62024TJ0066_RES
Case T‑66/24
Lidl Vertriebs GmbH & Co. KG
v
European Union Intellectual Property Office (EUIPO)
Judgment of the General Court (Second Chamber) of 12 March 2025
(Community design – Invalidity proceedings – Registered Community design representing a LED light bulb – Disclosure of the earlier design not taken into account – Article 7(2) of Regulation (EC) No 6/2002 – Requirements – Burden of proof)
Community designs – Grounds for invalidity – No individual character – Disclosure to the public – Exception – Disclosure by the designer or his or her successor in title – Conditions – Earlier design producing the same overall impression as the contested design, without necessarily being identical
(Council Regulation No 6/2002, Arts 5, 6, 7(2) and 25(1)(b))
(see paragraphs 24-30, 34-41, 65)
Community designs – Grounds for invalidity – Lack of novelty – No individual character – Disclosure to the public – Exception – Disclosure by the designer or his or her successor in title – Proof of the disclosure
(Council Regulation No 6/2002, Arts 7(2) and 25(1)(b))
(see paragraphs 45-47)
Community designs – Grounds for invalidity – Lack of novelty – No individual character – Disclosure to the public – Exception – Disclosure by the designer or his or her successor in title – Preliminary and different examination from that of the grounds for invalidity
(Council Regulation No 6/2002, Arts 7(2) and 25(1)(b))
(see paragraphs 67, 68)
Résumé
By that judgment, the General Court dismisses the applicant’s action and clarifies the requirements for the application of the exception according to which disclosure of a Community design by the designer or his or her successor in title is not taken into account within the 12 months prior to the application for registration, as laid down in Article 7(2) of Regulation No 6/2002. (
1
)
Liquidleds Lighting Corp., the intervener, has been the proprietor of a Community design representing a LED light bulb since 2017. In 2021, Lidl Vertriebs GmbH & Co. KG, the applicant, filed an application for a declaration of invalidity of that design with the European Union Intellectual Property Office (EUIPO) on the basis of two earlier designs. In its decision, the Invalidity Division of EUIPO did not, however, grant that application.
Likewise, the Board of Appeal of EUIPO dismissed the appeal brought by the applicant against that latter decision, on the ground that, first, disclosure of the first earlier design was covered by the scope of the exception provided for in Article 7(2) of Regulation No 6/2002 and that, second, the applicant had not demonstrated disclosure of the second earlier design.
The applicant therefore brought an action for annulment before the Court against the decision of the Board of Appeal.
Findings of the Court
In the first place, the Court rules on the application of the exception provided for in Article 7(2) of Regulation No 6/2002. It notes that that exception applies both in relation to the requirement for protection relating to the novelty of a design (
2
) and to the requirement for protection relating to its individual character. (
3
) In that regard, it observes that if the lack of novelty means that an identical design has been disclosed, the lack of individual character means that a design producing the same overall impression on the informed user has been disclosed. It is therefore only where the exception at issue is applied in the examination of novelty that disclosure which is likely not to be taken into account concerns an earlier design identical to the contested design. Although lack of individual character may also follow from disclosure of an identical earlier design, the requirement relating to individual character does not, as such, require the lack of disclosure of an identical earlier design but that of an earlier design producing the same overall impression. Therefore, the application of Article 7(2) of Regulation No 6/2002, in connection with Article 6 of that regulation, does not require that the earlier design, disclosure of which is likely not to be taken into account, be identical to or the same as the contested design.
Such an interpretation is apparent from the wording of that article, its context and the aims of Regulation No 6/2002. First, the Court finds that the wording of that article does not use the word ‘identical’, nor does it refer to the concept of ‘identity’, and that the expression ‘same design’ is not included in that provision either. Thus, that wording is confined to establishing an admittedly close link between a registered design and an earlier design disclosed by the designer or his or her successor in title during the grace period. That wording does not make it possible to rule out the possibility that such a link may validly exist both in the case where those designs are identical and in the case where they produce the same overall impression.
Second, as regards the context, the Court states that Article 7(2) of Regulation No 6/2002 and recital 20 of that regulation refer to the examination both of the novelty and of the individual character of the contested design. For the purpose of examining the individual character of the contested design, a disclosure which is likely not to be taken into account concerns a design which produces the same overall impression as the contested design.
Third, the Court observes that the exception provided for in that article seeks to protect the interests of the designer and his or her successor in title and to encourage innovation and development of new products and investment in their production. The pursuit of those aims would, however, be undermined if, after having tested a design in the market place, the designer or his or her successor in title, who wishes to rely on the grace period, was, in any event, required to apply for registration of the design as it was initially tested in the market place, without being able to take into account the specific results of that test, in order to make any necessary adjustments to the design to ensure its commercial success, and without therefore being able to apply for registration of a design which, although not identical, would produce the same overall impression as the one initially tested in the market place. Moreover, by registering a design which is not identical to the design tested in the market place, the designer or his or her successor in title would run the risk of having his or her own disclosure of that earlier design, during the grace period, relied upon against him or her.
In addition, the Court observes that the question relating to the disclosure of the earlier design is a preliminary question the resolution of which is necessary in order to assess whether the designs at issue are identical or produce the same overall impression. It is not necessary to compare one design with another to establish both the novelty and the individual character of the first design, unless the second has been made available to the public and unless taking account of that disclosure is not excluded pursuant to Article 7(2) of Regulation No 6/2002. Accordingly, the Court disregards the applicant’s arguments relating to the comparison of the contested design with the earlier design.
In the second place, as regards the issue of the burden of proof, the Court notes that it is for the applicant for a declaration of invalidity to demonstrate that the contested design does not fulfil the requirements for protection and, in particular, that it was actually disclosed before the date of filing of the application for registration. Nevertheless, for Article 7(2) of Regulation No 6/2002 to be applicable, the owner of the design that is the subject of the application for invalidity must establish that he or she is the designer of the design upon which that application is based or his or her successor in title, that that design has been disclosed by himself or herself or by a third person and that that disclosure took place during the grace period. In the present case, it was therefore, first, for the applicant to demonstrate that the contested design did not meet the requirements for protection and, next, for the intervener to rely on the exception provided for in Article 7(2) of Regulation No 6/2002 and to demonstrate that the requirements for the application of that exception have been met. Accordingly, the Court finds that, by examining the observations submitted by the applicant to rebut the application of that exception, the Board of Appeal has not transferred the burden of proof to the applicant, but applied the general principle of protection of the rights of the defence and, more specifically, Article 62 of Regulation No 6/2002.
Furthermore, the Court states that the possibility for the applicant of properly submitting observations is not subject to the condition that the explanations and evidence adduced by the intervener to justify the application of Article 7(2) of Regulation No 6/2002 satisfy a particular level of credibility and consistency. On the contrary, it is by its observations that the applicant may bring to the attention of the bodies of EUIPO the reasons why, according to the applicant, the explanations and evidence of the intervener are not credible or consistent. In addition, although the Board of Appeal appeared to suggest that the party which sought to rebut the application of the exception provided for in Article 7(2) of Regulation No 6/2002 should submit supporting evidence, that indication cannot be understood as requiring that such a party necessarily submits evidence in support of its observations. It may confine itself, as the case may be, to making observations on the explanations and evidence produced by the party which relies on the application of that exception.
(
1
)	Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
(
2
)	For the purposes of Article 5 of Regulation No 6/2002.
(
3
)	For the purposes of Article 6 of Regulation No 6/2002.