JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
14 March 2018 (*)
(Community design — Invalidity proceedings — Registered Community design representing footwear — Earlier Community design — Grounds for invalidity — Duty to state reasons — Article 62 of Regulation (EC) No 6/2002 — Ground raised by the Board of Appeal of its own motion — Powers of the Board of Appeal — Article 63(1) of Regulation No 6/2002)
In Case T‑424/16,
Gifi Diffusion, established in Villeneuve-sur-Lot (France), represented by C. de Chassey, 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, and intervener before the General Court, being
Crocs, Inc., established in Niwot, Colorado (United States), represented by H. Seymour, L. Cassidy, J. Guise and D. Knight, Solicitors, N. Hadjadj Cazier, M. Berger and H. Haouideg, lawyers,
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 25 April 2016 (Case R 37/2015-3), relating to invalidity proceedings between Gifi Diffusion and Crocs,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, A. Marcoulli and A. Kornezov (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 5 August 2016,
having regard to the response of EUIPO lodged at the Court Registry on 16 November 2016,
having regard to the response of the intervener lodged at the Court Registry on 17 November 2016,
further to the hearing on 25 October 2017,
gives the following
Judgment
Background to the dispute
1        On 30 May 2007, the intervener, Crocs Inc., filed an application for registration of a Community design with the European Union Intellectual Property Office (EUIPO), under Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), claiming the priority of a US design patent application filed on 4 December 2006.
2        The goods to which the contested design is intended to be applied are in Class 02‑04 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Footwear’.
3        The contested design was registered as Community Design No 733 282-0001 and published in Community Designs Bulletin No 115/2007 of 28 August 2007.
4        On 25 June 2013, the applicant, Gifi Diffusion, filed an application for a declaration of invalidity of the contested design with EUIPO, pursuant to Article 52 of Regulation No 6/2002, read in conjunction with Article 25(1)(b) thereof.
5        In support of that application, the applicant claimed, first, that the contested design lacked novelty within the meaning of Article 5 of Regulation No 6/2002, by reason, inter alia, of prior disclosure of the following earlier designs:
–        Community design No 257 001-0001 (‘Design D 1’) ;
–        the Chicco Mare clog (‘Chicco Mare Design’);
–        the Dawgs clog (‘Design D 2’);
–        the Danaud clog (‘Design D 3’);
–        the Blachette clog (‘Design D 4’);
–        the Dansko clog (‘Design D 5’);
–        the Oomphies clog (‘Design D 6’);
–        the UGG 2004 clog (‘Design D 7’);
–        the Simple clog (‘Design D 8’);
–        the Powerpuff Girls clog (‘Design D 9’);
–        the Rocketdog clog (‘Design D 10’);
–        the Foamtreads clog (‘Design D 11’);
–        the UGG 2005, Mellow Yellow and Quelle clogs (‘Design D 12a’, ‘Design D 12b’ and ‘Design D 12c’);
–        the Romika clog (‘Design D 13’);
–        the Dresco clog (‘Design D 14’);
–        the Yves clog (‘Design D 15’);
–        Community Designs No 333 281-0007 and No 333 281-0030 (‘Design D 16a’ and ‘Design D 16b’);
–        the Holey Soles clog (‘Design D 17’);
–        International Designs DM/051759-1 and DM/051759-2 (‘Design D 18a’ and ‘Design D 18b’);
–        International Design DM/062646-1 (‘Design D 19’).
6        In its observations submitted before the Invalidity Division on 3 July 2014, in response to the intervener’s observations on the application for a declaration of invalidity, the applicant maintained that the contested design lacked novelty by reason also of prior disclosure of the following earlier designs:
–        the Aquaclog clog (‘Design D 20’);
–        the C & A clog (‘Design D 22’).
7        Secondly, in its application for a declaration of invalidity of 25 June 2013 the applicant claimed that the contested design was also devoid of individual character within the meaning of Article 6 of Regulation No 6/2002 because the overall impression it produced was similar to that of Design D 1.
8        In its observations submitted before the Invalidity Division on 3 July 2014, the applicant added that the contested design was devoid of individual character not only in relation to Design D 1 but also in relation to Designs D 18a, D 18b and D 19, on which it had already relied in its application for a declaration of invalidity in support of its contention that the contested design lacked novelty, as well as in relation to three other earlier designs producing the same overall impression as the contested design, namely Designs D 20 and D 22 and the intervener’s Community Design No 61122-0001 (‘Design D 21’).
9        By decision of 4 November 2014, the Invalidity Division declared the contested design invalid due to lack of individual character in relation to Design D 1. In that decision, the Invalidity Division did not examine the other designs invoked by the applicant.
10      On 2 January 2015, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Invalidity Division. The arguments in support of the intervener’s appeal only sought to demonstrate that the contested design had individual character in relation to Design D 1.
11      In its observations of 9 April 2015, the applicant argued, inter alia, that the Invalidity Division had been right in finding that the contested design lacked individual character in relation to Design D 1. In addition, the applicant submitted that the contested design lacked individual character also in relation to Designs D 18 to D 22.
12      By decision of 25 April 2016 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the appeal, annulled the Invalidity Division’s decision and dismissed the application for a declaration of invalidity.
13      The Board of Appeal stated at the outset, in paragraph 14 of the contested decision, that, with regard to the scope of its review, the Invalidity Division had, ‘presumably on grounds of procedural economy’, examined the contested design in relation only to Design D 1, which, in its view, called into question the individual character of the contested design, without examining Designs D 2 to D 17, on which the applicant had also based its application for a declaration of invalidity. The Board of Appeal took the view, in paragraphs 15 and 30 of the contested decision, that it was necessary to re-examine the application for a declaration of invalidity in its entirety given that, first, the intervener had lodged an appeal and, secondly, Design D 1 did not invalidate the individual character (or novelty) of the contested design.
14      The Board of Appeal then held, in paragraphs 32 to 108 of the contested decision, that Designs D 2 to D 17 did not call into question the individual character or novelty of the contested design.
Procedure and forms of order sought
15      By application lodged at the Court Registry on 5 August 2016, the applicant brought the present action.
16      EUIPO and the intervener lodged their responses on 16 and 17 November 2016 respectively.
17      By letters of the Registry of 14 September 2017, the Court sent written questions to the parties, by way of measures of organisation of procedure. EUIPO and the intervener replied within the time limit prescribed, while the applicant, having been duly notified, failed to lodge a written reply and replied to the questions at the hearing.
18      The parties presented oral argument and replied to the oral questions put by the Court at the hearing on 25 October 2017.
19      The applicant claims that the Court should:
–        annul the contested decision;
–        declare the contested design invalid;
–        order EUIPO to pay the costs.
20      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO.
21      The intervener contends that the Court should:
–        uphold the contested decision;
–        uphold the contested design;
–        dismiss the application for a declaration of invalidity;
–        make an award of costs in its favour.
Law
22      In support of its action, the applicant raises two pleas in law, alleging, first, infringement of Article 6 of Regulation No 6/2002 and, secondly, infringement of Article 62 and Article 63(1) of the regulation.
23      The Court will begin by examining the second plea.
The second plea in law, alleging infringement of Article 62 and Article 63(1) of Regulation No 6/2002
24      In the context of its second plea, the applicant alleges infringement of Article 62 of Regulation No 6/2002, which lays down EUIPO’s duty to state reasons, and of Article 63(1) of the regulation, in that the Board of Appeal failed to examine all the evidence produced by the applicant. The evidence covered by the second plea concerns Designs D 18a and D 18b, D 19, D 20, D 21 and D 22 as well as the Chicco Mare Design.
25      On the one hand, EUIPO submits that the applicant’s appeal is limited to Article 6 of Regulation No 6/2002 and that ‘all the remaining designs referred to by the applicant in the current proceedings [other than Design D 1], including those listed [in paragraph 24 above], are inadmissible in respect of the ground [for] invalidity of Article 6 [of Regulation No 6/2002]’. On the other hand, EUIPO considers that the Board of Appeal was not required to examine those designs given that, first, Designs D 20 to D 22 were invoked at a late stage of the proceedings and, secondly, although Designs D 18a, D 18b, D 19 and the Chicco Mare Design already appeared in the application for a declaration of invalidity, they were not invoked with sufficient clarity and precision, in breach of Article 28(1)(b)(v) of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Regulation No 6/2002 (OJ 2002 L 341, p. 28).
26      The intervener argues that the Board of Appeal was under no obligation to address every earlier design separately and explicitly.
27      As a preliminary point, assuming that EUIPO’s argument referred to in the first sentence of paragraph 25 above seeks to dispute the admissibility of the applicant’s second plea, on the one hand, it should be noted that that plea does not allege infringement of Article 6 of Regulation No 6/2002 but rather infringement of Articles 62 and 63 thereof, in that the Board of Appeal allegedly failed to comply with EUIPO’s duty to state reasons and failed to examine all the evidence produced by the applicant. On the other hand, in any event, all the designs mentioned in paragraph 24 above, except the Chicco Mare Design, were referred to during the administrative procedure in respect of Article 6 of Regulation No 6/2002: Designs D 18a, D 18b and D 19, after being referred to in the application for a declaration of invalidity to show that the contested design lacked novelty, were subsequently also invoked in the observations submitted before the Invalidity Division in support of the argument that the contested design was also devoid of individual character; as to Designs D 20, D 21 and D 22, they were invoked in those observations to support the claim that the contested design lacked individual character in particular.
28      With regard to substance, by its second plea, the applicant criticises the Board of Appeal, inter alia, for failing to comply with its duty to state reasons laid down in Article 62 of Regulation No 6/2002, by failing to take account, in the contested decision, of the earlier designs mentioned in paragraph 24 above.
29      Under the first sentence of Article 62 of Regulation No 6/2002, decisions of EUIPO are to state the reasons on which they are based. The duty to state reasons, thus laid down, has the same scope as that under Article 296 TFEU. It is settled case-law that the statement of reasons required by that article must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and enable the competent court to exercise its power of review (judgments of 25 April 2013, Bell & Ross v OHIM — KIN (Wristwatch case), T‑80/10, not published, EU:T:2013:214, paragraph 37; of 9 February 2017, Mast-Jägermeister v EUIPO (Beakers), T‑16/16, EU:T:2017:68, paragraph 58; and 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 82).
30      In that regard, the Court notes, as did the applicant, that the contested decision contains no mention of any sort of Designs D 18 to D 22.
31      While in paragraph 15 of the contested decision, under the heading ‘Scope of review by the Board of Appeal’, the Board of Appeal observed that, in the present case, the application for a declaration of invalidity needed to be re-examined ‘in its entirety’, it nevertheless restricted its examination to a comparison between the contested design and Designs D 1 to D 17, thus failing to express a view on Designs D 18 to D 22.
32      However, the Court observes, first, that the latter designs were all invoked by the applicant and that, secondly, they are separate from Designs D 1 to D 17, which the Board of Appeal examined.
33      EUIPO seeks to compensate the absence of any statement of reasons in the contested decision in relation to the abovementioned designs by putting forward, for the first time before the Court, two grounds seeking to demonstrate that the Board of Appeal was under no obligation to take account of those earlier designs, alleging, first, that Designs D 20 to D 22 were invoked at a late stage of the proceedings and, secondly, that Designs D 18a, D 18b and D 19 were not invoked with sufficient clarity and precision in the application for a declaration of invalidity.
34      It is not possible, however, to give such additional statement of reasons for the first time before the Court. It must be remembered that the statement of reasons on which a measure is based must be provided to the person concerned by the measure before the latter brings an action against it and that non-compliance with the duty to state reasons cannot be regularised by the fact that the person concerned becomes cognisant thereof during proceedings before the EU judicature (see, to that effect and by analogy, judgment of 11 December 2012, Sina Bank v Council, T‑15/11, EU:T:2012:661, paragraph 56 and the case-law cited). The possibility for an EU institution or body to plead such supplementary grounds in order to complete the grounds set out in the contested decision would undermine the rights of defence of the party concerned and his right to an effective judicial remedy, as well as the principle of equality of parties before the EU judicature (see judgment of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraphs 71 and 72 and the case-law cited).
35      It is true that the grounds may be implicit on condition that they enable the persons concerned to ascertain the reasons for the measures in question and provides the competent court with sufficient material for it to exercise its power of review (see, to that effect, judgments of 7 January 2004, Aalborg Portland and Others v Commission, C‑204/00 P, C‑205/00 P, C‑211/00 P, C‑213/00 P, C‑217/00 P and C‑219/00 P, EU:C:2004:6, paragraph 372 and the case-law cited, and of 8 February 2007, Groupe Danone v Commission, C‑3/06 P, EU:C:2007:88, paragraph 46 and the case-law cited). Reasons that are not made explicit can accordingly be taken into account if they are obvious, both to the persons concerned and to the competent court (judgment of 25 March 2015, Central Bank of Iran v Council, T‑563/12, EU:T:2015:187, paragraph 77).
36      The question whether the statement of reasons on which a decision is based satisfies those requirements must be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (judgments of 7 April 2016, Central Bank of Iran v Council, C‑266/15 P, EU:C:2016:208, paragraph 24, and of 8 March 2013, Mayer Naman v OHIM — Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 56).
37      In the present case, it is clear that, in the light of the Board of Appeal’s assertion that it was required to re-examine the application for a declaration of invalidity in its entirety, followed by a one-by-one examination of the contested design in relation only to Designs D 1 to D 17, it is impossible to infer from the wording of the contested decision, or the context in which it appears, what is the implied reasoning justifying the failure to take into account Designs D 18 to D 22.
38      First, as regards the argument raised by EUIPO in the present proceedings, alleging that some of the abovementioned designs were invoked at a late stage, suffice it to recall that, according to the case-law, the exercise by the Board of Appeal of its discretion to decide whether or not to take into account evidence produced late requires the Board of Appeal to give reasons for its decision on that point (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43; of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 23; and of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 78). Accordingly, assuming that the Board of Appeal considered that Designs D 18 to D 22, or some of them, had been invoked out of time, it was required to give reasons for its decision in that regard.
39      Secondly, concerning EUIPO’s claim, also put forward in the present proceedings, that Designs D 18a, D 18b and D 19 were not invoked with sufficient clarity and precision, it should be noted that the application for a declaration of invalidity contained not only the indication and the reproduction of Designs D 18a, D 18b and D 19 but also documents proving the existence of those earlier designs, in the form of screenshots and copies of journals. If, admittedly, in that application those designs were mentioned in relation to the date of disclosure of Design D 1, it was to support the argument that the contested design lacked novelty, which is developed in Section I of the application for a declaration of invalidity, where those designs were produced. Moreover, the applicant referred to those designs, both in its observations of 3 July 2014 and before the Board of Appeal to support its contention that the contested design lacked individual character in particular, with the result that EUIPO cannot validly claim that the reference thereto was so manifestly lacking clarity and precision that the Board of Appeal was relieved of its obligation to give reasons for its decision in that regard.
40      In addition, and in any event, since they are not apparent from the contested decision, the applicant was unable to ascertain the reasons for the measure taken within the meaning of the case-law cited in paragraph 29 above and thus put forward its arguments in respect of those reasons.
41      It is appropriate also to reject the intervener’s argument that, pursuant to the Board of Appeal’s duty to state reasons under the first sentence of Article 62 of Regulation No 6/2002, it was not required to examine every prior design separately and explicitly. It must be borne in mind in that regard that it is sufficient that the contested design lacks novelty or is devoid of individual character, within the meaning of Article 5 and Article 6(1) of Regulation No 6/2002, in relation to a single one of the earlier designs relied on by the applicant for the application for a declaration of invalidity submitted by the applicant to be well founded. Furthermore, according to the case-law, the assessment as to whether a design has individual character must be conducted in relation to one or more specific, individualised, defined and identified designs from among all the designs which have been made available to the public previously (judgment of 19 June 2014, Karen Millen Fashions, C‑345/13, EU:C:2014:2013, paragraph 25). Consequently, the Board of Appeal was, in principle, required to examine the contested design in relation to every earlier design duly invoked in that respect, which it has, moreover, pointed out in the present case, recalling that it was required to re-examine the application for a declaration of invalidity in its entirety (see paragraph 37 above).
42      Therefore, it must be concluded that, in the absence of any statement of reasons in respect of Designs D 18 to D 22, the contested decision is vitiated by a failure to state reasons.
43      Accordingly, the second plea in law must be upheld, without there being any need to examine the other complaints put forward by the applicant in the context of that plea, and the contested decision must be annulled in its entirety.
44      The Court nevertheless considers it appropriate, in the circumstances of the present case, to also examine the question whether the Board of Appeal has exceeded the limits of its powers by examining the individual character of the contested design in relation to Designs D 2 to D 17, although the applicant had invoked those designs only for the purpose of calling into question the novelty of the contested design. This being a plea raised of its own motion, the Court has asked the parties to submit their observations on this issue by adopting a measure of organisation of procedure.
Whether the Board of Appeal exceeded the limits of its powers
45      The second sentence of Article 63(1) of Regulation No 6/2002 restricts EUIPO’s examination, in proceedings relating to a declaration of invalidity, to the facts, evidence and arguments provided by the parties and the relief sought. According to established case-law concerning the European Union trade mark, applicable mutatis mutandis to Community designs, the Board of Appeal, when hearing an appeal against a decision terminating invalidity proceedings, may base its decision only on the grounds that the party concerned has relied on and the related facts and evidence it has presented (see judgment of 27 October 2005, Éditions Albert René v OHIM — Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 33 and the case-law cited).
46      Here, it is common ground that, during the administrative procedure, Article 6 of Regulation No 6/2002 was never invoked by the applicant in relation to Designs D 2 to D 17. However, in the contested decision, the Board of Appeal examined Designs D 2 to D 17 for the purpose of assessing both the novelty of the contested design within the meaning of Article 5 of Regulation No 6/2002 and its individual character within the meaning of Article 6 thereof.
47      In so doing, the Board of Appeal has exceeded the limits of its powers and, consequently, infringed Article 63(1) of Regulation No 6/2002. Indeed, while the Board of Appeal had jurisdiction, by devolutive effect, to decide the case again, as lodged before the Invalidity Division, and therefore examine whether the contested design was new in relation to Designs D 2 to D 17, it is clear that, in examining the individual character of the contested design in relation to Designs D 2 to D 17, it has gone beyond the facts, evidence and arguments provided by the parties and the relief sought within the meaning of the second sentence of Article 63(1) of Regulation No 6/2002, since the ‘party concerned’ within the meaning of the case-law cited in paragraph 45 above had never invoked a ground for invalidity alleging the lack of individual character of the contested design in relation to Designs D 2 to D 17 nor produced those designs as facts and evidence relating to such a ground, but, on the contrary, had restricted that ground for invalidity to Designs D 1 and D 18 to D 22.
48      To accept that the Board of Appeal can examine of its own motion a ground for invalidity not invoked by the applicant would, moreover, deprive the applicant of the opportunity to put forward its arguments on that ground, all the more so because the ground for invalidity examined of its own motion by the Board of Appeal entailed, in the present case, the assessment of different legal criteria, concerning two separate grounds for invalidity. In particular, the wording of Article 6 goes beyond that of Article 5 of Regulation No 6/2002 and a contested design may be regarded as being new within the meaning of Article 5 of that regulation while lacking individual character within the meaning of Article 6 thereof (see, to that effect, judgment of 6 June 2013, Kastenholz v OHIM — Qwatchme (Watch dials), T‑68/11, EU:T:2013:298, paragraph 38). In that regard, the Court finds that the applicant was not given the possibility to put forward arguments showing that Designs D 2 to D 17 produced the same overall impression as the contested design within the meaning of Article 6 of Regulation No 6/2002. The Board of Appeal itself stated on several occasions in the contested decision that the applicant ‘d[id] not give any explanation as to why these clogs should produce the same overall impression as the contested [design]’, without thereby taking account of the fact that this absence of explanation was due precisely to the fact that it had not invoked that ground for invalidity.
49      Given that the merits of the second plea result in the annulment of the contested decision in its entirety, as has been held in paragraph 43 above, the present action must be upheld, without there being any need to examine either the consequences for the legality of the contested decision of the Board of Appeal exceeding the limits of its powers or the first plea in law.
50      It is appropriate also, consequently, to reject the intervener’s heads of claims seeking an order from the Court upholding both the contested decision and the contested design, without there being any need to rule on their admissibility (see, to that effect, judgment of 6 October 2011, Seven v OHIM — Seven for all mankind (SEVEN FOR ALL MANKIND), T‑176/10, not published, EU:T:2011:577, paragraph 56).
51      Moreover, as regards the applicant’s head of claim seeking a declaration by the Court that the contested design is invalid, it must be held that, in the absence of any statement of reasons in the contested decision in relation to Designs D 18 to D 22, the Court cannot substitute its own reasoning for that of the Board of Appeal nor carry out an assessment on which that Board of Appeal has not yet adopted a position (see judgment of 13 May 2015, Group Nivelles v OHIM — Easy Sanitairy Solutions (Shower drainage channel), T‑15/13, EU:T:2015:281, paragraph 89 and the case-law cited). In those circumstances, and assuming that that head of claim seeks, in fact, alteration of the contested decision (see, to that effect, judgment of 28 January 2016, Gugler France v OHIM — Gugler (GUGLER), T‑674/13, not published, EU:T:2016:44, paragraph 98), it is clear the conditions for the exercise of the Court’s power to alter decisions under Article 61(3) of Regulation No 6/2002 are not satisfied. Accordingly, the Court is not in a position to determine the decision that the Board of Appeal was required to take and thus cannot exercise its power to alter decisions.
52      Therefore, the applicant’s second head of claim must be rejected.
Costs
53      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 EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
54      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Annuls the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 April 2016 (Case R 37/2015-3) concerning invalidity proceedings between Gifi Diffusion and Crocs, Inc.;
2.      Orders EUIPO to bear its own costs and pay those incurred by Gifi Diffusion in the proceedings before the General Court;
3.      Orders Crocs to bear its own costs.
Tomljenović
Marcoulli
Kornezov
Delivered in open court in Luxembourg on 14 March 2018.
E. Coulon
V. Tomljenović
Registrar
President
*      Language of the case: English.