of a rectangular recess at the back of the toilet lid was a common characteristic and, therefore, insignificant. In that regard, the examination of the individual character of the contested design must be assessed solely with regard to the earlier design, chosen by the applicant for a declaration of invalidity in support of its application for a declaration of invalidity (judgment of 15 October 2020, Dvectis CZ v EUIPO – Yado (Support pillow), T‑818/19, not published, EU:T:2020:486, paragraph 57). Even if an informed user with extensive knowledge of the sector under consideration were aware of examples of toilet lids with a rectangular recess, the fact remains that, being particularly observant, he or she would not fail to note that element in the contested design, which helps to differentiate it from earlier design D1.
59      In those circumstances, contrary to what the applicant claims, the Board of Appeal was correct in finding, in paragraph 45 of the contested decision, that in the comparison of the designs at issue, that rectangular cavity was not an insignificant element or one that would be overlooked. That finding also applies to the fixed rectangular cover at the back of the toilet lid.
60      In the second place, as regards the differences relating to the control knobs and the difference in the rear edges of the lids, they cannot be overlooked either in the assessment of the overall impression, since those elements remain visible and, therefore, noticeable by the informed user. That conclusion is not controverted by the applicant’s claim that the informed user is accustomed to being confronted with a wide variety of shapes of toilet lids and shapes of single knobs on the side of toilet lids.
61      First, the assessment of the individual character of a design must be carried out in relation to one or more earlier designs, taken individually from among all the designs which have been made available to the public previously, and not in relation to a combination of isolated elements, taken from a number of earlier designs (see judgment of 27 April 2022, Shower drainage channel, T‑327/20, EU:T:2022:263, paragraph 109 and the case-law cited).
62      Second, as a result of the limitation of the freedom of the designer and the informed user’s degree of vigilance, that user would become aware of the elements referred to in paragraph 60 above, on an overall view, when making normal use of the product in question.
63      In that last regard, contrary to what the applicant claims, the Board of Appeal did not fail to take account of the informed user’s perspective in the context of normal use of the product in which the contested design was incorporated, as is apparent from the case-law taken into account in paragraph 40 of the contested decision, and from the considerations set out in paragraph 38 of the contested decision.
64      Furthermore, the differentiating elements taken into account by the Board of Appeal in paragraphs 42 to 46 of the contested decision are all visible even according to the approach advocated by the applicant, namely that the informed user focuses solely on the front view, the top view and the slightly lateral views of the product incorporating the contested design.
65      In the third place, in order to claim that the same overall impression is apparent from the designs at issue, the applicant refers, first of all, to a straight rear side, to two parallel straight sides, which are perpendicular to the rear side and join in the middle forming a semicircle, and to a shorter rear side than the distance between the rear side and the front part. Those features of the designs at issue are directly linked to the technical requirements which the toilet lids must fulfil. Moreover, those shapes are repeated on numerous occasions, including in the examples of earlier designs provided by the applicant before EUIPO.
66      Next, the thickness of the lid, which is reduced slightly towards the front, is a minimal element, the details of which would not be noted by an informed user or, in any event, would not be taken into consideration as being decisive in the overall impression. Lastly, it is necessary to reject as unfounded the applicant’s claim alleging similarity due to the ‘presence of round knobs symmetrically positioned on each side of the axis of rotation of the toilet lid’. It is clear that it is apparent from the representations of the contested design, presented in the application for registration, that it contains only one round knob. Thus, it is indeed a differentiating factor compared with the earlier design D1.
67      In the light of the foregoing, the Court finds, first, that the differences identified by the Board of Appeal in paragraphs 43 to 46 of the contested decision (see paragraph 57 above) are sufficient for the contested design to be regarded as producing on the informed user a different overall impression from that of earlier design D1 and, second, that the differentiating elements identified by the applicant are not such as to call into question that different overall impression. In those circumstances, the applicant’s claims that the Board of Appeal erred in its assessment of the individual character of the contested design must be rejected.
68      In the light of all of the foregoing, the third plea must be rejected as unfounded, and 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.
Costs
69      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.
70      In the present case, although the applicant has been unsuccessful, EUIPO has requested that it be ordered to pay the costs only in the event that a hearing is organised. Since no hearing has been held, EUIPO must be ordered to bear its own costs.
71      On the other hand, since the applicant has, as stated above, been unsuccessful, it must be ordered to pay the costs incurred by the interveners in the proceedings before the Court, in accordance with the form of order sought by them. In so far as the interveners’ claim concerns the costs of the proceedings before the Board of Appeal, it is sufficient to point out that, given that the present judgment dismisses the action brought against the contested decision, it is the operative part in that decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO –
Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Nextrend GmbH, in addition to bearing its own costs, to pay those incurred by Xiamen Axent Corporation Ltd and Axent Switzerland AG, in the course of the proceedings before the General Court;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Marcoulli
Schwarcz
Tomljenović
Delivered in open court in Luxembourg on 21 February 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.