JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
10 November 2021 (*)
(Community design – Invalidity proceedings – Community design representing a building panel – Earlier design representing a panel for a noise-reduction wall – Ground for invalidity – No individual character – Sector concerned – Informed user – Degree of freedom of the designer – No different overall impression – Relevance of goods actually marketed – Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002)
In Case T‑193/20,
Eternit, established in Kapelle-op-den-Bos (Belgium), represented by J. Muyldermans and P. Maeyaert, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Eternit Österreich GmbH,
established in Vöcklabruck (Austria), represented by M. Prohaska-Marchried, lawyer,
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 5 February 2020 (Case R 1661/2018-3), relating to invalidity proceedings between Eternit Österreich and Eternit,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov (Rapporteur), President, E. Buttigieg and G. Hesse, Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 10 April 2020,
having regard to the response of EUIPO lodged at the Court Registry on 17 August 2020,
having regard to the response of the intervener lodged at the Court Registry on 21 August 2020,
further to the hearing on 21 April 2021,
gives the following
Judgment
Background to the dispute
1        The applicant, Eternit, is the holder of the Community design filed with the European Union Intellectual Property Office (EUIPO) on 15 September 2014, pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) and registered under number 2538140-0001.
2        The contested design is represented as follows:
1.1
1.2
1.3
1.4
1.5
3        The products to which the contested design is intended to be applied are in Class 25.01 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Panels [building]’.
4        On 12 December 2016, the intervener, Eternit Österreich GmbH, filed an application for a declaration of invalidity of the contested design pursuant to Article 52 of Regulation No 6/2002.
5        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4 to 8 of that regulation.
6        The intervener claimed, inter alia, in its application for a declaration of invalidity, that (i) the design at issue was not new within the meaning of Article 5 of Regulation No 6/2002, (ii) it did not have individual character within the meaning of Article 6 of that regulation and (iii) the features of its appearance were solely dictated by their technical function within the meaning of Article 8(1) of that regulation.
7        On 28 June 2018, the Cancellation Division adopted a decision by which, first, it found that the intervener failed to prove that the contested design was subject to the exclusion from protection laid down in Article 8(1) of Regulation No 6/2002 and, secondly, it declared the contested design invalid on the ground that it had no individual character within the meaning of Article 6 of Regulation No 6/2002 in relation to a design disclosed on 4 March 2013, that is to say before the filing date of the application for registration of the contested design, in a brochure entitled Lärmschutz, in respect of ‘noise reduction wall’ type panels, available on the website ‘http://www.rieder.at’, and which was reproduced as follows:
8        On 23 August 2018, the applicant lodged an appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Cancellation Division.
9        By decision of 5 February 2020 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal, finding that the contested design lacked individual character within the meaning of Article 6 of Regulation No 6/2002, on the ground that, for the informed user, it was similar overall to the earlier design.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
11      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
12      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation. That plea consists of three parts, alleging errors of assessment made by the Board of Appeal, first, in the definitions of the sector concerned and the informed user, secondly, in determining the designer’s degree of freedom in that sector and, thirdly, in the finding relating to the overall impressions produced by the designs at issue.
13      It should be noted at the outset that, in paragraph 15 of the contested decision, the Board of Appeal stated that the earlier design had been made available to the public before the filing date of the application for registration of the contested design, within the meaning of Article 7(1) of Regulation No 6/2002. That finding is not disputed by the parties. Therefore, the question whether the contested design is devoid of individual character within the meaning of Article 6 of Regulation No 6/2002 must be assessed in the light of the earlier design.
The first part concerning the definitions of the sector concerned and the informed user
14      In paragraph 18 of the contested decision, the Board of Appeal noted that the designs at issue were panels used in the construction sector. Thus, regardless of whether those types of panels should be characterised as ‘noise reduction wall[s]’, as the applicant had claimed in respect of the earlier design, or as ‘fibrous façade panels for buildings’, as is, according to the applicant, more specifically the case of the contested design, they show the same exterior part of a product, namely a building panel. Furthermore, the Board of Appeal considered that, in accordance with Article 10(1) of Regulation No 6/2002, the protection conferred by a Community design extended to ‘any design’ which did not produce a different overall impression on the informed user and, accordingly, a design’s protection did not depend on the nature of the product in which that design was incorporated or to which it was applied. It based that reasoning on the judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles (C‑361/15 P and C‑405/15 P, EU:C:2017:720).
15      In paragraphs 19 to 21 of the contested decision, the Board of Appeal found that the informed user referred to in Article 6 of Regulation No 6/2002 was, in the present case, the professional in the construction sector, such as a constructor, a real estate developer or an architect. That professional has a certain knowledge of various building panels, and displays a relatively high level of attention. The Board of Appeal noted in that regard that the categorisation as ‘fibrous façade panels for buildings’ recommended by the applicant for the sector concerned by the contested design does not substantially influence the definition of the informed user.
16      The applicant takes the view that the Board of Appeal erred in law by failing to define the sector concerned and the informed user more precisely. In its view, the sector concerned by the contested design should be limited to the sector of ‘façade panels for buildings’, which has very specific characteristics, rather than to that of building panels in general. The informed user is therefore the user of ‘façade panels for buildings’ who will generally make a direct comparison of the designs in question by reading magazines and websites or by inspecting the products or samples in retail outlets.
17      The applicant considers, moreover, that the findings in the judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles (C‑361/15 P and C‑405/15 P, EU:C:2017:720), apply only to the expression ‘sector concerned’ in Article 7(1) of Regulation No 6/2002, with the result that they should be understood as indicating that it is not necessary for the informed user of the product in which the contested design is incorporated or to which it is applied to know the earlier design when that design is incorporated into a product of an industrial sector which is different from that concerned by the contested design or is applied to such a product. If all the designs, including those belonging to different sectors, were to be taken into consideration in order to examine the individual character of the contested design, that consideration would be relevant only in the context of the fourth and final stage of the analysis, namely the stage relating to the comparison of the overall impressions of the designs at issue. By contrast, the first three stages of the analysis, relating to the identification of the sector concerned, the informed user and the degree of freedom which the designer enjoys in that sector should be carried out only in relation to the contested design. Furthermore, that judgment allows, or even requires, account to be taken of the products actually marketed in which the contested design is incorporated or to which it must be applied.
18      EUIPO and the intervener dispute the applicant’s arguments.
Applicable principles
19      As a preliminary point, it is necessary to specify, in the light of the different arguments of the parties in that regard, the analytical framework for assessing the individual character of the contested design within the meaning of Article 6 of Regulation No 6/2002. In particular, it is necessary to clarify whether the sector concerned, the informed user and the designer’s degree of freedom must be defined in relation to the contested design alone. Moreover, it must be specified whether the goods actually marketed in which the designs at issue are incorporated or to which they are applied are relevant to the assessment of the individual character of the contested design.
20      In the first place, as regards the analytical framework for assessing the individual character of the contested design within the meaning of Article 6 of Regulation No 6/2002, it should be recalled that Article 6(1)(b) of Regulation No 6/2002 provides, inter alia, that a registered Community 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 filing date of the application for registration. Article 6(2) of Regulation No 6/2002 states that, in assessing individual character, the degree of freedom of the designer in developing the design is to be taken into consideration.
21      The assessment of the individual character of the contested design for the purposes of the abovementioned provision 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; 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, to that effect, judgment of 13 June 2019, Visi/one v EUIPO – EasyFix (Door hanger for vehicles), T‑74/18, EU:T:2019:417, paragraph 66 and the case-law cited).
22      It should be noted that while the first stage of the analysis, namely the determination of the sector of the products in which the design is intended to be incorporated or to which it is intended to be applied, is not made expressly clear by the wording of Article 6(1) of Regulation No 6/2002, that stage is in actual fact a necessary precondition for defining the informed user and the freedom of the designer, those latter concepts being expressly referred to in Article 6(1) and (2) of Regulation No 6/2002. In that regard, the Court has already held that the identification of the product covered by the design at issue enabled the informed user and the degree of freedom of the designer in developing the design to be determined (judgments 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 56, and of 21 June 2018, Haverkamp IP v EUIPO – Sissel (Foot mat), T‑227/16, not published, EU:T:2018:370, paragraph 39).
23      In the second place, as regards the question of determining at which stage of the assessment of the individual character of the contested design for the purposes of Article 6 of Regulation No 6/2002 each of the designs at issue is to be taken into consideration, it must be pointed out that, since the subject of the assessment under Article 6(1)(b) of Regulation No 6/2002, in connection with Article 25(1)(b) of that regulation, is the individual character of the contested design, it is logical to determine the sector concerned, the informed user and the degree of freedom of the designer in developing the contested design in the light of the products in which that design is intended to be incorporated or to which it is intended to be applied.
24      It is apparent from recital 14 of Regulation No 6/2002 that the assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him or her by the existing design corpus, taking into consideration the nature of the product to which ‘the 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 the ‘design’. The reference in the singular to the ‘design’ in order to determine the industrial sector to which ‘it’ belongs and the degree of freedom of the designer in developing it, as opposed to the use of the concept of ‘design corpus’ which covers all of the existing designs, clearly indicates that the first three stages of the analysis, namely those relating to the determination of the sector concerned, the informed user and the designer’s degree of freedom, must be carried out only in relation to the design the individual character of which is assessed, that is to say, in the present case, the contested design.
25      By contrast, the earlier design is of no relevance to the examination of the first three stages of the assessment referred to in paragraph 21 above. The individual character of the contested design may be destroyed by an earlier design intended to be applied to products belonging to a completely different sector to that of the products concerned by the contested design. Thus, it follows from the wording of the first sentence of Article 7(1) of Regulation No 6/2002 that the effect of that provision is that the question of whether there is disclosure of a design to the public is dependent only upon how that disclosure is in fact achieved and not upon the product in which that design is intended to be incorporated or to which it is intended to be applied (judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 99). The Court has pointed out that there is nothing in that provision to permit the conclusion that it is necessary for an informed user of the product in which the contested design is incorporated or to which it is applied to know the earlier design when it is incorporated in a product in an industry sector that differs from the relevant sector for the contested design, or is applied to such a product (judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 131). Therefore, since the earlier design may fall within a completely different sector, characterised by a different informed user and freedom of the designer, it is irrelevant for the purposes of determining the sector concerned by the contested design, the informed user of that design and the freedom of its designer.
26      The applicant is therefore correct in claiming that the first three stages of the analysis are carried out in relation to the contested design alone, which EUIPO, moreover, also accepts.
27      As regards the fourth and final stage of the assessment of the individual character of the contested design, account must be taken of both the contested design and the earlier design. As recalled in paragraph 21 above, that stage consists in a comparison of the overall impressions produced by the designs at issue, which means that each of them must be taken into account.
28      In the third place, as regards the question whether the goods actually marketed in which the designs at issue are incorporated or to which they are applied are relevant to the assessment of the individual character of the contested design within the meaning of Article 6 of Regulation No 6/2002, it should be noted that, as the applicant rightly submits, the case-law allows, in certain circumstances, the possibility of taking into account the goods actually marketed which are concerned by the designs at issue.
29      According to the case-law, it is not mistaken, in the assessment of the overall impression of the designs at issue, to take account of the goods actually marketed which correspond to those designs (see, to that effect, judgments of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 73, and of 29 April 2020, Bergslagernas Järnvaru v EUIPO – Scheppach Fabrikation von Holzbearbeitungsmaschinen (Wood-splitting tool), T‑73/19, not published, EU:T:2020:157, paragraph 39).
30      It is however only appropriate to take into account the goods actually marketed, for illustrative purposes when making the comparison of the overall impressions, to the extent that the goods correspond to the designs as registered (judgments of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraphs 73 and 74, and of 6 June 2019, Porsche v EUIPO – Autec (Motor vehicles), T‑209/18, EU:T:2019:377, paragraph 76).
31      It must also be observed that, in accordance with 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’. Protection of a design for the purposes of Article 4(1) of Regulation No 6/2002 therefore consists in the protection of the appearance of a product. In that regard, it follows from recital 12 of Regulation No 6/2002 that protection should not be extended to those component parts which are not visible during normal use of a product, nor to those features of such part which are not visible when the part is mounted (see, to that effect, judgments of 9 September 2014, Biscuits Poult v OHIM – Banketbakkerij Merba (Biscuit), T‑494/12, EU:T:2014:757, paragraphs 22 to 24, and of 3 October 2014, Cezar v OHIM – Poli-Eco (Insert), T‑39/13, EU:T:2014:852, paragraph 40).
32      Thus, if the graphic or photographic representation of the design at issue does not, on its own, make it possible to determine which aspects of it are visible or the way in which the design will be perceived visually, it is permissible to take into account, precisely for that purpose, the products actually marketed or the way in which they are used.
33      It follows that the goods actually marketed to which the designs at issue are applied or in which they are incorporated can be taken into consideration only for illustrative purposes in order to determine the visual aspects of those designs. However, such consideration is permitted only on condition that the products actually marketed correspond to the designs as registered. Thus, a product which is actually marketed cannot be taken into account if the design applied to it or in which it is incorporated differs from the design as registered or if it displays features which are not clearly apparent from the graphic representation of that design, as registered.
34      The first part of the single plea in law must be examined in the light of those principles.
The sector concerned
35      As is apparent from paragraph 21 above, the first stage in the assessment of the individual character of the contested design consists in determining the sector of the products concerned by that design.
36      To that end, account must be taken of the indication of the products in which the contested design is intended to be incorporated or to which it is intended to be applied, as set out in the application for registration. Indeed, in accordance with Article 36(2) of Regulation No 6/2002, the application for registration must contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied.
37      Account should also be taken, where appropriate, of the design itself, in so far as it specifies the nature of the product, its intended purpose or its function. Taking into account the design itself may enable the product to be placed within a broader category of goods indicated at the time of registration and, therefore, to determine the informed user and the degree of freedom of the designer in developing his or her design (judgments of 18 March 2010, Representation of a circular promotional item, T‑9/07, EU:T:2010:96, paragraph 56, and of 21 June 2018, Foot mat, T‑227/16, not published, EU:T:2018:370, paragraph 39).
38      In the present case, first, it is apparent from the description accompanying the application for registration of the contested design that the goods covered by it were described as ‘panels [building]’ in Class 25.01 of the Locarno Agreement. Thus the applicant itself chose not to limit the registration of the contested design solely to façade panels for buildings. The ‘panels [building]’, indicated in that application, relate without restriction to the construction sector in the broad sense.
39      Secondly, as regards the representations of the contested design, reproduced in paragraph 2 above, it must be stated that they also do not reveal the nature of the products in which that design is intended to be incorporated or to which it is intended to be applied, their intended purpose or their function. There is nothing in that design to indicate that it is intended to be applied solely to façade panels for buildings, to the exclusion of any other building panel.
40      In those circumstances, the Board of Appeal was entitled to find, without committing any error, that the sector concerned was that of building panels.
41      The applicant seeks to call that conclusion into question, emphasising, in essence, the fact that the goods which it places on the market and to which it applies the contested design are exclusively façade panels for buildings. That argument is thus based on the premiss that the sector concerned by the contested design must be determined solely in relation to the products actually placed on the market.
42      However, that premiss cannot be accepted. First, such a premiss is not based on any provision of Regulation No 6/2002. Moreover, it would have the consequence of rendering irrelevant the information which must necessarily appear in the application for registration, as listed in Article 36(2) of Regulation No 6/2002, by replacing it with information taken from the market’s temporary situation. The latter is, by definition, likely to evolve, since the range of products, as actually marketed, may vary considerably over time depending on a multitude of factors, such as the proprietor’s commercial strategy, supply and demand, or even the success or failure on the market of a given product.
43      Secondly, whereas, in accordance with the principles recalled in paragraphs 29 to 33 above, it is not incorrect to take into account the products actually placed on the market, that consideration is permitted only by way of illustration in order to determine the visual aspects of the design at issue, and on condition that those products correspond to the design as registered. Thus, if the examination of the contested design, as registered, itself shows that it is a particular category within a broader category of goods indicated at the time of registration, that particular category may be taken into account (judgment of 18 March 2010, Representation of a circular promotional item, T‑9/07, EU:T:2010:96, paragraphs 59 and 60). By contrast, if the examination of the contested design does not itself show that it relates to a more restricted category of products, as in the present case, the mere reference to the products actually placed on the market cannot lead to a different definition of the sector concerned.
44      The applicant also observes correctly that the Board of Appeal erred in referring, when defining the sector concerned, in paragraphs 17 and 18 of the contested decision, both to the contested design and to the earlier design. As is apparent from paragraphs 23 to 27 above, during the first stage of the analysis, it is appropriate to limit the analysis to the contested design only, which, moreover, EUIPO does not dispute.
45      However, that lack of precision has no impact on the lawfulness of the contested decision, since the Board of Appeal has defined correctly the sector concerned for the assessment of the individual character of the contested design, namely that of building panels, as is apparent from paragraphs 36 to 40 above.
46      Therefore, the applicant’s arguments concerning the definition of the sector concerned by the contested design must be rejected.
The informed user
47      According to the case-law, the concept of the ‘informed user’ must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks at issue, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his or her personal experience or his or her extensive knowledge of the sector in question (judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 53).
48      Moreover, the concept of the informed user, created precisely for the purposes of analysing whether a design has individual character under Article 6 of Regulation No 6/2002, can only be defined in general terms, as a reference to a person with standard characteristics, and not on a case-by-case basis in relation to a particular design (see, by analogy, judgment of 6 June 2019, Motor vehicles, T‑209/18, EU:T:2019:377, paragraph 37).
49      As regards more specifically the informed user’s level of attention, while the informed user is not the well informed and reasonably observant and circumspect average consumer who normally perceives a design as a whole and does not proceed to analyse its various details, he or she is not either an expert or specialist capable of observing in detail the minimal differences that may exist between the designs at issue. Thus, the qualifier ‘informed’ suggests that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his or her interest in the products concerned, shows a relatively high level of attention when he or she uses them (see judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59).
50      In the present case, in the light of the case-law referred to in paragraphs 47 to 49 above, and since the sector concerned by the contested design is that of building panels, the Board of Appeal was entitled to take the view that the informed user was a professional in the construction sector, for example a constructor, a real estate developer or an architect, who had some knowledge of the various building panels and displayed a high level of attention.
51      The applicant’s argument seeking to define the informed user as being the user of ‘façade panels for buildings’ must therefore be rejected for the same reasons as those set out in paragraphs 38 and 39 above.
52      Furthermore, whereas the applicant takes the view that the sector concerned had to be defined more restrictively as that of façade panels for buildings only, on the other hand, it does not claim that the informed user so defined has a different level of attention from that of a professional in the construction sector.
53      It follows that the Board of Appeal was entitled to find, without making an error of assessment, that the informed user in the present case was the professional in the construction sector displaying a high level of attention.
54      In the light of the foregoing, the first part of the single plea must be rejected as unfounded.
Second part relating to the degree of freedom of the designer of the contested design
55      The Board of Appeal found, in paragraph 24 of the contested decision, that the designer’s freedom in developing building panels was limited to a certain degree by the fact that those panels fulfilled the technical function consisting in providing weather resistance or had other properties, for example acoustic, fire resisting and structural properties, by the fact that they had to be safely fixed to the wall, façade or roof, and by the fact that they had to enhance the aesthetics of a building. However, the designer had a considerable degree of freedom as regard surface types, shapes, colours and patterns. The Board of Appeal also found that the applicant had not proved a saturation of the state of the prior art. The Board of Appeal noted, in paragraph 35 of the contested decision, that the common features of the designs at issue concerned elements in respect of which the designer enjoyed an average degree of freedom.
56      The applicant claims that the designer’s freedom must be assessed in relation to ‘façade panels for buildings’ sector. Thus, the contested design is largely dictated by the functions of those panels. Those constraints have an impact on the design of the surface of the panels, which necessarily have to be quite flat and generally contain a play of lines and colour. Since the number of colours is limited, as are the patterns ‘when working with lines’, the designer’s freedom is not unlimited or considerable. According to the applicant, there appears to be a certain saturation of the state of the art for façade panels for buildings with a linear design. Therefore, the freedom enjoyed by the designer of façade panels for buildings is, at best, average.
57      EUIPO and the intervener dispute the applicant’s arguments.
58      According to the case-law, the designer’s degree of freedom in developing his or her design is established, in particular, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (judgment of 18 March 2010, Representation of a circular promotional item, T‑9/07, EU:T:2010:96, paragraph 67).
59      The designer’s degree of freedom is, in that context, a factor which makes it possible to moderate the assessment of the individual character of the contested design, rather than an independent factor which determines how different two designs have to be for one of them to be able to rely on individual character. In other words, the factor relating to the designer’s degree of freedom may reinforce or, a contrario, moderate the conclusion as regards the overall impression produced by each design at issue (see judgment of 6 June 2019, Motor vehicles, T‑209/18, EU:T:2019:377, paragraph 48 and the case-law cited).
60      The influence of the factor linked to the freedom of the designer on individual character varies according to a rule of inverse proportionality. Thus, the greater the designer’s freedom in developing a design, 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 in developing a design 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).
61      In the present case, first, it must be held that, for the reasons set out in paragraphs 35 to 54 above, the Board of Appeal did not make an error of assessment in examining the freedom of the designer of ‘building panels’ and not that of the designer of ‘façade panels for buildings’.
62      Secondly, the applicant itself takes the view that the freedom of the designer of façade panels for buildings is average, as the Board of Appeal also found, in essence, in paragraphs 24 and 35 of the contested decision, as regards the freedom of the designer of building panels.
63      Thirdly, the applicant’s argument that the surface of the panels at issue generally contains a play of lines and colours that, ‘when working with lines’, the designer’s freedom is not unlimited or considerable cannot succeed. The applicant does not show that building panels, or indeed façade panels for buildings, must necessarily include linear designs, in the form of linear ridges and valleys, and certain colours, to the exclusion, therefore, of any other shape or colour. Although it could not be ruled out that there is such a general design trend for building panels, including façade panels for buildings, that fact cannot be regarded as a factor which restricts the designer’s freedom, since it is precisely that freedom on the part of the designer that allows him or her to discover new shapes and new trends or even to innovate in the context of an existing trend (judgment of 13 November 2012, Antrax It v OHIM – THC (Radiators for heating), T‑83/11 and T‑84/11, EU:T:2012:592, paragraph 95).
64      Moreover, the question whether a design does or does not follow a general design trend is relevant, at the most, in relation to the aesthetic perception of the design concerned and can therefore, possibly, have an influence on the commercial success of the product in which the design is incorporated. By contrast, such a question is not relevant in the examination of the individual character of the design concerned, which consists in verifying whether the overall impression produced by it differs from the overall impressions produced by the designs made available earlier, irrespective of the aesthetic or commercial considerations (judgments of 22 June 2010, Shenzhen Taiden v OHIM – Bosch Security Systems (Communications equipment), T‑153/08, EU:T:2010:248, paragraph 58; of 4 February 2014, Sachi Premium-Outdoor Furniture v OHIM – Gandia Blasco (Armchair), T‑357/12, not published, EU:T:2014:55, paragraph 24; and of 17 November 2017, Ciarko v EUIPO – Maan (Cooker hood),
T‑684/16, not published, EU:T:2017:819, paragraph 58).
65      Moreover, although the applicant submits that there is saturation of the state of the art, it is sufficient to note, as did the Board of Appeal in paragraph 25 of the contested decision, that the applicant has not demonstrated, by means of concrete and relevant evidence, the existence of such saturation.
66      The second part of the single plea in law must therefore be rejected as unfounded.
The third part relating to the comparison of the overall impressions produced by the designs at issue
67      In the present case, the designs to be compared are the following:
Contested design
Earlier design
1.1
1.2
1.3
1.4
1.5
68      The Board of Appeal found, in paragraphs 31 to 35 of the contested decision, that the designs at issue shared the following features: (a) flat linear surfaces defined by the multiple parallel ridges and valleys; (b) the ridges and valleys are in equal portions and in parallel alongside the length of the surface; (c) the same structure of steep upwards and downwards flanks connecting the valley with the ridge; (d) the same sequence of upwards flanks to the ridge and downwards flanks to the valley; and (e) similar widths between the ridges and the valleys. Thus, according to the Board of Appeal, the designs at issue produced the same overall impression on the informed user.
69      In the first place, the applicant highlights a number of differences between the designs at issue, which create different overall impressions, namely:
–        first, the contested design contains many more lines (ridges and grooves) per surface unit;
–        secondly, the contested design has ridges or protuberances that subtly emerge from the plates (2mm), with an obtuse angle towards the grooves of around 100 degrees, creating a slight trapezoid structure, whereas the earlier design does not have such a trapezoid structure;
–        thirdly, in the contested design, the upper flat surfaces of the ridges are somewhat smaller compared to the dimensions of the flat grooves (a ratio of approximately 1/1.5), whereas in the earlier design the protuberances are at least as big as the indentations (ratio of 1/1);
–        fourthly, in the contested design, the height of the ridges (2mm) is significantly smaller compared to the dimensions of the flat grooves (12mm), whereas it would appear that in the earlier design the ridges stand out much more prominently;
–        fifthly, the contested design shows a woolly (fibre-cement) like texture, in greyscale with certain contrasts, whereas the earlier design appears to consist of a smooth surface with a clinical look, executed in a khaki green-like colour;
–        sixthly, the actual products to which the designs at issue are applied clearly show that the designs have entirely different dimensions and measurements, since the ridges in the earlier design are much larger than the ones of the contested design.
70      EUIPO and the intervener dispute those arguments.
71      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).
72      The comparison of the overall impressions produced by the designs at issue must be synthetic and may not be limited to an analytic comparison of a list of similarities and differences. That comparison must take as a basis the characteristics disclosed in the contested design and must relate solely to the protected characteristics, without taking account of the characteristics excluded from the protection. The comparison must relate to the designs, in principle, as registered, and the invalidity applicant cannot be required to produce a graphic representation of the design relied on, comparable to the representation in the application for registration of the contested design (see judgment of 13 June 2019, Door hanger for vehicles, T‑74/18, EU:T:2019:417, paragraph 84 and the case-law cited).
73      In the present case, first of all, it should be noted, as observed by the Board of Appeal, that the two designs share a highly similar shape and contain similar parts, arranged in a comparable way, namely a flat linear, striped surface containing multiple parallel ridges and valleys. Next, the impressions of the ratios between the ridges and the valleys, in particular their width, placed in parallel on the surface, are very similar. Finally, the structure in upwards and downwards flanks connecting the valley with the ridge is very similar.
74      As regards the differences between the designs at issue highlighted by the applicant, it should be noted that the first to fourth and the sixth differences, mentioned in paragraph 69 above, concern the dimensions, inclination and alleged measurements of the various parts of the designs at issue. As regards the differences between the conflicting designs highlighted by the applicant, it should be noted that the first to fourth and sixth differences, mentioned in paragraph 69 above, relate to the alleged dimensions, inclination and proportions of the various elements of the conflicting designs.
75      In that regard, first, since the protection sought relates to designs, irrespective of the actual dimensions of the products to which those designs are intended to be applied, claims related to such dimensions are irrelevant in the context of the comparison of the overall impressions produced by the designs at issue (see, to that effect, judgment of 13 November 2012, Radiators for heating, T‑83/11 and T‑84/11, EU:T:2012:592, paragraph 67).
76      Secondly, and crucially, the alleged differences are not clearly apparent from the comparison of the representations of the designs at issue. In particular, the dimensions and proportions of the contested design, referred to by the applicant, are not apparent from the representation of that design, as registered.
77      In any event, as the Board of Appeal correctly pointed out in paragraph 32 of the contested decision, the informed user will not pay particular attention to the exact ratios between the ridges and the valleys or even to the degree of the various angles. Rather, that user will pay particular attention to the overall shape of the designs and their common features which, taken as a whole, give an impression of similarity between the designs under comparison, namely the flat linear surface defined by a visually similar sequence of several ridges and valleys, with a similar structure and ratios, which, although different, are not capable of preventing any impression of ‘déjà vu’ within the meaning of the case-law referred to in paragraph 71 above.
78      Admittedly, as pointed out in paragraphs 29 to 33 above, the products actually marketed to which the designs at issue are intended to be applied may be taken into account, by way of illustration, at that stage of the assessment of the individual character of the contested design, in order to determine the visible parts of those designs and the way in which they will be perceived. In that regard, it must be stated, as did the Board of Appeal, that the designs at issue are usually looked at from a certain distance, whether they are buildings or noise-reduction walls. Consequently, any differences in the number of lines and in the proportion of the dimensions of the ridges or protuberances plays a minor role in the overall impressions created by the designs at issue.
79      As regards the fifth difference referred to in paragraph 69 above, relating to the texture of the contested design, it is certainly not inconceivable, as the applicant claims, that image No 1.3 of that design, which offers a cross-sectional view of it, may be interpreted, following a particularly careful examination, as showing a woolly texture, which is lacking in the representation of the earlier design. However, in the absence of any other indication in the application for registration, that image may also suggest that the panel in question has been cut, with the result that the ‘woolly’ texture highlighted by the applicant may also appear merely to be, on that image, slightly creased surfaces on the sides following a cutting, or, as EUIPO contends, mere imperfections in the material used. Furthermore, as the Board of Appeal correctly pointed out in paragraph 33 of the contested decision, the upper surface of the designs at issue is the only visible surface once the panels are mounted on buildings or walls, with the result that cross-sectional view No 1.3 was less relevant.
80      In those circumstances, and as EUIPO correctly points out, the representation of the contested design, as registered, and in the absence of any other indication to that effect in the application for registration, does not enable the alleged existence of such a texture to be identified with sufficient clarity.
81      Moreover, as the Board of Appeal correctly stated in paragraph 33 of the contested decision, the informed user is in all likelihood aware of the fact that the texture of the surface of a building panel may depend on the material used and, consequently, the possibility of using different materials cannot suffice to produce a different overall impression.
82      Furthermore, as regards the applicant’s argument based on a difference in the colours of the designs at issue, EUIPO is correct in arguing that, 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, judgments of 14 June 2011, Sphere Time v OHIM – Punch (Watch attached to a lanyard), T‑68/10, EU:T:2011:269, paragraph 82, and of 7 February 2018, Şölen Çikolata Gıda Sanayi ve Ticaret v EUIPO – Zaharieva (Display box for cornets), T‑793/16, not published, EU:T:2018:72, paragraph 67).
83      In the second place, the applicant claims that the Board of Appeal erred in failing to take into account the actual products in which the designs at issue are incorporated or are intended to be applied in order to define the earlier design with precision.
84      It must be stated in that regard that, contrary to what the applicant claims, the Board of Appeal took account of the goods to which the designs at issue are applied and the way in which they are used. For example, as noted in paragraph 79 above, the Board of Appeal found that the top surface of the designs at issue was the only visible surface once the panels were mounted to buildings or walls, with the result that cross sectional view No 1.3 was less relevant. Similarly, in paragraph 34 of the contested decision, the Board of Appeal noted that the informed user was well aware that the building panels could be cut edge-to-edge to fit to the building shape and size in order to form a homogeneous area and thus had no reason to count the exact number of ridges. Those findings are thus based on the way in which the products covered by the designs at issue are used, in so far as it has an impact on the way in which those designs are viewed by the informed user.
85      Consequently, it must be concluded, as the Board of Appeal did, that, in view of the average degree of freedom of the designer of the contested design, that design produces, for the informed user, an overall impression of ‘déjà vu’ in relation to the earlier design.
86      On the basis of the foregoing, the applicant’s single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
87      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 the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and the intervener, as applied for in their respective pleadings.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Eternit to bear its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO) and by Eternit Österreich GmbH.
Kornezov
Buttigieg
Hesse
Delivered in open court in Luxembourg on 10 November 2021.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.