62021TJ0757_RES
Case T‑757/21
Activa – Grillküche GmbH
v
European Union Intellectual Property Office
Judgment of the General Court (Seventh Chamber), 26 April 2023
(Community design – Invalidity proceedings – Registered Community design representing apparatus for grilling – Disclosure of the earlier design – Article 7(2) of Regulation (EC) No 6/2002)
Community designs – Grounds for invalidity – Lack of novelty – No individual character – Exception – Disclosure by the designer or his or her successor in title in the 12-month period prior to the application for registration – Taking into account of transfer agreements with retroactive effect
(Council Regulation No 6/2002, Art. 7(2))
(see paragraphs 18, 20-33)
Résumé
On 5 April 2016, Targa GmbH sought the registration of a Community design representing apparatus for grilling (
1
) pursuant to Regulation No 6/2002. (
2
)
On 14 November 2018, Activa – Grillküche GmbH filed an application for a declaration of invalidity, submitting that the design lacked novelty and individual character and relying on, inter alia, an earlier utility model which had been published in China on 24 June 2015 by Guangzhou Hungkay (‘the Chinese utility model’).
After its publication, the Chinese utility model was the subject of two transfer agreements. By a first agreement concluded on 26 November 2016, Guangzhou Hungkay transferred to Targa GmbH all the intellectual property rights regarding the Chinese utility model with regard to the territory of the European Union, including the United Kingdom, as from 7 October 2014. By a second agreement concluded on 28 November 2016, A, the initial designer of the Chinese utility model and an employee of Guangzhou Hungkay, transferred to the latter all the intellectual property rights relating to that Chinese utility model, also as from 7 October 2014.
That application for a declaration of invalidity was rejected by the Invalidity Division of the European Union Intellectual Property Office (EUIPO). Likewise, the appeal brought by Activa – Grillküche GmbH against that decision was dismissed by the Board of Appeal. Activa – Grillküche GmbH then brought an action before the General Court seeking the annulment of the Board of Appeal’s decision.
The Court dismissed that action and examined, for the first time, inter alia, the effects of retroactive transfer agreements in the context of the examination of the applicability of the exception that a disclosure of a design which is provided for in Article 7(2) of Regulation No 6/2002 (
3
) is not to be taken into consideration.
Findings of the Court
First of all, the Court pointed out that, for the exception laid down in Article 7(2) of Regulation No 6/2002 to be applicable in the context of invalidity proceedings, the owner of the design that is the subject of the application for a declaration of invalidity must establish that it is either the designer of the design upon which that application is based or the successor in title to that designer. In the present case, the designer of the Chinese utility model transferred his intellectual property rights to Guangzhou Hungkay by means of a transfer agreement with retroactive effect. The latter made the Chinese utility model, which is identical to the contested design, available to the public by means of publication following the registration of that utility model in China. It also transferred to Targa GmbH some of the intellectual property rights in design corresponding to the Chinese utility model.
Next, as regards the question of whether the exception laid down in Article 7(2) of Regulation No 6/2002 applies in the present case, the Court stated that the transfer agreements are governed by the applicable national law and referred, on the one hand, to the role of the principle of contractual freedom in EU law and, on the other hand, to the objectives of Regulation No 6/2002.
The right of parties to conclude contracts transferring property rights is based on the principle of contractual freedom and cannot, therefore, be limited in the absence of EU rules imposing specific restrictions in that regard. It follows that, provided that a contractual clause making such a transfer is not contrary to the objective pursued by the applicable EU rules and does not involve any risk of fraud, such a clause cannot be regarded as unlawful.
In the present case, in the first place, as regards the content of the applicable EU rules, Regulation No 6/2002 does not prohibit contracts which are signed after the date of filing of an application for registration of a design and which retroactively transfer intellectual property rights regarding an earlier design governed by national law from being taken into account in the context of an application for a declaration of invalidity.
In the second place, as regards the objective of the applicable EU rules, the objective of the exception provided for in Article 7 of Regulation No 6/2002 is to offer a creator or his or her successor in title the opportunity to market a design, for a period of 12 months, before having to proceed with the formalities of filing. Accordingly, during that period, the creator or his or her successor in title can ascertain that the design concerned is a commercial success before incurring the costs relating to registration, without fear that the disclosure that takes place at that time may be successfully raised during any invalidity proceedings brought after the possible registration of the design concerned. Consequently, the aim of the exception provided for in Article 7(2) of Regulation No 6/2002 is to protect the interests of the designer and his or her successor in title. In the present case, those interests were protected by the taking into account of the transfer agreements which had been concluded.
In the third place, as regards the risk of fraud, the Court held that there was no indication of fraud or of collusive conduct in the transfer of the property rights by means of the transfer agreements.
It follows that EU law did not, in the present case, preclude the parties from giving retroactive effect to their agreements.
Lastly, the Court held that, since Guangzhou Hungkay had disclosed the Chinese utility model by publishing it in China on 24 June 2015 and Targa GmbH, acting as successor in title to Guangzhou Hungkay, has filed an application for registration of an identical design as a Community design on 5 April 2016, that is to say, less than 12 months later, the exception provided for in Article 7(2) of Regulation No 6/2002 was applicable in the present case.
(
1
)	The design was registered in respect of ‘Grilling apparatus’ in Class 07.02 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended.
(
2
)	Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
(
3
)	According to Article 7(2) of Regulation No 6/2002, a disclosure is not to be taken into consideration for the purpose of applying Articles 5 and 6 of that regulation if a design for which protection is claimed under a registered Community design has been made available to the public: (a) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title; and (b) during the 12-month period preceding the date of filing of the application or, if a priority is claimed, the date of priority.