62022TJ0757_RES
Case T‑757/22
Puma SE
v
European Union Intellectual Property Office (EUIPO)
Judgment of the General Court (Third Chamber, Extended Composition) of 8 May 2024
(Community design – Invalidity proceedings – Registered Community design representing a shoe – Earlier Community designs – Grounds for invalidity – Individual character – Article 25(1)(b) and Article 6(1) of Regulation (EC) No 6/2002)
Community designs – Grounds for invalidity – No individual character – Design not giving the informed user a different overall impression from that produced by the earlier design – Overall assessment of all the elements presented by the designs – Scope – Account taken only of elements protected by the contested design
(Council Regulation No 6/2002, Arts 6(1) and 25(1)(b))
(see paragraphs 28-31, 37)
Community designs – Grounds for invalidity – No individual character – Making available to the public entailing the making available of all the elements of the design – Requirements for protection
(Council Regulation No 6/2002, Arts 7(1) and 25(1)(b))
(see paragraph 49)
Résumé
Hearing an action, which it dismisses, the General Court addresses, for the first time, the question of whether the disclaimed features should be taken into account, that is to say, the features which are not protected by an earlier design, which, in the present case, appeared in the form of broken lines in the comparison carried out in invalidity proceedings based on a lack of individual character. It thus defines the ratio legis of the invalidity proceedings based on that ground and the limits of protection of an earlier design.
Road Star Group sought registration from the European Union Intellectual Property Office (EUIPO) of a Community design representing a shoe. Puma SE, the applicant, filed an application for a declaration of invalidity of the design based on a lack of individual character (
1
) in respect of seven earlier designs. That application was, however, rejected by the Invalidity Division on the ground that the contested design had such individual character. Likewise, the Board of Appeal dismissed the applicant’s appeal against the decision of the Invalidity Division.
Findings of the Court
As a preliminary point, the Court points out that the comparison of the overall impression produced by the designs at issue must, first, be made in the light of the overall appearance of each of those designs and, secondly, take as a basis the features disclosed in the contested design and relate solely to the features which are protected by that contested design. The fact that the earlier design would disclose additional elements which are not present in the contested design is irrelevant for the comparison of the designs at issue. The elements which are actually protected by the contested design must therefore be determined.
First, the Court observes that, in order to compare the designs at issue in the present case, it is necessary to take into account all of the elements actually protected by the contested design, which represents a complete shoe consisting of both a sole and an upper of a shoe and not to be restricted to comparing only the appearance of the soles, which is the only protected part of the earlier design. The examination of the ground for invalidity constituted by a lack of individual character is not part of the rationale of protection of an earlier right, but consists in determining whether the contested design satisfies the requirements for registration. (
2
) However, taking the protected features of the earlier design as a basis, instead of those of the contested design, would amount to excluding from the comparison the elements of the contested design which are protected and, consequently, to not ascertaining whether that design satisfies, in its entirety, the requirements for protection.
In addition, although it is possible that, in the comparison of the designs, the overall impression produced by each of them may be dominated by certain features of the products or parts of the products concerned, the Court finds that, in the present case, there is no reason to take the view that, from a purely visual point of view, the sole constitutes, for the informed user, a feature which is predominant in relation to the rest of the shoe and, accordingly, that the overall impression between the designs at issue will be dominated by that impression.
Secondly, the Court examines whether the appearance of the upper of the shoe of the earlier designs may also be taken into consideration in the comparison of the overall impressions produced by the designs at issue, notwithstanding the fact that they are not features in respect of which protection has been claimed. It notes, in that regard, that the assessment as to whether a design has individual character is based on whether the overall impression produced on an informed user clearly differs from that produced on him or her by the existing design corpus. In the context of invalidity proceedings based on that ground, the sole function of the earlier design is to reveal the state of the prior art, which corresponds to the corpus of previous designs relating to the product in question that were disclosed on the date of filing of the contested design. However, the fact that an earlier design belongs to that corpus of previous designs is the result of the mere disclosure of that design. Accordingly, in order to determine whether the elements of an earlier design may be taken into account, it is not necessary to focus on the subject of the protection of that design, but solely on the question whether those elements have been disclosed. (
3
) Moreover, in order for the making available to the public of a design to entail the making available of all of its elements, it is essential that those elements appear clearly and precisely when the design is made available.
Consequently, since, in the present case, the disclaimed elements of the earlier designs had been disclosed and appear sufficiently clear and precise to perceive the appearance of an upper of a shoe and of its various parts, the Court concludes that those features may be taken into account in order to assess the individual character of the contested design.
(
1
)	Within the meaning of Article 6(1) and Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
(
2
)	Set out in Articles 4 to 9 of Regulation No 6/2002.
(
3
)	Within the meaning of Article 7(1) of Regulation No 6/2002.