JUDGMENT OF THE GENERAL COURT (First Chamber)
5 July 2017 (*)
(Community design — Invalidity proceedings — Registered Community design representing a door handle — Earlier design — Ground for invalidity — No individual character — Degree of freedom of the designer — No different overall impression — Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002 — Evidence submitted in support of the opposition after the expiry of the prescribed period — Production of evidence for the first time before the Board of Appeal — Discretion of the Board of Appeal — Article 63 of Regulation No 6/2002)
In Case T‑306/16,
Gamet S.A., established in Toruń (Poland), represented by A. Rolbiecka, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Firma produkcyjno-handlowa ‘Metal-Bud II’ Robert Gubała, established in Świątniki Górne (Poland), represented by M. Mikosza, lawyer,
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 17 March 2016 (Case R 2040/2014-3), relating to invalidity proceedings between Firma produkcyjno-handlowa ‘Metal-Bud II’ Robert Gubała and Gamet,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 13 June 2016,
having regard to the response of EUIPO lodged at the Court Registry on 28 July 2016,
having regard to the response of the intervener lodged at the Court Registry on 24 August 2016,
having regard to the fact that no application for a hearing was submitted by the parties within the period of three weeks from notification of closure of the written procedure, and having therefore decided to rule on the action without an oral procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 24 March 2013, the applicant, Gamet S.A., obtained from the European Union Intellectual Property Office (EUIPO), on the basis of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) registration under number 2208066-0001 of a Community design represented as follows:
2        The contested design is intended to be applied to ‘handles, knobs and hinges’ in Class 08-06 of the Locarno Agreement establishing an International Classification for Industrial Designs of 8 October 1968, as amended.
3        On 19 August 2013, the intervener, Firma produkcyjno-handlowa ‘Metal-Bud II’ Robert Gubała, filed an application for a declaration that the contested Community design was invalid, pursuant to Article 52 of Regulation No 6/2002.
4        The ground relied on in support of the application for a declaration of invalidity was that referred to in Article 25(1)(b) of Regulation No 6/2002. In the application for a declaration of invalidity, the intervener contended that the contested design was not new and that it lacked individual character for the purposes of Article 4 of Regulation No 6/2002, read in conjunction with Articles 5 and 6 thereof.
5        In support of its application for a declaration of invalidity, the intervener relied, inter alia, on a design earlier than the contested design, represented by the ‘DORA’ door handle (‘the DORA handle’). To demonstrate the existence of that design and the fact that it had been made available to the public, it produced, inter alia, extracts from catalogues and websites containing the following illustrations, which compare the DORA handle with the contested design:
Front view
Natural angle of view
Side view 1
Side view 2
Top view
6        By decision of 11 June 2014, the Invalidity Division rejected the application for a declaration of invalidity, holding that the earlier designs had been disclosed prior to the date of application for registration of the contested design but that the latter satisfied the requirements as to novelty and individual character laid down in Articles 4 to 6 of Regulation No 6/2002.
7        On 5 August 2014, the intervener appealed under Articles 55 to 60 of Regulation No 6/2002 against the decision of the Invalidity Division.
8        By decision of 17 March 2016 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the appeal and annulled the decision of the Invalidity Division. In the first place, it held admissible certain items of evidence produced by the intervener, on the one hand, before the Invalidity Division and, on the other hand, for the first time before it. In the second place, after first stating that it would assess the merits of the appeal on the basis of the earlier design represented by the DORA handle, it found that that design had been made available to the public before the date of application for registration of the contested design. Next, it considered whether the contested design fulfilled the requirements of novelty and individual character laid down in Articles 4 to 6 of Regulation No 6/2002. In that regard, it found that because of the presence of a groove around the grip of the handle represented by the contested design, that design fulfilled the requirement of novelty. As regards individual character, after defining the informed user of door handles and after finding that the degree of freedom of the designer in designing door handles was almost unlimited, it concluded that the designs at issue produced, on account of minimal differences between them, an identical overall impression on the informed user. Lastly, it concluded from those findings that the contested design had no individual character and that it must therefore be declared invalid.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
10      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
11      In support of its action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 63(1) and (2) of Regulation No 6/2002 and, second, infringement of Articles 4 and 6 of that regulation.
The first plea in law, alleging infringement of Article 63(1) and (2) of Regulation No 6/2002
12      The first plea in law can be divided in two parts.
The first part, alleging infringement of Article 63(2) of Regulation No 6/2002
13      In the first place, the applicant maintains that the Board of Appeal infringed Article 63(2) of Regulation No 6/2002 by declaring admissible certain items of evidence produced by the intervener for the first time on appeal. It submits that the intervener produced, for the first time before the Board of Appeal, statements by representatives of three undertakings established in the Czech Republic, Poland and Slovakia showing photographs of various door handles, including the DORA handle. According to the applicant, those photographs are the first showing that handle from different angles, so that the photographs did not supplement the evidence produced before the Invalidity Division but constituted entirely new evidence, which is inadmissible on appeal.
14      It should be borne in mind that Article 63(2) of Regulation No 6/2002 provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
15      It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of Regulation No 6/2002 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time (see, by analogy, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 42; of 3 October 2013, Rintisch v OHIM, C‑122/12 P, EU:C:2013:628, paragraph 23 and the case-law cited, and of 28 January 2016, Davó Lledó v OHIM — Administradora y Franquicias América and Inversiones Ged (DoggiS), T‑335/14, EU:T:2016:39, paragraph 28).
16      In stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, that provision grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see, by analogy, judgments of 3 October 2013, Rintisch v OHIM, C‑122/12 P, EU:C:2013:628, paragraph 24 and the case-law cited, and of 28 January 2016, DoggiS, T‑335/14, EU:T:2016:39, paragraph 29).
17      Moreover, as regards the exercise of that discretion by EUIPO for the purposes of deciding whether or not to take into account evidence submitted out of time, where EUIPO is called upon to give judgment in invalidity proceedings, taking such facts or evidence into account is likely to be justified, in particular, where EUIPO considers, first, that the material produced late is, on the face of it, likely to be relevant to the outcome of the application for a declaration of invalidity before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not preclude such matters being taken into account (see, by analogy, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 44; of 3 October 2013, Rintisch v OHIM, C‑122/12 P, EU:C:2013:628, paragraph 39, and of 28 January 2016, DoggiS, T‑335/14, EU:T:2016:39, paragraph 30).
18      It follows that it is for the General Court to assess whether the Board of Appeal in fact exercised the broad discretion conferred on it for the purpose of deciding, in a reasoned manner and taking due account of all the relevant circumstances, whether it was necessary to take account of evidence adduced for the first time before it in order to deliver its decision (see, by analogy, judgments of 17 June 2008, El Corte Inglés v OHIM — Abril Sánchez and Ricote Saugar (BoomerangTV), T‑420/03, EU:T:2008:203, paragraph 46 and the case-law cited, and of 28 January 2016, DoggiS, T‑335/14, EU:T:2016:39, paragraph 31). It is, furthermore, for the General Court to verify that the Board of Appeal made correct use of the discretion conferred on it by Article 63(2) of Regulation No 6/2002 (see, by analogy, judgment of 28 January 2016, DoggiS, T‑335/14, EU:T:2016:39, paragraph 33).
19      In the present case, it is apparent from the contested decision, which is not challenged on that point, that the intervener produced for the first time before the Board of Appeal statements by representatives of three undertakings established in the Czech Republic, Poland and Slovakia showing views of various door handles, including the DORA handle. The Board of Appeal held those items of evidence admissible, on the ground that they were not new but supplemented and completed those items produced before the Invalidity Division.
20      It should be noted, as the applicant concedes, that in support of its application for a declaration of invalidity the intervener produced views of the DORA handle. In its decision of 11 June 2014, the Invalidity Division stated, in that regard, that those views did not fully disclose the shape of the grip of that door handle.
21      Consequently, contrary to the applicant’s assertions, the views of the DORA handle produced before the Board of Appeal supplement the views produced before the Invalidity Division. Moreover, those views allowed the intervener, inter alia, to reply to the observations made by the Invalidity Division, referred to in paragraph 20 above. Therefore, they were genuinely relevant to the outcome of the case and it cannot be considered that, by producing them for the first time before the Board of Appeal, the intervener abused the prescribed time-limits or was manifestly negligent.
22      Furthermore, as those views were produced together with the statement of grounds of appeal, the Board of Appeal was able to exercise its discretion objectively and by stating reasons as to whether to take those views into account (see, to that effect, judgment of 28 January 2016, DoggiS, T‑335/14, EU:T:2016:39, paragraph 39).
23      It follows that, by agreeing to take those views into account, the Board of Appeal correctly exercised the discretion conferred on it by Article 63(2) of Regulation No 6/2002.
24      In the second place, the applicant considers that some of the photographs of door handles produced by the intervener before the Invalidity Division on 17 February 2014 should not have been taken into account for the purpose of assessing the individual character of the contested design on the ground that they were not dated.
25      In the present case, it is apparent from the contested decision, which is not disputed in that regard, that on 17 February 2014 the intervener produced a CD containing views of the contested design and earlier designs relied on by the intervener, including photographs of the DORA handle.
26      The Board of Appeal thus identified the earlier design among the evidence produced by the intervener on 17 February 2014, which the applicant does not dispute.
27      Nor does the applicant dispute that that design was disclosed before the date of the application for registration of the contested design.
28      Consequently, the lack of any date on the photographs produced on 17 February 2014 representing the earlier design was not likely to give rise to any doubt that that design was disclosed earlier. Therefore, that fact did not preclude those photographs being taken into account for the purpose of assessing the individual character of the contested design.
29      The first part of the first plea in law must, therefore, be rejected.
The second part, alleging infringement of Article 63(1) of Regulation No 6/2002
30      In the second part, the applicant, relying on its assertion that the evidence adduced for the first time before the Board of Appeal was not admissible, maintains that the evidence before the latter allowed it neither to identify the details of the appearance of the DORA handle nor to compare the design represented by that handle with the contested design. It follows that all the findings of the Board of Appeal concerning the comparison of the designs at issue are vitiated by infringement of Article 63(1) of Regulation No 6/2002.
31      As provided in Article 63(1) of Regulation No 6/2002, in proceedings for a declaration of invalidity, the examination by EUIPO is restricted to the facts, evidence and arguments provided by the parties and the relief sought. That provision relates, inter alia, to the factual basis of decisions by EUIPO, that is, the facts and evidence on which those decisions may be validly based. Thus, the Board of Appeal, when hearing an appeal against a decision terminating proceedings for a declaration of invalidity, may base its decision only on the facts and evidence submitted by the parties (see judgment of 20 January 2015, Aic v OHIM — ACV Manufacturing (Heat exchanger inserts), T‑617/13, not published, EU:T:2015:32, paragraph 22 and the case-law cited).
32      In the present case, first of all, it is common ground that the views of the DORA handle on the basis of which the Board of Appeal compared the overall impressions produced by the designs at issue were produced by the intervener. Next, as is apparent from paragraph 23 above, the Board of Appeal was entitled to take into account those views for the purpose of comparing those overall impressions. Lastly, it is common ground that the intervener did not put before the Board of Appeal any submission or application which it had not put before the Invalidity Division.
33      Therefore, the second part of the first plea in law and, accordingly, the first plea in law, must be rejected.
The second plea, alleging an infringement of Articles 4 and 6 of Regulation No 6/2002
34      The applicant disputes the findings of the Board of Appeal relating, first, to the degree of freedom enjoyed by the designer in the design of a door handle and, second, to the lack of a different overall impression given by the designs at issue.
35      As a preliminary point, it must be recalled that Article 25(1)(b) of Regulation No 6/2002 provides that a Community design may be declared invalid only if it does not fulfil the conditions referred to in Articles 4 to 9 of that regulation.
36      Under Article 4 of Regulation No 6/2002, a design is to be protected as a Community design to the extent that it is new and has individual character.
37      Article 6(1)(b) of Regulation No 6/2002 provides that individual character falls to be assessed, in the case of a registered Community design, in the light of the overall impression produced on the informed user, which must be different from that produced by any design made available to the public before the date of filing of the application for registration or, if a priority is claimed, before the date of priority. Article 6(2) of Regulation No 6/2002 states that, for the purposes of that assessment, the degree of freedom of the designer in developing the design is to be taken into consideration.
38      Thus, 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 7 November 2013, Budziewska v OHIM — Puma (Bounding feline), T‑666/11, not published, EU:T:2013:584, paragraph 29 and the case-law cited).
39      Furthermore, it is apparent from recital 14 of Regulation No 6/2002 that, when assessing whether a design has individual character, account is to be taken of 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.
40      With regard to the concept of informed user, against which the individual character of the contested Community design must be assessed, it follows from case-law that that concept 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 (judgments of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 53, and of 25 April 2013, Bell & Ross v OHIM — KIN (Wristwatch case), T‑80/10, not published, EU:T:2013:214, paragraph 100). Although 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 is also not 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 interest in the products concerned, shows a relatively high degree of attention when he uses them (judgments of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59, and of 4 February 2014, Sachi Premium-Outdoor Furniture v OHIM — Gandia Blasco (Armchair), T‑357/12, not published, EU:T:2014:55, paragraph 16). 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 personal experience or because of his extensive knowledge of the sector in question (judgments of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 53, and of 25 April 2013, Wristwatch case, T‑80/10, not published, EU:T:2013:214, paragraph 100).
41      In the present case, the Board of Appeal defined the informed user of door handles as any person who habitually purchases such items, puts them to their intended use and who has sought information about those products, inter alia, by browsing through catalogues of, or including, door handles, visiting shops selling such products or downloading information from the internet. The applicant does not dispute that definition.
The degree of freedom of the designer
42      The applicant disputes the Board of Appeal’s assessment that the freedom enjoyed by designers of door handles is almost unlimited. In the first place, it argues that there are several types of door handle on the market, among which the most popular are the doorknob, the lever handle and the handleset, and that each type of handle operates in a different way. It infers from this that the degree of freedom enjoyed by the designer must be assessed separately for each type of handle, which the Board of Appeal failed to take into consideration. In the second place, the applicant maintains that the freedom of the designer of a lever handle is limited by the numerous constraints of the requirement to maintain a distance between the grip and the door and of making the grip and the shaft, which is the part linking the grip to the door, wide enough. The freedom of the designer is also limited by the need to comply with the requirements concerning the dimensions of the lock and the handle and the user’s comfort when he turns the handle. It follows from those constraints that the freedom enjoyed by the designer is limited to the shape and decoration of the grip.
43      According to the case-law, the degree of freedom enjoyed by the designer in developing his design is determined, inter alia, 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 thus become common to a number of designs applied to the product concerned (judgments of 9 September 2011, Kwang Yang Motor v OHIM — Honda Giken Kogyo (Internal combustion engine), T‑11/08, not published, EU:T:2011:447, paragraph 32, and of 25 April 2013, Wristwatch case, T‑80/10, not published, EU:T:2013:214, paragraph 112).
44      Therefore, 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 different overall impressions 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 different overall impressions on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that designs that do not have significant differences produce the same overall impression on an informed user (judgments of 9 September 2011, Internal combustion engine, T‑11/08, not published, EU:T:2011:447, paragraph 33 and of 25 April 2013, Wristwatch case, T‑80/10, not published, EU:T:2013:214, paragraph 113).
45      In the present case, the Board of Appeal noted that the freedom enjoyed by designers of door handles was almost unlimited because handles can come in any combination of colours, patterns, shapes and materials. It added that the only limitation on that freedom was that the handle must have a grip and must be able to be mounted onto a door.
46      As a result, contrary to the applicant’s submission, the Board of Appeal specifically assessed the degree of freedom enjoyed by the designer of a door handle with a grip. Furthermore, it is clear that the applicant’s arguments as regards the features imposed by the technical function of a door handle with a grip are not such as to call into question the valid conclusion of the Board of Appeal that a door handle with a grip may be made in a very wide variety of shapes, colours and materials.
47      Therefore, the Board of Appeal was fully entitled to find that the degree of freedom enjoyed by the designer of a door handle with a grip was very high.
The comparison of the overall impressions produced by the designs at issue
48      The applicant disputes the Board of Appeal’s conclusion that the designs at issue produce the same overall impression on the informed user. In that regard, it argues that the informed user does not attach much importance to features that are commonplace or normal for the type of product concerned and concentrates on features that are superficial or different from the norm. Therefore, the presence of special ornamentation may justify the registration of a design as a Community design. In the present case, this would apply to the grip featured on the contested design, which is decorated with a groove clearly dividing the handle into two parts and altering the user’s perception of its proportions. Not present on the DORA handle featured in the earlier design, that groove makes the handle featured in the contested design innovative and suffices to give the latter individual character.
49      In its analysis of the groove shown on the contested design, the Board of Appeal correctly observed that it was an inherent feature of the design, visible from all angles. However, it was also right to find that that groove had only a slight effect on the overall impression produced by the contested design. It must be observed that the groove consists of a fine recessed vertical line surrounding the grip of the handle, therefore covering a very small area, in particular in relation to the size of the grip, of the contested design. Moreover, it is quite a simple form of decoration and it is unlikely that it would particularly capture the attention of the informed user.
50      Therefore, contrary to the applicant’s submission, the presence of that groove cannot result in a change to the proportions of the handle, as perceived by the informed user, which would be such that it alone altered the overall impression given by the contested design.
51      Furthermore, the applicant argues that other differences exist between the designs at issue as regards the shape of the shaft, the position of the shaft and of the grip and the edges of the grip, which are chamfered on the contested design.
52      Those contentions are not such as to call into question the Board of Appeal’s findings concerning the similarities of the designs at issue. In that regard, the Board of Appeal noted that the edges of the handles featured on both those designs were bevelled and rounded. It added that the shafts of those two handles were positioned in the same part of the grips, that is to say, as close as possible to the end that is to be connected to the door, and that those shafts were wider at the grip end than at the door end. Furthermore, it observed that the dimensions of the shafts relative to those of the grips were very similar and that each of the designs at issue had a bulge at the grip end where the perpendicular shaft connected the handle to the door. Next, the Board of Appeal concluded from those findings that the shape and dimensions of the shafts and the grips and the proportions of the former relative to the latter do not differ materially. It added that there were no material differences in the depth of the grips and the degree of bevelling and rounding of the edges of the handles. It concluded that, save for the groove on the contested design, the overall impression given by that design was in all respects identical to that given by the earlier design.
53      Moreover, it is clear that the differences between the designs at issue alleged by the applicant concern points of detail that the informed user of door handles would not notice. As noted in paragraph 40 above, 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. Therefore, the Board of Appeal was right to find that those differences were capable of being identified only at the end of a particularly careful examination going beyond the comparison of the overall impressions required by Regulation No 6/2002.
54      Lastly, as held in paragraph 23 above, the applicant is not justified in maintaining that the evidence produced by the intervener enabling the designs at issue to be compared was not submitted in good time.
55      It follows from the foregoing that the Board of Appeal was fully entitled to find that, having regard to the high degree of freedom enjoyed by the designer, the designs at issue produced the same overall impression on the informed user, so that the contested design lacks the individual character required for its protection as a Community design.
56      It follows that the second plea in law must be rejected and, therefore, the action must be dismissed in its entirety.
Costs
57      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. Since 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 (First Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Gamet S.A. to pay the costs.
Pelikánová
Valančius
Öberg
Delivered in open court in Luxembourg on 5 July 2017.
E. Coulon
A. M. Collins
Registrar
President
*      Language of the case: English.