JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
10 April 2024 (*)
(Community design – Invalidity proceedings – Registered Community design representing part of solar panels – Earlier design – Ground for invalidity – No individual character – Informed user – No different overall impression – Article 6 of Regulation (EC) No 6/2002)
In Case T‑62/23,
Maxeon Solar Pte. Ltd, established in Singapore (Singapore), represented by U. Lüken and J. Bärenfänger, lawyers, authorised to replace SunPower Corporation,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Hamel and J. Ivanauskas, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
ZO,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk (Rapporteur), President, E. Buttigieg and G. Hesse, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 23 November 2023,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Maxeon Solar Pte. Ltd, seeks the annulment and alteration of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 December 2022 (Case R 1588/2021-3) (‘the contested decision’).
Background to the dispute
2        On 11 November 2019, ZO filed with EUIPO an application for a declaration of invalidity of the Community design registered following an application filed on 17 April 2015, for which the date of priority claimed is 20 October 2014, which is represented in the following views:
3        The goods to which the design, in respect of which a declaration of invalidity was sought, is intended to be applied were in Class 23-03 of the Locarno Agreement of 8 October 1968 Establishing an International Classification for Industrial Designs, as amended, and corresponded to the following description: ‘Solar panels (part of)’.
4        The ground relied on in support of the application for a declaration of invalidity was that set out 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, inter alia, in conjunction with Article 6 of that regulation.
5        The application for a declaration of invalidity was based, inter alia, on the earlier design, registered under number 2032581-0005 and represented in the following views:
6        On 16 July 2021, the Invalidity Division upheld the application for a declaration of invalidity.
7        On 16 September 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Invalidity Division.
8        By the contested decision, the Board of Appeal dismissed the appeal on the ground that the contested design was devoid of individual character within the meaning of Article 6 of Regulation No 6/2002.
Forms of order sought
9        The applicant claims, in essence, that the Court should:
–        principally, alter the contested decision in so far as the contested design is valid;
–        alternatively, annul the contested decision;
–        order EUIPO to pay the costs.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
11      In support of the action, the applicant relies on two pleas in law, alleging, first, infringement of Article 3(a) of Regulation No 6/2002 and, secondly, infringement of Article 25(1)(b) of that regulation, read in conjunction with Article 6
thereof.
The first plea in law, alleging infringement of Article 3(a) of Regulation No 6/2002
12      The applicant submits that the Board of Appeal infringed Article 3(a) of Regulation No 6/2002 on the ground that it did not determine whether the frame of the designs at issue had been taken into consideration in assessing the individual character of the contested design.
13      EUIPO disputes the applicant’s arguments.
14      According to the wording of Article 3(a) of Regulation No 6/2002, a ‘design’ is defined as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’.
15      In paragraph 68 of the contested decision, the Board of Appeal considered that protection had not been claimed with regard to the ‘frame’ of the contested design which was represented in broken lines, so that it was appropriate not to take it into account for the purposes of assessing the individual character of that design. It further considered that that frame corresponded to the ‘outer frame’ of the earlier design and that it was therefore appropriate not to take that outer frame into consideration
either. In paragraph 71 of that decision, it noted that the ‘frame’ of the designs at issue was one of the elements on which the informed user would concentrate.
16      The applicant claims that paragraphs 68 and 71 of the contested decision are contradictory. It submits that, on the one hand, paragraph 68 of that decision states that protection had not been claimed in respect of the frame of the contested design which was represented in broken lines and that the outer frame of the earlier design should not be taken into consideration. It maintains that, on the other hand, it is apparent from paragraph 71 of that decision, that the Board of Appeal had taken those frames into account in assessing the individual character of the contested design.
17      In that regard, it should be noted that the designs at issue represent a rectangular shape comprising six columns, which are surrounded by two frames, one being located inside the other.
18      With regard to the earlier design, the Board of Appeal thus identified, in paragraph 67 of the contested decision, a ‘frame around the columns’ and an ‘outer frame’.
19      With regard to the contested design, the Board of Appeal considered that protection had not been claimed in respect of the outer frame represented in broken lines. It thus identified, in paragraph 66 of that decision, only a ‘frame around the columns’.
20      Thereafter, the Board of Appeal considered, in paragraph 68 of the contested decision, that, since the outer frame of the contested design had not been the subject of an application for protection, it was appropriate not to take into consideration the outer frame of the earlier design either.
21      Consequently, it follows from paragraphs 66 to 68 of the contested decision that the Board of Appeal intended to take into account only the inner frames of the designs at issue for the purposes of assessing the individual character of the contested design.
22      In those circumstances, it should be noted, like EUIPO, that the ‘frame’ mentioned in paragraph 71 of the contested decision necessarily refers to the inner frame of the designs at issue.
23      Consequently, it must be stated that paragraphs 68 to 71 of the contested decision are not contradictory and that it is sufficiently clear from that decision that the Board of Appeal did not take into account the outer frames of the designs at issue for the purposes of assessing the individual character of the contested design.
24      In those circumstances, the applicant’s first plea in law must be rejected.
The second plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation
25      The applicant claims that the Board of Appeal was wrong to consider that the contested design lacked individual character. It maintains in that regard that the earlier design was invalid and that, even if it were not, it produces a different overall impression on the informed user from that produced by the contested design.
26      EUIPO disputes the applicant’s arguments.
27      Under Article 25(1)(b) of Regulation No 6/2002, a Community design may be declared invalid if it does not fulfil the requirements of Articles 4 to 9 of that regulation and, in particular, that of novelty and individual character.
28      Under Article 6(1)(b) of that regulation, a design is to be 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 or, if a priority is claimed, the date of priority.
29      Article 6(2) of Regulation No 6/2002 also states that, in assessing that individual character, the degree of freedom of the designer in developing the design is to be taken into consideration.
30      Furthermore, it is apparent from recital 14 of Regulation No 6/2002 that, when assessing whether a design has individual character, account should be taken of the nature of the product to which that design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing that design.
31      The assessment as to whether a Community design has individual character involves an examination 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; secondly, 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; thirdly, the designer’s degree of freedom in developing his or her design, the influence of which on individual character is in inverse proportion; and, fourthly, 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, Visi/one v EUIPO – EasyFix (Display holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 66 and the case-law cited).
32      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 for heating), T‑828/14 and T‑829/14, EU:T:2017:87, paragraph 53 and the case-law cited).
33      The Board of Appeal found that the designs at issue were intended to be applied to solar panels. It thus considered that the informed user was a person who purchased and used such panels and that he or she was familiar with those available on the market, without being an expert or specialist. In addition, it found that the freedom of the designer in the development of solar panels was limited by the technical constraints necessary for the generation of
electricity, but that it was possible to find panels of different shapes, containing cells whose shape, colour and arrangement could also vary. In those circumstances, it considered that, taking into account the shape of the panels, their frame and the arrangement of the cells, the designs at issue produced the same overall impression.
34      In that regard, first, the applicant alleges that the Board of Appeal excluded from the concept of informed user ‘experts and specialists’, such as energy advisors, architects and roofers.
35      However, it should be borne in mind that, the informed user is not an expert or specialist capable of observing in detail the minimal differences that may exist between the designs at issue (judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59). It follows that the Board of Appeal cannot be criticised for not having taken such an expert or specialist into account when defining the informed user.
36      Moreover, it should be noted that, when the concept of informed user includes several groups of people, the fact that one of those groups perceives the designs at issue as producing the same overall impression is sufficient for a finding that the contested design lacks individual character (see, to that effect, judgment of 14 June 2011, Sphere Time v OHIM – Punch (Watch attached to a lanyard), T‑68/10, EU:T:2011:269, paragraph 56).
37      The applicant does not dispute the fact that people who purchase and use solar panels fall within the concept of informed user. Consequently, the circumstance, assuming it is established, that that concept can also include people who, without being experts or specialists, have more advanced knowledge relating to solar panels, is in any case not capable of calling into question the comparison, carried out by the Board of Appeal, of the overall impressions produced by the designs at issue.
38      Secondly, the applicant maintains, in paragraph 16 of the application, that the Board of Appeal incorrectly based itself on the description of the contested design to consider that the frame represented in broken lines was not the subject of the application for protection. However, it is sufficient to note that the Board of Appeal also relied, in that regard, on the fact that that frame was represented in broken lines. The applicant itself acknowledges, in paragraph 14 of the application, by referring to the relevant case-law, that the Board of Appeal should not have taken into account the elements of the contested design represented in broken lines in order to assess its individual character.
39      Thirdly, the applicant alleges that the Board of Appeal did not take into account the fact that the contested design had no frame whereas the earlier design had one. However, it follows from paragraph 22 above that the designs at issue each include an inner frame, which the Board of Appeal took into account in order to assess the overall impression produced by them. Furthermore, since the outer frame of the contested design has not been the subject of an application for protection, the applicant cannot usefully rely, for the purposes of establishing its individual character, on the fact that the earlier design also had such a frame.
40      Fourthly, the applicant alleges that the Board of Appeal did not take into account the fact that the designs at issue had different colours.
41      However, since the contested design is registered in black and white, any colour used in the earlier design is not relevant for the purpose of their comparison, given that no colour has been claimed for the contested design
(see, to that effect, judgment of 10 November 2021,
Eternit v EUIPO – Eternit Österreich (Building panels), T‑193/20, EU:T:2021:782, paragraph 82 and the case-law cited), notwithstanding the fact, relied on in the present case by the applicant, that the latter had also applied for the registration of another design, similar to the contested design, but for which the surface of certain elements was ‘dark or black’ instead of being ‘light or white’.
42      In that regard, it is common ground that the contested design was registered in black and white. Thus, the Board of Appeal was right to consider that the fact that the earlier design contained elements of blue colour had no impact on the assessment of the individual character of the contested design.
43      Furthermore, in so far as the applicant claims that the contested design has a reflective surface, it is sufficient to note that it does not dispute that that surface results from a transparent panel, moreover commonly present on solar panels to allow light to enter them. In those circumstances, it should be noted that the Board of Appeal correctly considered that such a panel was not likely to affect the overall impression produced by that design on the informed user.
44      Fifthly, the applicant claims that the inner frame of the earlier design was larger at the top and at the bottom than at the sides whereas the contested design has ‘bars’ at the top and at the bottom. In addition, it notes that the height of the contested design represents 1.75 times its width whereas the height of the earlier design represents only 1.5 times its width. It states that that difference is all the more noticeable as the earlier design ‘will most likely be used in a landscape format’, given the shape of the solar cells contained therein.
45      However, it should be noted, like the Board of Appeal, that the designs at issue are rectangular in shape, containing six separate columns in which cells are represented. In that regard, it is undisputed that the fact that those columns are composed respectively of rectangles in the case of the contested design and of rows of ‘n’-shaped elements in the case of the earlier design is difficult to perceive for the informed user. Furthermore, it is also undisputed that the freedom of the designer was greater as regards the shape of the solar panels and the arrangement of their cells.
46      Furthermore, although it is true, as the applicant notes, that the Board of Appeal considered that the informed user could perceive the differences between the designs at issue in the event that the corresponding solar panels were placed side by side, it should be noted that such a circumstance does not demonstrate that those designs produce a different overall impression, taking into account the case-law recalled in paragraph 32 above.
47      Lastly, the applicant does not explain why it would follow from the shape of the cells represented in the earlier design that those cells would normally be aligned horizontally so that design ‘[would] most likely be used in a landscape format’.
Moreover, it acknowledged, during the hearing, that it was not certain that that design was actually used in such a way and that that claim was therefore ‘hypothetical’.
48      In those circumstances, the fact that the upper and lower parts of the designs at issue are distinguished either by a thickening of the inner frame or by the presence of ‘bars’ and that they represent rectangles whose proportions are not perfectly identical is not sufficient to confer individual character to the contested design.
49      Consequently, it should be noted that the Board of Appeal correctly considered that the contested design lacked individual character.
50      That conclusion cannot be called into question by the applicant’s argument that the registration of the earlier design was invalid pursuant to Article 25(1)(a) of Regulation No 6/2002, read together with Article 3(a) of that regulation, on the ground that the two views thereof represented parts, not of the same solar panel, but of distinct solar panels whose colours and cells were different.
51      First, it is apparent from the wording of Article 6 of Regulation No 6/2002 that the individual character of the contested design may result from the comparison with ‘any design which has been made available’, regardless of whether that design or model is registered or not (see, to that effect, judgment of 22 September 2021, T i D kontrolni sistemi v EUIPO – Sigmatron (Signalling apparatuses and devices), T‑503/20, not published, EU:T:2021:613, paragraph 30). Consequently, the alleged circumstance that the earlier design was invalid is irrelevant.
52      Secondly, it follows from paragraph 41 above that the colour of the earlier design is irrelevant in the present case. Furthermore, it follows from paragraph 45 above that the specific shape of the cells of the solar panel at issue was difficult to perceive by the informed user. Thus, the fact that it is not certain that the earlier design contained 24 or 37 cells per row and that one of those cells had an ‘n’ or ‘m’ shape cannot be sufficient to change the overall impression produced by that design on the informed user.
53      In those circumstances, it is appropriate to reject the applicant’s second plea in law and, consequently, to dismiss the action in its entirety, without there being any need to rule on the admissibility of the first head of claim disputed by EUIPO.
Costs
54      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. As a hearing took place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Maxeon Solar Pte. Ltd to pay the costs.
Kowalik-Bańczyk
Buttigieg
Hesse
Delivered in open court in Luxembourg on 10 April 2024.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.