JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
4 July 2017 (*)
(Community design — Invalidity proceedings — Registered Community design representing an electronic wristband — Prior Community design — Ground for invalidity — Individual character — Different overall impression — Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002 — Obligation to state reasons — Article 62 of Regulation No 6/2002)
In Case T‑90/16,
Thomas Murphy, residing in Dublin (Ireland), represented by N. Travers, SC, J. Gormley, Barrister, and M. O’Connor, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Nike Innovate CV, established in Beaverton, Oregon (United States), represented by C. Spintig, S. Pietzcker and M. Prasse, lawyers,
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 19 November 2015 (Case R 736/2014-3), relating to invalidity proceedings between Mr Murphy and Nike Innovate,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, A. Dittrich and P.G. Xuereb (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 22 February 2016,
having regard to the response of EUIPO lodged at the Court Registry on 2 May 2016,
having regard to the response of the intervener lodged at the Court Registry on 8 June 2016,
further to the hearing on 9 March 2017,
gives the following
Judgment
Background to the dispute
1        The intervener, Nike Innovate CV, is the proprietor of the Community design filed on 27 December 2012 and registered on the same day under No 002159640-0002 with the European Union Intellectual Property Office (EUIPO) and published in Community Designs Bulletin No 32/2013 of 14 February 2013 with a priority date of 22 June 2012.
2        The goods to which the contested design is intended to be applied are in Class 10.04 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘measuring instruments, apparatus and devices.’ That design is represented as follows:
3        On 19 August 2013, the applicant, Thomas Murphy, filed an application with EUIPO for a declaration of invalidity of the contested design.
4        In support of his application for a declaration of invalidity, the applicant relied, in particular, on the Community design filed on 26 November 2004 and registered under No 000264379-0001 for ‘flexible LCD watch bands’, published in the Community Designs Bulletin No 28/2005 of 5 April 2005 and represented as follows:
5        The applicant relied, in essence, in his application for a declaration of invalidity, on an infringement of Article 6(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 25(1)(b) of that regulation, on the ground that the contested design was devoid of individual character.
6        By decision of 25 February 2014, the Invalidity Division rejected the application for a declaration of invalidity.
7        On 16 March 2014, the applicant filed a notice of appeal with EUIPO pursuant to Articles 55 to 60 of Regulation No 6/2002 against the decision of the Invalidity Division.
8        By decision of 19 November 2015 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal. At the outset, it pointed out that the question posed pursuant to Article 6(1)(b) of Regulation No 6/2002 was essentially whether, before the priority date of the contested design, a design that produces the same overall impression on the informed user had been made available to the public. In addition, the Board of Appeal pointed out, first, that it endorsed the assessment of the Invalidity Division according to which the prior design had been made available to the public. Second, it pointed out that the contested design had been registered for ‘measuring instruments, apparatus and devices’ but that it appeared that that design consisted of an electronic wristband. The Board of Appeal therefore took the view that the informed user, who had to be taken into account, was whoever habitually purchases such a wristband, who puts it to its intended use and has become informed on the subject by browsing through catalogues of, or including, electronic wristbands, visiting the relevant stores or stands, downloading information from the internet, and so forth. Consequently, the Board of Appeal found that the informed user would be aware that those wristbands are flexible and round-shaped in order to fit around the wrist and that they contain a display and integrate some kind of instrumentation or sensors capable of taking measurements. The Board of Appeal also cited the case-law according to which, as a result of his or her interest in the goods concerned, the informed user shows a relatively high degree of attention when using those goods. Third, the Board of Appeal took the view that the degree of freedom of a designer of electronic wristbands was limited only by the technical constraints which applied to such wristbands, in that they had to be ergonomic so as to fit around the wrist and in that they had to contain some kind of measuring device which contains instrumentation or sensors capable of taking measurements. Fourth, the Board of Appeal confirmed the Invalidity Division’s assessment that the designs at issue differed in several respects, such as by the presence of an oval button embedded in the top surface, the use of transparent material and the absence of ornamentation on the outer surface in the contested design. The Board of Appeal added that the closing clasp in the contested design was shorter than that in the prior design and that the prior design was notably thinner than the contested design. The Board of Appeal concluded that those differences would not escape the informed user’s notice and that they produced a different overall impression on such a user.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
10      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
11      The applicant puts forward three pleas in law. By the first plea, he submits that the Board of Appeal failed to give him a fair hearing and infringed its obligation to state reasons by failing to take account of the explanations relating to the features of the prior design and by failing to answer the argument that the prior design had to enjoy a high degree of protection. By the second plea, the applicant submits that the Board of Appeal infringed its obligation to state reasons by failing to address the argument that the degree of freedom of the designer was very high. By the third plea, the applicant relies, in essence, on an infringement of Article 6(1)(b) of Regulation No 6/2002 on the ground that the Board of Appeal did not properly assess the overall impression produced by the designs at issue.
12      In so far as, by the first two pleas in law, the applicant criticises the Board of Appeal for not having replied to certain of the arguments raised before it, they should be examined together.
The first and second pleas in law, alleging infringement of the right to a fair hearing and of the obligation to state reasons
13      In the context of the first plea in law, the applicant argues that the Board of Appeal did not give him a fair hearing and infringed its obligation to state reasons by failing to take account of the explanations relating to the features of the prior design which he had presented before the Board of Appeal and by failing to answer his argument that, at the time of its registration, the prior design was original and represented such an advance in relation to the state of the art that it had to enjoy a high degree of protection.
14      In particular, in the first place, the applicant submits that the prior design required explanations because, in 2004, it was very difficult to represent that complex and novel design. The applicant adds that, in contrast to patent applications, design applications do not require a written description of the features of the designs and do not permit such a description, except in a very limited way. The applicant considers that it is in that context that the reasons given for the contested decision must be assessed.
15      In the second place, the applicant submits that the Board of Appeal did admittedly refer to his argument that the prior design represented a significant advance in relation to the state of the art at the time of its registration. However, the Board of Appeal did not state its reasons for rejecting that argument. Nor is it clear from the contested decision that the Board of Appeal took account of the response given by the intervener to that argument, namely that it was not substantiated. In that regard, the applicant argues that it was not for him to substantiate his argument, but rather for the intervener to refute that argument. According to the applicant, it would be illogical to require him to prove the non-existence of a design in the form of an electronic design before the registration of the prior design.
16      In the context of the second plea in law, the applicant argues that the Board of Appeal ignored his argument that the degree of freedom of the designer of electronic wristbands was very high, notwithstanding the examples of various wristbands which had been provided to the Board of Appeal. The Board of Appeal, he argues, endorsed, without adequate reasoning, the intervener’s argument that the applicant’s freedom of design was limited. The Board of Appeal also failed to quantify the degree of the freedom of a designer of electronic wristbands. If it had done so, it would have found that it was very high.
17      EUIPO and the intervener dispute the applicant’s arguments.
18      As a preliminary point, it must be pointed out that none of the arguments raised by the applicant supports his claim that the Board of Appeal infringed his right to a fair hearing. The argument developed by the applicant in the context of the first two pleas in law seeks, in reality, only to show that there was an infringement of the obligation to state reasons.
19      In that regard, it must be recalled that, under Article 62 of Regulation No 6/2002, decisions of EUIPO must be reasoned. 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. That obligation has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Courts of the European Union 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 review (see judgment of 10 September 2015, H&M Hennes & Mauritz v OHIM — Yves Saint Laurent (Handbags), T‑525/13, EU:T:2015:617, paragraph 15 and the case-law cited).
20      The Boards of Appeal are thus not obliged, in stating the reasons for the decisions which they may adopt, to take a view on all the arguments which the parties have put before them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 9 September 2015, Dairek Attoumi v OHIM — Diesel (DIESEL), T‑278/14, not published, EU:T:2015:606, paragraph 69 and the case-law cited).
21      Furthermore, in view of the continuity in terms of functions between the Invalidity Divisions and Boards of Appeal, as demonstrated by Article 60(1) of Regulation No 6/2002, the decision of the Invalidity Division, together with its statement of reasons, forms part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to exercise in full its jurisdiction to review legality (see judgment of 9 September 2015, DIESEL, T‑278/14, not published, EU:T:2015:606, paragraph 71 and the case-law cited).
22      It must also be borne in mind that the obligation to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds contain errors, those errors will affect the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 10 September 2015, Handbags, T‑525/13, EU:T:2015:617, paragraph 16 and the case-law cited).
23      In the present case, it should be pointed out that it is apparent from the contested decision, summarised in paragraph 8 above, that the Board of Appeal set out, in that decision, the facts and legal considerations which led it to conclude that the application for a declaration of invalidity based on a lack of individual character of the contested design had to be rejected.
24      Moreover, with regard to the explanations relating to the features of the prior design which the applicant submitted before the Board of Appeal, it must be noted that the Board of Appeal pointed out, in the contested decision, that the features of the designs which were claimed but did not appear in the registered representations of the designs did not come within the protection covered by each registration and could not be taken into account. The Board of Appeal thus implicitly rejected the explanations concerning the features of the prior design which the applicant had produced before it on the ground that, in his explanations, the applicant claimed that the design had features which did not appear in the representations of that design. The applicant therefore errs in arguing that the Board of Appeal infringed its obligation to state reasons in that regard.
25      The question as to whether the Board of Appeal acted correctly in rejecting the explanations relating to the prior design presented before it goes to the substance of the contested decision and will be examined below in the context of the third plea in law.
26      With regard to the applicant’s argument that the prior design, having been a significant advance in relation to the prior art at the date of its registration, had to enjoy a higher degree of protection, it must be recalled, as the applicant did himself, that the Board of Appeal referred to that argument in paragraph 12 of the contested decision and to the answer given to that argument by the intervener in paragraph 13 thereof, namely that the applicant’s argument was not supported by any evidence. The applicant had not raised before the Board of Appeal any legal basis in support of that argument. Nor had he furnished any proof of such an advance. In so far as the applicant relied on the claim that the prior design was a significant advance in relation to the prior art, it was incumbent on him to substantiate that claim. Contrary to what the applicant essentially argues, that proof was not impossible to provide. He could, for example, have provided press articles or website extracts evidencing that advance. Given that the applicant’s argument was not substantiated either on a legal basis or by evidence, the Board of Appeal cannot be criticised for not having addressed it.
27      As regards the applicant’s argument relating to the degree of freedom of the designer, it must be noted that, in the contested decision, the Board of Appeal stated that: ‘As found [by the Invalidity Division], the degree of freedom of the designer of electronic wristbands is basically limited only by the technical constraints which apply to such wristbands, in that they have to be ergonomic so as to fit a part of the human body and in that they have to contain some kind of a measuring device which contains instrumentation and/or sensors capable of measuring. … As a consequence of the function of the electronic wristband, the degree of freedom of the designer is only limited by the above restrictions’.
28      The Invalidity Division had found, in essence, that the degree of freedom of the designer was high and was limited only by the technical constraints applicable to electronic wristbands.
29      Consequently, it is clear from the contested decision, read in conjunction with the decision of the Invalidity Division, which the Board of Appeal upheld, that the Board of Appeal took the view that the degree of freedom of a designer of wristbands was high because he or she was limited only by the technical constraints which applied to such wristbands. Thus, the applicant’s argument that the Board of Appeal endorsed, without adequate reasoning, the intervener’s argument that the freedom of the designer was limited and failed to quantify the degree of the freedom of the designer follows from a misreading of the contested decision.
30      The question as to whether that degree of freedom is very high, as the applicant argues, — and not merely high — goes to the substance of the contested decision and will be examined below in the context of the third plea in law.
31      Accordingly, the first and second pleas in law must be rejected.
The third plea in law, alleging infringement of Article 6(1)(b) of Regulation No 6/2002
32      It follows from the wording of Article 6(1)(b) of Regulation No 6/2002 that individual character must, in the case of a registered Community design, be assessed in the light of the overall impression which it produces on the informed user. The overall impression produced on the informed user must be different from that produced by any design made available to the public before the date on which the application for registration was filed or, if a priority is claimed, the date of priority. Article 6(2) of Regulation No 6/2002 states that, in the assessment of individual character, the degree of freedom of the designer in developing the design is to be taken into consideration.
33      Furthermore, it is apparent from recital 14 of Regulation No 6/2002 that, when an assessment is carried out as to whether a design has individual character, account should be taken of the nature of the product to which the design is applied or in which it is incorporated, and in particular of the industrial sector to which it belongs.
34      The applicant does not dispute that the product to which the contested design applies consists of an electronic wristband. He also does not dispute the Board of Appeal’s findings, set out in paragraph 8 above, relating to the informed user who must be taken into consideration in the present case and that user’s level of attention. By contrast, the applicant argues that the Board of Appeal’s findings on the degree of freedom of the designer of electronic wristbands and on the individual character of the contested design are erroneous.
35      EUIPO and the intervener dispute the applicant’s arguments.
The degree of freedom of the designer
36      The degree of freedom of the designer of a design is determined by, inter alia, 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 to which the design is applied. 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 10 September 2015, Handbags, T‑525/13, EU:T:2015:617, paragraph 28 and the case-law cited).
37      Consequently, the greater the freedom of the designer in developing a design, the less likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression on an informed user. Conversely, the more the freedom of the designer in developing a design is restricted, the more likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression 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 being compared, which do not display significant differences, will produce the same overall impression on an informed user (see judgment of 10 September 2015, Handbags, T‑525/13, EU:T:2015:617, paragraph 29 and the case-law cited).
38      However, the factor relating to the freedom of the designer cannot on its own determine the assessment of the individual character of a design. It makes it possible only to moderate the assessment of the individual character of the contested design, but does not determine how different the two designs have to be in order for one of them to have individual character (see, to that effect, judgment of 10 September 2015, Handbags, T‑525/13, EU:T:2015:617, paragraph 35).
39      In the present case, it is clear from the contested decision, read in conjunction with the decision of the Invalidity Division, that the Board of Appeal took the view that the degree of freedom of the designer of an electronic wristband was high (see paragraphs 27 to 29 above).
40      The applicant argues that the Board of Appeal should have found that that degree of freedom was very high. In support of that argument, the applicant provided three images of electronic wristbands.
41      It should be noted that the Board of Appeal correctly found that the degree of freedom of a designer of an electronic wristband was limited by the technical constraints which apply to those wristbands, namely the need to be ergonomic in order to fit the wrist and to contain measuring instruments. It also correctly took the view that, in order for a wristband to be able to fulfil its function properly, it had to be relatively small, thin and light and to fit easily around the wrist. Taking account of those constraints, the Board of Appeal correctly found that the degree of freedom of the designer was high, and not very high.
42      With regard to the three images of electronic wristbands provided by the applicant, it must be noted that they do not call into question the existence of the constraints listed by the Board of Appeal on the degree of freedom of the designer of electronic wristbands and therefore do not call into question its conclusion that the degree of freedom of the designer is merely high.
Assessment of individual character
43      In accordance with the case-law, the individual character of a design results from an overall impression of difference, or lack of ‘déjà vu’, from the point of view of an informed user in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions (judgment of 29 October 2015, Roca Sanitario v OHIM — Villeroy & Boch (Single control handle faucet), T‑334/14, not published, EU:T:2015:817, paragraph 16).
44      In the present case, the Board of Appeal found, first of all, relying on the judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic (C‑281/10 P, EU:C:2011:679, paragraph 74), and on earlier decisions of the Third Board of Appeal, that the comparison between the designs had to be based on the designs as they were described and reproduced in the respective applications for registration.
45      With regard to the comparison of the designs at issue in the present case, the Board of Appeal pointed out that the Invalidity Division had found that the contested design and the prior design differed in several features, such as the presence of the oval button embedded on the top surface, the use of transparent material and the absence of ornamentation on the outer surface of the contested design.
46      Moreover, in response to the applicant’s argument, the Board of Appeal indicated that, even if the button on a wristband had a functional purpose, as was argued by the applicant, it could still be designed and situated on the product in various ways and that numerous configurations of that button were possible.
47      Furthermore, with regard to the applicant’s argument that transparent material was common to both designs and was indispensable for the operation of the display when in its ‘on’ or activated mode, the Board of Appeal stated that, on the basis of the designs as they had been registered, it appeared that, with the exception of the silver or metal clasp, the material of the contested design was entirely transparent, with several technical elements being visible through it, while nothing indicated that the material from which the prior design was made was transparent in any of its parts.
48      As regards the ornamentation of the designs at issue, the Board of Appeal noted that the contested design did not contain, other than the transparent material used, any notable ornamentation, except for a rectangle on the top side of the wristband containing numerous small white squares (or rectangles), while the prior design contained indications of time and measurement and a figure of a man diving. According to the Board of Appeal, the prior design also had thin lines running around the wristband on both sides and a lighter-coloured thin line running around the wristband in the middle of its outer surface.
49      As regards the clasps of the two wristbands, the Board of Appeal took the view that in the contested design the silver or metal clasp was shorter than that of the wristband in the prior design.
50      The Board of Appeal noted, lastly, that, as could be seen in the side views of the designs at issue, in the prior design the wristband was noticeably thinner than that in the contested design.
51      The Board of Appeal concluded that, by reason of those differences, the designs at issue produced a different overall impression on the informed user.
52      In the first place, the applicant submits that the Board of Appeal could not rely on the judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic (C‑281/10 P, EU:C:2011:679, paragraph 74) in order to find that the comparison between the designs at issue had to be based on the designs as they were described and reproduced in the applications for registration of those designs because that did not follow from that judgment. The Court of Justice, he argues, pointed out in paragraph 73 of that judgment that it was not wrong, in the assessment of the overall impression of the designs at issue, to take account of the products actually marketed and corresponding to those designs. The applicant argues that a true and real representation or sample of a design the registration of which is based on a computer-generated drawing, as is the case with the prior design, should not have been ignored in the overall assessment. The Board of Appeal, however, ignored the ‘fully-fleshed representations … [which] assist in understanding and appreciating the [prior] design in its life form’. The Board of Appeal also failed, in his view, properly to assess the explanations which the applicant had lodged before it relating to that design and to what it would look like in its finished state, in both its on and off positions.
53      Admittedly, it follows from the judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic (C‑281/10 P, EU:C:2011:679, paragraphs 73 and 74) that it is possible to take into account, in order to compare designs, the products actually marketed and corresponding to those designs, at least for illustrative purposes, in order to confirm the conclusions already drawn from the assessment of the designs as described and represented in the applications for registration. However, as the intervener notes, the applicant did not provide any such products. He had, admittedly, provided, in order to prove the existence of a prior design, images representing his products before the Invalidity Division (paragraph 4 of the contested decision). However, the Invalidity Division properly did not take account of them in so far as those images were undated (paragraph 7 of the contested decision). The applicant did not dispute that assessment of the Invalidity Decision before the Board of Appeal, which, moreover, endorsed that assessment (paragraph 27 of the contested decision).
54      With regard to the explanations relating to the features of the prior design which the applicant provided before the Board of Appeal and which the Board of Appeal, it is submitted, should have taken into account, it must be recalled that it follows implicitly from the contested decision that the Board of Appeal disregarded them on the ground that, in those explanations, the applicant claimed features which did not appear in the representations of that design.
55      In accordance with the case-law, the comparison of the overall impressions produced by the designs must relate solely to the elements actually protected, without taking account of the features excluded from the protection (see judgment of 29 October 2015, Single control handle faucet, T‑334/14, not published, EU:T:2015:817, paragraph 58 and the case-law cited). In the present case, the protected features of the prior design are those which feature in the representations of the prior design, reproduced in paragraph 4 above, which have been made available to the public. The applicant argued, in essence, in the explanations which he provided before the Board of Appeal, that the electronic features and the wristband display were hidden unless it was switched on or activated. He also explained that the horizontal lines on the surface of the wristband were neither real nor static but that they symbolised a polarising filter, that the diver indicated that the wristband may be waterproof and that the earlier wristband incorporated a transparent material which was essential for the operation of its display when it is switched on or activated. Those features of the prior design, claimed by the applicant in his explanations before the Board of Appeal, are, however, not clear from the representations of that design.
56      The prior design represents a thin and opaque wristband with a metallic clasp. On that wristband are indications of time and measurement, a figure of a man diving, thin lines running around the wristband on both sides and a lighter-coloured thin line running around the wristband in the middle of its outer surface. It is those features of the prior design which are visible in the representations of it which are protected and not those which are claimed in the applicant’s explanations presented before the Board of Appeal.
57      Furthermore, as regards the applicant’s argument that, in essence, the explanations which he presented before the Board of Appeal should have been taken into account because it was difficult for him to represent the prior design, which was new in 2004, and because the design applications allowed only a very limited description, it must be recalled, as EUIPO did during the hearing, that the applicant would, inter alia, have been able to use the dotted lines to represent the unclaimed features of the design, as is suggested by paragraph 11.4 of the Examination Guidelines for Community Designs adopted by Decision EX-03-9 of the President of OHIM, of 9 December 2003, headed ‘Format of the Representation of the Design’ (see, in that regard, judgment of 14 June 2011, Sphere Time v OHIM — Punch (Watch attached to a lanyard), T‑68/10, EU:T:2011:269, paragraphs 59 to 64). Thus, contrary to what the applicant contends, a written explanation of the prior design was not necessary.
58      The Board of Appeal therefore acted correctly in rejecting the explanations relating to the features of the prior design that the applicant had presented before it.
59      The circumstance, claimed by the applicant, that a number of those explanations had been given in the application for registration is not relevant. Only the representations reproduced in paragraph 4 above were published and thus made available to the public. Accordingly, even if a number of those explanations were already contained in the application for registration, which is something that the applicant has not, moreover, established, they could not be taken into account.
60      In the second place, the applicant submits that the Board of Appeal gave undue weight to the presence and positioning of the oval button on the contested design. The Board of Appeal, in his view, failed to have any, or any sufficient, regard to the applicant’s argument that the informed user will essentially see the button on the contested design as being common and functional rather than as having aesthetic appeal.
61      That argument cannot be accepted. The Board of Appeal replied, in paragraph 39 of the contested decision, to the applicant’s argument that the oval button on the contested design served only a functional purpose. The Board of Appeal correctly took the view that the fact that that button served a functional purpose did not preclude it from being capable of being regarded as a differentiating factor in so far as that button could be placed on a wristband in different ways and could have different shapes and sizes.
62      In the third place, the applicant argues that the Board of Appeal’s finding that the prior design does not use transparent or translucent material was erroneous, as such a material is necessary for the operation of the display of all electronic wristbands.
63      Contrary to what the applicant contends, the Board of Appeal did not find that the prior design did not use transparent or translucent material but that, with regard to the prior design as registered, there was nothing to indicate that the material which comprised that design was transparent in any of its parts. Even if the electronic wristband of the prior design uses transparent material because it is necessary for the operation of the display of the information provided by an electronic wristband, that is not visible on the prior design as registered. That design has an opaque aspect. The internal components of the prior design are not visible. That design does not therefore appear to be composed of transparent material, in contrast to the contested design.
64      In the fourth place, the applicant submits that the Board of Appeal’s findings regarding the colours of the designs at issue are wrong and inconsistent. The Board of Appeal’s finding, in paragraph 41 of the contested decision, that the contested design is reproduced in black and white, whereas the illustrations of the prior design are in colour, is, he argues, erroneous, given that the two designs at issue are represented in black and white. According to the applicant, even supposing that finding to be correct, it would be incompatible with the finding, made in paragraph 40 of the contested decision, that the contested design is almost entirely transparent. The Board of Appeal, he claims, erred in law in the contested decision by placing reliance on a supposed difference in colour between the designs at issue. Its reasoning in this regard was, moreover, hesitant and inconsistent. In his view, that lack of clarity constitutes, of itself, an infringement of the obligation to state reasons.
65      The Board of Appeal was correct in stating that the contested design was reproduced in black and white, while the illustrations of the prior design were in colour, given that, in the representations of the prior design reproduced in paragraph 4 above, the wristband is covered with a light green colour. In any event, the Board of Appeal also stated that the actual colourings of the prior design were irrelevant in so far as the assessment of the overall impression had to be based solely on the features disclosed in the contested design. Therefore, it did not take account of the green colour of the prior design as being a differentiating factor between the designs at issue. It assessed the prior design as if it was represented in black and white. Furthermore, contrary to what the applicant argues, the finding that the contested design is represented in black and white does not contradict the finding that it appears that the material of the contested design is entirely transparent. That design appears to be almost entirely transparent because its internal components are visible.
66      In the fifth place, the applicant argues that the Board of Appeal erred in taking the view that the light green colour of the prior design constituted one of its features, whereas it merely serves to indicate the lighting process which leads to the display screen. Furthermore, he submits, the line running down the centre of the wristband is part of the invisible wire-mesh grid in the polarising filter. It therefore does not constitute, as such, a feature of the prior design. If that were the case, it would not in any way relate to a significant feature.
67      It should be recalled that the Board of Appeal did not take the view that the green colour was a feature of the prior design. The Board of Appeal, furthermore, correctly pointed out that the prior design, as it was represented, showed a thin line running along the wristband in the middle of its outer surface. That line is distinct because it is clearer than the rest of the wristband. Furthermore, it will not go unnoticed by an informed user given its position and length.
68      In the sixth place, the applicant submitted, during the hearing, that the essence of the prior design was its shape and its clasp. The shape of the prior design is very similar to that of the contested design. Furthermore, according to the applicant, the prior design’s clasp, which is a very significant element of that design from an aesthetic point of view, will be perceived by the informed user as being highly similar to that of the contested design.
69      It must be recalled that electronic wristbands must have a circular shape so as to fit the wrist. Consequently, that common feature of the designs at issue will have only minor importance in the overall impression that those designs make on the informed user (see, to that effect, judgment of 18 March 2010, Grupo Promer Mon Graphic v OHIM — PepsiCo (Representation of a circular promotional item), T‑9/07, EU:T:2010:96, paragraph 72).
70      Furthermore, the Board of Appeal rightly pointed out that the clasp of the contested design was shorter than that of the wristband of the prior design. The clasps of those designs are, however, similar overall, given that they have a quite similar shape and that they both appear to be of metal or silver. However, contrary to what the applicant argues, this is not a very important element of the designs at issue. It is clear from the case-law that the overall impression produced by a design on the informed user must necessarily be determined also in the light of the manner in which the product in question is used (see judgment of 14 June 2011, Watch attached to a lanyard, T‑68/10, EU:T:2011:269, paragraph 78 and the case-law cited). When using an electronic wristband, the informed user attaches more importance to the part of the wristband which displays the data than to the clasp of that wristband. Furthermore, it is clear from the representations of the designs at issue that the contested design is larger and thicker than the prior design. It is also evident that the contested design features a large oval button placed prominently on the surface of the wristband. In addition, the internal components of the contested design are visible, which gives it a more technical aspect than the prior design, which appears as opaque and elegant. Lastly, the contested design has less ornamentation than the prior design, on which the image of a diver and a line running along the wristband are clearly visible. By reason of such differences, the overall impression produced by the contested design on the informed user will be clearly different to that produced by the prior design, even taking account of the fact that the degree of freedom of the designer of electronic wristbands is high.
71      In the seventh place, the applicant argues that the prior design enjoys a high degree of protection because it was, at the time of its registration, a significant advance in relation to the prior art. In support of that argument the applicant relies on a judgment of the Court of Appeal (England and Wales).
72      That argument cannot be accepted. It does not follow from Regulation No 6/2002 that it is necessary to take into account the fact that the prior design was, at the time of its registration, a significant advance in relation to the prior art in order to determine whether the contested design has an individual character. Furthermore, with regard to the national judgment invoked by the applicant, it must be recalled that the legality of decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 6/2002, as interpreted by the Courts of the European Union, and not on the basis of national decisions, even where the latter are based on provisions analogous to those of that regulation (see, by analogy, judgment of 29 October 2015, Éditions Quo Vadis v OHIM — Gómez Hernández (‘QUO VADIS’), T‑517/13, not published, EU:T:2015:816, paragraph 46 and the case-law cited). In addition, the new and unusual character of the first design does not prevent the informed user from perceiving the differences in subsequent designs (see, to that effect, judgment of 21 May 2015, Senz Technologies v OHIM — Impliva (Umbrellas), T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 95). Lastly, and in any event, it must be recalled that the applicant has not proved that his design was, at the time of its registration, a significant advance in relation to the prior art (see paragraph 26 above) and that, moreover, he does not claim to have done so.
73      Moreover, at the hearing, the applicant stated that EUIPO had accepted the date of 22 June 2012 as the date of priority of the contested design, this being the date on which the intervener filed the patent application with the United States Patent and Trademark Office (USPTO) for the contested design. EUIPO, according to the applicant, therefore found that the photograph of the contested design, reproduced in paragraph 2 above, was equivalent to the outline in that patent application. According to the applicant, EUIPO therefore should have found that the prior design, which is also an outline, was in essence equivalent to the photograph of the contested design.
74      In that regard, suffice it to note that the outline in the patent application filed with USPTO for a transparent wristband is indeed equivalent to the photograph of the contested design featured in paragraph 2 above and that that outline is not more similar to the prior design than is the photograph reproduced in paragraph 2 above. The applicant’s argument must therefore be rejected as unfounded, without it being necessary to examine whether it is inadmissible, as has been argued by EUIPO.
75      It follows from all of the foregoing that the third plea in law must be rejected and, consequently, that the action must be dismissed in its entirety.
Costs
76      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.
77      Since the applicant has been unsuccessful, he 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 (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Mr Thomas Murphy to pay the costs.
Gratsias
Dittrich
Xuereb
Delivered in open court in Luxembourg on 4 July 2017.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.