JUDGMENT OF THE GENERAL COURT (Second Chamber)
1 December 2021 (*)
(Community design – Invalidity proceedings – Registered Community design representing triple helicoid cheese – Earlier international design – Ground for invalidity – Individual character – Disclosure of the earlier design – Article 7 of Regulation (EC) No 6/2002 – Different overall impression – Article 6 of Regulation No 6/2002)
In Case T‑662/20,
Muratbey Gida Sanayí ve Tícaret AŞ, established in Istanbul (Turkey), represented by M. Schork, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
M. J. Dairies EOOD, established in Sofia (Bulgaria), represented by D. Dimitrova and I. Pakidanska, lawyers,
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 21 August 2020 (Case R 1925/2019-3), relating to invalidity proceedings between M. J. Dairies and Muratbey Gida Sanayí ve Tícaret,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović (Rapporteur), President, F. Schalin and P. Škvařilová-Pelzl, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 5 November 2020,
having regard to the response of EUIPO lodged at the Court Registry on 18 January 2021,
having regard to the response of the intervener lodged at the Court Registry on 15 January 2021,
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 2 April 2013, the applicant, Muratbey Gida Sanayí, 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 for which registration was sought and which is disputed in the present case is represented in the following view:
3        The products in which the contested design is intended to be applied are in Class 01-03 of the Locarno Agreement Establishing an International Classification for Industrial Designs, of 8 October 1968, as amended, and correspond to the following description:
‘Cheeses’.
4        On 20 October 2017, the intervener, M. J. DAIRIES EOOD, filed an application for a declaration of invalidity in respect of the contested design, pursuant to Article 52 of Regulation No 6/2002.
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.
6        In the application for a declaration of invalidity, the intervener claimed that the contested design lacked novelty and individual character, under Articles 5 and 6 of Regulation No 6/2002.
In that regard, it relied on the following evidence:
–        International patent application No WO 98/51471, published on 19 November 1998 and claiming the priority of patent GB 9 709 460 filed on 9 May 1997, in respect of an invention relating to a helical food product, including, inter alia, the following images:
–        European patent application No EP 0 876 896 B1, published on 21 November 2001, filed for a helical food product, including, inter alia, the following images:
–        untranslated extracts from patent applications in Bulgaria, the Czech Republic, Poland and Slovakia, including, inter alia, the above images.
7        On 3 July 2019, the Invalidity Division granted the application for a declaration of invalidity on the basis of Article 6 of Regulation No 6/2002.
In essence, it considered that the disclosure of the design included in the patent applications referred to in paragraph 6 above, in particular the one identified as ‘FIG[URE] 1’ in the European patent application and replicated in the international patent application (‘the earlier design’), constituted sufficient proof of disclosure of the earlier design before the filing date of the contested design. Moreover, it considered that the design represented in the European patent did not differ substantially from the earlier design.
Accordingly, it concluded that its prior disclosure was an obstacle to the individual character of the contested design.
8        On 29 August 2019, 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.
9        By decision of 21 August 2020 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal.
In particular, it considered that the applicant, as holder of the contested design, had not demonstrated that, in the present case, the circles specialised in the sector concerned, namely that of the food industry, had
been prevented from learning of the publication of the European patent containing a representation of the earlier design, which accordingly had to be considered as having been disclosed to the public, within the meaning of Article 7(1) of Regulation No 6/2002.
10      Moreover, the Board of Appeal considered that the degree of freedom of the designer of the cheeses, namely the products concerned in the present case, was relatively high and that the informed user to be taken into account was a consumer from the general public who shops for foodstuffs
and who has a certain degree of knowledge as to the shapes and size that the cheeses may have.
11      Lastly, the Board of Appeal concluded that since the contested design and the earlier design produced the same overall impression on the informed user, so that the contested design did not have the individual character required by Article 6(1) of Regulation No 6/2002, the application for a declaration of invalidity had to be upheld,
without it being necessary to assess the other grounds relied on in that application.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision and dismiss the application for a declaration of invalidity against the contested design;
–        order EUIPO to pay the costs.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs.
Law
14      The ground for invalidity upheld by the Board of Appeal in the contested decision is that relating to Article 25(1)(b), read in conjunction with Article 6, of Regulation No 6/2002, because that design lacked individual character.
15      In that regard, it should be borne in mind that the logic underpinning Article 25(1)(b) of Regulation No 6/2002 is to prevent the registration of designs not satisfying the
requirements justifying their need for protection, particularly that arising from their ‘novelty’ and their ‘individual character’, within the meaning of Article 5 and of Article 6, respectively, of that regulation.
16      Moreover, it is apparent from recital 14 of Regulation No 6/2002 that the assessment as to whether a design has individual character under Article 25(1)(b) of that same regulation, read in conjunction with its Article 6, should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on that person by the existing design corpus.
17      In the context of the examination of the ground for invalidity referred to in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, the sole function of the earlier design is to reveal what must be taken into consideration in that examination within the state of the prior art.
That is to say the corpus of previous designs relating to the product in question that were disclosed on the date of filing of the contested design (see, to that effect, judgment of 7 February 2019, Eglo Leuchten v EUIPO – Briloner Leuchten (Lamp), T‑767/17, not published, EU:T:2019:67, paragraph 19 and the case-law cited).
However, the fact that an
earlier design belongs to that corpus of previous designs is the result of the mere disclosure of that design.
18      Accordingly, for the purposes of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, it is important to establish that the earlier design has been disclosed, within the meaning of Article 7(1) of that same regulation.
19      In the present case, the applicant is relying, in essence, on two grounds in support of its action.
The first alleges infringement of Article 7(1) of Regulation No 6/2002, in that the Board of Appeal erred in finding that the earlier design had been disclosed in accordance with that provision.
The second alleges infringement of Article 6(1)(b) of that regulation, in that the Board of Appeal erred in finding that the contested design lacked individual character.
The first plea in law, alleging infringement of Article 7(1) of Regulation No 6/2002
20      The applicant claims, in essence, that the Board of Appeal erred in finding that the earlier design had been made available to the public in 2009, within the meaning of Article 7(1) of Regulation No 6/2002.
21      The applicant submits that, in so far as the patent application extracts produced by the intervener concern method inventions, and do not cover the products as such, far less the cheeses, it cannot be expected that the relevant circles concerned conduct searches in patent registration files, which have no obvious link to the products in which the contested design is intended to be applied.
The applicant submits moreover that, according to case-law, a disclosure, within the meaning of Article 7(1) of Regulation No 6/2002, can only be presumed if the publication should have been known to the professional circles of the sector concerned in the normal course of business.
22      EUIPO and the intervener dispute the applicant’s arguments.
23      Article 7(1) of Regulation No 6/2002 states that 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 referred to in Article 6(1)(a) of Regulation No 6/2002, 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.
24      In order to establish that an earlier design has been disclosed, it is thus necessary to carry out an analysis in two-stages, consisting in examining, in the first place, whether the evidence submitted in the application for a declaration of invalidity shows, on the one hand, facts
constituting disclosure of a design and, on the other hand,
that that disclosure occurred earlier than the date of filing or priority of the design at issue and, in the second place, where the holder of the design at issue has claimed the contrary, whether those facts could reasonably become known in the normal course of business to the circles specialised in the sector operating within the European Union, failing which a disclosure will be considered to have no effects and will not be taken into account (judgment of 13 June 2019, Visi/one v EUIPO – EasyFix (Display holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 24).
25      As regards the first stage of that analysis in relation to the evidence submitted in the application for a declaration of invalidity in order to prove the disclosure of the earlier design to the public, it must be recalled that the Board of Appeal took into account an extract from the database of the World Intellectual Property Organisation (WIPO), concerning the international patent published under No WO 98/51471 on 19 November 1998 and an extract from the database of the European Patent Office (EPO), concerning
the patent application under No EP 0 876 896 B1, published on 21 November 2001.
As was indicated in paragraph 6 above, the two abovementioned extracts contain a representation of the earlier design.
26      Therefore, the Board of Appeal was entitled to consider that the evidence provided by the intervener on the publication of the patent applications containing the representation of the earlier design, before 2 April 2013, the filing date of the contested design, in particular by WIPO, was sufficient to presume the disclosure to the public of that earlier design, within the meaning of Article 7 of Regulation No 6/2002.
27      In that regard, the applicant’s complaints questioning the fact that the extracts concerning the patent applications submitted by the intervener constitute a valid method of disclosure, within the meaning of Article 7 of Regulation No 6/2002, cannot succeed.
28      Article 7(1) of Regulation No 6/2002 expressly mentions publication as one of the methods of disclosure of a design to the public.
In that regard, it has been held that the publication of patent applications by patent offices constitutes a valid method of publication, within the meaning of Article 7(1) of Regulation No 6/2002 (see, to that effect, judgment of 15 October 2015, Promarc Technics v OHIM – PIS (Part of door), T‑251/14, not published, EU:T:2015:780, paragraph 23).
In the present case it is not in dispute that the extracts concerning the patents submitted by the intervener
were published by WIPO and by the EPO, as was noted in paragraph 25 above.
29      Moreover, it is apparent from those extracts that the patent applications concern a helical food product.
Indeed, those patent applications are under the heading ‘helical food product’.
Moreover, in the section on the international classification of patents, class A23, relating to foodstuffs, and subclasses A23P, concerning the shaping or working of foodstuffs not fully covered by another subclass, and B29C, relating to the shaping of material in a plastic state, not otherwise provided for, had been ticked. Furthermore, in the detailed description of the invention, it was explained that it was an invention relating to a helical food product, covering the product itself, based on cheese in particular, the method of production and the machines for producing it.
30      As the intervener rightly submits, in so far as it is an invention relating to a helical food product, the methods and the machinery for making such a product, the relevant classification was that falling within class A23, and
subclasses A23 P and B29C.
31      What is more, it must be stated that the reproductions of the helical product itself, which have assisted the comparison by the Board of Appeal of the overall impressions produced by the designs at issue, feature in the extracts concerning the patent applications submitted by the intervener, as is apparent from paragraph 6 above.
32      As regards the second stage of the analysis, it is apparent from the case-law that a design is deemed to have been made available once the party claiming disclosure has proven the events constituting disclosure and that, in order to rebut that presumption, the party challenging the disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those facts from becoming known in the normal course of business to the circles specialised in the sector concerned (see judgment of 8 July 2020, Glimarpol v EUIPO – Metar (Pneumatic power tool), T‑748/18, not published, EU:T:2020:321, paragraph 19 and the case-law cited).
33      In that regard, it must be noted that the applicant has not submitted any evidence before the Board of Appeal
capable of demonstrating that, in the present case, the publication of extracts concerning the patent applications, submitted in support of the application for a declaration of invalidity, would be insufficient to enable the specialised circles to become aware of the earlier design.
34      As is apparent from paragraph 29 of the contested decision, the applicant restricted itself to asserting, without any means of supporting evidence, that the publication of the patent applications at issue did not enable the specialised circles of the sector concerned to become aware of the disclosure of the earlier design in the normal course of business.
However, as was indicated in paragraph 29 above, it is apparent from the extracts submitted by the intervener that the patent applications at issue concerned an invention relating to a helical food product and to the methods and the machinery for its production and contained a reproduction of the earlier design.
35      In those circumstances, the Board of Appeal was entitled to conclude, without erring in law, that the presumption of disclosure of the earlier design to the public had not been rebutted in the present case.
36      In any event, it should be observed that, since the patent applications referred to in paragraph 6 above concern a helical food product, the Board of Appeal did not err in considering that the circle specialised in the sector concerned was that relating to the food industry in general.
In addition, even assuming, as the applicant submits, that the specialised circles include only professionals active in the design and distribution of cheeses, it did not submit any evidence supporting the conclusion that the publication of extracts of patent applications on the databases of the World Intellectual Property Organisation and of the European Patent Office could not reasonably allow those professionals to know that the earlier design could apply equally to cheeses, whereas the descriptions contained in those patent applications in question expressly referred to cheese as an example of a helical food product covered by those patent applications.
37      In that regard, it must be stated that patent databases are freely accessible for consultation on the WIPO and EPO websites.
Accordingly, the information contained in them, particularly patent application publications, must be regarded as being wholly accessible to the circles specialised in the sector concerned in all countries, including those of the European Union.
38      Furthermore, according to the case-law, the circles specialised in the sector operating within the European Union, in the normal course of business, participate in trade fairs and consult the specialised reviews of that sector.
It should be noted in that regard that, in so far as, in the normal course of business, the circles specialised in the sector operating in the European Union consult specialised reviews of that sector, it is all the more plausible that the circles specialised in the sector consult patent databases (see, to that effect, judgment of 15 October 2015, Part of door, T‑251/14, not published, EU:T:2015:780, paragraph 25 and the case-law cited).
39      Accordingly, the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 6 of Regulation No 6/2002
40      The applicant claims that, even if the earlier design had to be taken into consideration, the Board of Appeal incorrectly applied Article 6 of Regulation No 6/2002 in finding that the contested design lacked individual character in comparison with the earlier design.
41      First of all, according to the applicant, the designer’s degree of freedom is, in the present case, rather limited to traditionally known forms for cheeses like pops, slices, circular shapes, which correspond to ordinary geometric shapes or to grated forms.
42      Next, the applicant submits that the informed user must, in the present case, be regarded as a member of the general public who shops for cheese products and has a certain degree of knowledge as regards the typical shapes, proportions and dimensions of available cheese products.
43      Lastly, and in the light of those considerations, the applicant submits that the image identified as ‘FIG[URE] 1’ in the extracts, concerning the patent applications, produced in the application for a declaration of invalidity, and as upheld by the Board of Appeal, could not constitute a relevant earlier design supporting a finding that the contested design lacked individual character.
That image disclosed a mere side view of an ordinary coil,
showing neither a helical structure, which per se requires at least two strings twisted to each other, nor the front or rear aspect of that design.
Moreover, there is nothing to indicate that it is a food product. However, the contested design features a triple helicoid structure, with three tightly twisted strings, of a self-contained, closed appearance, showing a clean cut and a plain surface at each end and a thin and long appearance with many turns.
Furthermore, unlike other cheeses, the product represented in the contested design may be consumed immediately without further processing, like cutting or separating, which makes it unique, and which explains why it has won several international prizes. Those characteristic features of the contested design are not visible in the earlier design.
44      The applicant concludes that the apparently visible differences in characteristic features between the contested design and the earlier design, produced a different overall impression on the informed user in respect of each of the two designs.
45      EUIPO and the intervener dispute the applicant’s arguments.
46      Article 6(1)(b) of Regulation No 6/2002 provides, inter alia, that a registered Community design is considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing the application for registration. Article 6(2) of that regulation further provides that, in assessing individual character of a design, the degree of freedom of the designer in developing it shall be taken into consideration.
47      According to the case-law, the assessment of the individual character of a Community design is carried out, in essence, in four stages. That examination consists in deciding upon, first, the sector to which the products in which the design is intended to be incorporated or to which it is intended to be applied belong; second, the informed user of those products in accordance with their purpose and, with reference to that informed user, the degree of awareness of the prior art and the level of attention to the similarities and the differences in the comparison of the designs; third, the designer’s degree of freedom in developing his design, the influence of which on individual character is in inverse proportion; and, fourth, taking that degree of freedom into account, the outcome of the comparison, direct if possible, of the overall impressions produced on the informed user by the contested design and by any earlier design which has been made available to the public, taken individually
(see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 66 and the case-law cited).
48      It is in the light of the considerations set out in paragraphs 46 and 47 above and with regard to the earlier design, in respect of which disclosure to the public has been demonstrated, that an assessment should be made as to whether the Board of Appeal correctly concluded that the contested design lacked individual character within the meaning of Article 6 of Regulation No 6/2002.
49      In the present case, the Board of Appeal considered, in its examination, that the sector concerned by the designs at issue was that of food products, particularly that of cheeses, and that the informed user was a consumer from the general public who shops for food products, in particular cheese, and who has a certain degree of knowledge as to the shapes and the size that that product may have.
Those assessments by the Board of Appeal, which are not disputed by the parties, are untainted by error.
It remains therefore to examine the soundness of those assessments as regards the designer’s degree of freedom and the comparison of the overall impressions produced by those designs.
The designer’s degree of freedom
50      According to the case-law, the factor relating to the designer’s freedom in developing the design at issue cannot on its own determine the assessment of the individual character of that design, but it may serve to moderate that assessment.
In fact, its influence on individual character varies according to a rule of inverse proportionality. Thus, the greater the designer’s freedom, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user.
Conversely, the more the designer’s freedom is restricted, the more likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user.
In other words, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs which do not have significant differences produce the same overall impression on an informed user and, accordingly, the contested design does not display an individual character.
Conversely, if the designer has a low degree of freedom, that reinforces the conclusion that the sufficiently marked differences between the designs produce a dissimilar overall impression on the informed user and, accordingly, the contested design displays an individual character (see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 76 and the case-law cited).
51      In the present case, the Board of Appeal indicated, in paragraph 34 of the contested decision, that the designer’s degree of freedom in relation to cheese products was rather broad.
The Board of Appeal thus noted that, whilst that freedom might be limited by the natural characteristics of the composition of the cheese and by its production procedures and technologies, no other constraint or regulatory requirement would apply as regards the shape of those products.
The Board of Appeal concluded that cheese may have
different final shapes.
52      It must be stated that cheeses may feature varying degrees of consistency, ranging from hard cheeses to soft cheeses or even to cheese spreads or liquid cheeses.
Moreover, they are capable of featuring different textures, depending in particular on their composition and on their degree of maturity, and colours, and may even incorporate other ingredients such as fruits or spices.
53      Furthermore, cheeses may be presented in different sizes and cuts.
As the applicant itself recognises, in producing supporting images, cheese products may feature different, ordinary geometric shapes, such as pops, slices, circular shapes or even grated or more creative forms, particularly where soft cheeses are concerned.
54      Accordingly, it must be concluded that the Board of Appeal correctly found that the degree of freedom of the designer of cheese products was rather broad.
The comparison of the overall impressions
55      According to settled 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 16 February 2017, Antrax It v EUIPO – Vasco Group (Thermosiphons for radiators), T‑828/14 and T‑829/14, EU:T:2017:87, paragraph 53 and the case-law cited).
56      In the present case, the Board of Appeal compared the following designs:
57      First, it should be noted that the overall impression produced on the informed user by the designs at issue is dominated by a helical, rounded and relatively elongated shape.
Moreover, even though the relative size of each of the two designs is not clear, it is apparent from the representations indicated in paragraph 56 above that in both cases they are cut, relatively short sections.
Those fundamental characteristics produce a similar overall impression.
58      Second, it must be stated that the differences between the designs at issue lie in the more elongated and relatively thinner shape of the contested design in comparison with the earlier design.
Moreover, the contested design shows a flat end with three strings, which is not apparent in the earlier design.
Furthermore, the design at issue is represented in a yellowish colour whereas the earlier design is shown colourless.
Those differences are relatively minimal.
59      However, it must be noted that, despite his or her relatively high level of attention, the informed user does not observe in detail the minimal differences that may exist between the designs at issue (see, to that effect, judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 72 and the case-law cited), in so far as the fact that he or she is ‘informed’ does not imply that he or she is able to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product’s technical function from those which are arbitrary (judgment of 22 June 2010, Shenzhen Taiden v OHIM – Bosch Security Systems (Communications equipment), T‑153/08, EU:T:2010:248, paragraph 48).
60      Therefore, in the present case, the consumer from the general public who shops for cheese and who has a certain degree of awareness as to the shapes and the size which that product may have, due to his or her experience of consumption of that product, cannot necessarily establish the minimal differences between the designs at issue referred to in paragraph 58 above, beyond the helical and cut shape of the product at issue.
61      The minimal differences at issue cannot therefore dispel the impression of ‘déjà vu’ conveyed by the designs at issue, having regard to their common elements, namely their helical, rounded and relatively elongated shape, which constitute their most visible and most important elements.
62      Third, it should be recalled that the degree of freedom of the cheese designed is relatively high.
In that context, the relatively minimal differences that exist between the designs at issue, referred to in paragraph 58 above, remain insufficiently marked to produce on the informed user, on their own, dissimilar overall impressions.
63      Consequently, the Board of Appeal did not err when it held that the designs at issue produced the same overall impression on the informed user and that the contested design lacked individual character.
64      Accordingly, the second plea in law must be rejected and the action dismissed in its entirety.
Costs
65      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.
66      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Muratbey Gida Sanayí ve Tícaret AŞ to pay the costs.
Tomljenović
Schalin
Škvařilová-Pelzl
Delivered in open court in Luxembourg on 1 December 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.