JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
30 June 2021(*)
(Community design – Invalidity proceedings – Community design representing a transportable building – Earlier designs – Proof of disclosure – Article 7 of Regulation (EC) No 6/2002 – Ground for invalidity – No individual character – No different overall impression – Article 6(1)(b) and Article 25(1)(b) of Regulation No 6/2002 – Obligation to state reasons)
In Case T‑373/20,
Framery Oy, established in Tampere (Finland), represented by A. Renck and C. Stöber, 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 being
Smartblock Oy, established in Helsinki (Finland),
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 8 April 2020 (Case R 616/2019-3), relating to invalidity proceedings between Smartblock and Framery,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann, President, O. Spineanu-Matei (Rapporteur) and R. Mastroianni, Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 15 June 2020,
having regard to the response lodged at the Court Registry on 3 September 2020,
further to the hearing on 24 March 2021,
gives the following
Judgment
Background to the dispute
1        On 14 July 2016, the applicant, Framery Oy, filed an application for registration of a Community design with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
2        The design in respect of which registration was sought and which is disputed in the present case is represented in the seven views below:
3        The goods to which the design is intended to be applied are in Class 25-03 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended, and correspond to the following description: ‘Buildings [transportable]’.
4        The contested design was registered under No 3305994-0001 and was published in Community Designs Bulletin No 135/2016 of 21 July 2016.
5        On 18 December 2017, the other party to the proceedings, Smartblock Oy (‘Smartblock’), filed an application with EUIPO for a declaration of invalidity in respect of the contested design, pursuant to Article 52 of Regulation No 6/2002, for all the goods referred to in paragraph 3 above.
6        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 conjunction with Article 6 of that regulation, to the effect that the contested design lacked individual character. In support of its application, Smartblock stated that the contested design produced the same overall impression on the informed user as the designs disclosed earlier for mobile work spaces. It made reference to the designs ‘Office POD A’ and ‘Office POD B’ from the company OfficePOD Ltd. In support of its claims, the applicant furnished the following evidence:
–        an extract from OfficePOD Ltd’s Twitter page dated 19 February 2015, showing Office POD A, as reproduced below:
–        an extract from Wayback Machine (https://archive.org/web/) dated 16 May 2015 published on http://manofmany.com, showing Office POD A;
–        an extract from OfficePOD’s Instagram page dated 22 June 2015, showing another version of Office POD A in a different colour and location;
–        an extract from Wayback Machine (https://archive.org/web/) dated 19 January 2015 published on www.officepod.co.uk, showing Office POD B, as reproduced below:
–        an extract from OfficePOD Ltd’s Twitter page dated 11 November 2015, showing Office POD B, as reproduced below:
–        an extract from OfficePOD’s Instagram page dated 7 April 2015, showing Office POD B, as reproduced below:
7        By decision of 29 January 2019, the Invalidity Division granted the application for a declaration of invalidity based on the earlier design of Office POD B (‘the earlier design’). In essence, first, it found that Smartblock had proved the disclosure of the earlier design, in accordance with Article 7 of Regulation No 6/2002. Secondly, regarding the alleged lack of individual character for the purposes of Article 6 of Regulation No 6/2002, the Invalidity Division stated that the contested design was lacking in such character since it produced on the informed user an overall impression that was not distinct from that produced by the earlier design.
8        On 19 March 2019, the applicant 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, claiming that the latter had erred in recognising the disclosure of the earlier design and arguing that the contested design lacked individual character for the purposes of Article 25(1)(b), in conjunction with Article 6, of Regulation No 6/2002, since it produced an overall impression on the informed user that was different from the earlier design. In support of its arguments, the applicant produced screen shots from a blog post of 1 April 2016 on the website www.1millionwomen.com.au/blog/why-you-should-consider-creating-office-space-your-backyard, which show views of the earlier design from above, as reproduced below:
9        By decision of 8 April 2020 (‘the contested decision’), the Third Board of Appeal of EUIPO rejected the applicant’s appeal. In the first place, with regard to disclosure of the earlier design pursuant to Article 7 of Regulation No 6/2002, it observed that the images provided by Smartblock provided sufficient information on the earlier disclosure and on the essential features of that design, since they showed the sides, the back, the roof and the front of the transportable building. In the second place, on the basis of Article 25(1)(b), in conjunction with Article 6, of Regulation No 6/2002, it concluded in essence that the contested design produced the same overall impression on the informed user as that produced by the earlier design.
10      In that regard, first, the Board of Appeal pointed out that the degree of freedom of the designer was limited by technical specifications such as soundproofing, ventilation, provision of sufficient user space, plugs, and provision of a working environment with seating. However, the designer did enjoy a high degree of freedom as regards the shape, colours and materials of the transportable building. Secondly, it held that the informed user could be anyone who habitually uses or purchases such an item, and included sellers and distributors of transportable buildings, and purchasers of such buildings, employees and private users. Thirdly, as regards saturation of the state of the art, the Board of Appeal held that the evidence submitted by the applicant was insufficient to prove that the reference sector was so saturated at the date of filing of the contested design that an informed user would have been particularly sensitive to the differences between the designs at issue. Fourthly, as regards comparison of the overall impressions, the Board of Appeal took into account all the images of the earlier design shown in paragraphs 6 and 8 above. As regards the differences between the designs at issue, the Board of Appeal stated that in the earlier design the front and back frames were thicker and overhung the body of the transportable building, the front door and the rear wall were solid and not transparent, there was a protrusion on the roof and not four air vents, the exterior side walls could not be assessed, but appeared to be solid walls and not divided into three panels with air vents as in the contested design. As regards the similarities, the designs at issue had rounded corners of the front and rear frames, a ‘square’ shape of the transportable building, a door positioned in between two transparent panels, and a non-transparent base, roof and side walls. According to the Board of Appeal, the informed user would perceive the transparent door and the non-transparent rear wall as one option, suitable for positioning the transportable building in an alcove or against a wall, providing users with greater privacy. It considered that the other differences, concerning the roof, the panels of the side walls and the depth of overhang of the frames, will be regarded as immaterial. The Board of Appeal concluded from this that the designs at issue produced the same overall impression on the informed user and that they were in conflict for the purpose of Article 25(1)(b), in conjunction with Article 6, of Regulation No 6/2002.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision and, accordingly, reject the application for a declaration of invalidity in its entirety;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the new evidence
13      EUIPO challenges the admissibility of Annexes A.10 to A.15 to the application, since they contain evidence that was not produced by the applicant during the proceedings before EUIPO and which the applicant adduced for the first time before the Court.
14      It should be recalled that it is apparent from the case-law that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 61(2) of Regulation No 6/2002. It follows from that provision that facts not submitted by the parties before the adjudicating bodies of EUIPO cannot be submitted at the stage of the action brought before the Court. It also follows from that provision that the Court cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see, to that effect, judgment of 12 March 2014, Tubes Radiatori v OHIM – Antrax It (Radiateur), T‑315/12, not published, EU:T:2014:115, paragraph 27; see also, to that effect and by analogy, order of 26 February 2015, Fundação Calouste Gulbenkian v OHIM, C‑414/14 P, not published, EU:C:2015:157, paragraph 38, and the case-law cited).
15      In the present case, Annexes A.10 to A.15 to the application consist of comparisons of images of actual and digitally enhanced versions of transportable buildings; articles and extracts from online publications and blogs; a psychological study published in 2015; an article on room sound absorption published in 2003; an article on sound transmission ratings for doors, and, lastly, the applicant’s marketing brochure for 2020.
16      It is apparent from the documents before the Court that the evidence produced in Annexes A.10 to A.15 to the application and submitted for the first time before the Court must be regarded as new and, as such, inadmissible, as acknowledged by the applicant when questioned on that point at the hearing. Accordingly, they must be disregarded in accordance with the case-law cited in paragraph 14 above.
Substance
17      In support of the action, the applicant relies, formally, on four pleas in law, alleging (i) infringement of Article 7(1) of Regulation No 6/2002; (ii) infringement of Article 25(1) (b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation; (iii) infringement of Article 62 of Regulation No 6/2002, in so far as the Board of Appeal failed to state reasons for its acceptance of the disclosure of the earlier design; and (iv) infringement of Article 63 of Regulation No 6/2002, in so far as the Board of Appeal based its decision on evidence concerning the disclosure of the earlier design that was not provided by any of the parties. However, it is apparent from the overall structure of the application and from the applicant’s answers at the hearing that the applicant developed the first and second pleas by including therein the complaints contained in the third and fourth pleas set out above. It is that structure which will be followed by the Court.
The first plea, alleging infringement of Article 7(1) of Regulation No 6/2002
18      The applicant claims that the application for a declaration of invalidity should have been rejected on the ground of insufficiency of the evidence adduced by Smartblock for the purposes of establishing disclosure of the earlier design within the meaning of Article 7(1) of Regulation No 6/2002.
19      EUIPO disputes the applicant’s arguments.
20      It should be borne in mind that, according to Article 7(1) of Regulation No 6/2002, for the purpose of applying Articles 5 and 6 of that regulation, a design is deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date of filing of the application for registration, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union.
21      According to case-law, a design is therefore deemed to have been disclosed once the party relying on that disclosure has proved the events constituting disclosure. In order to refute that presumption, the party disputing disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those events from becoming known in the normal course of business to the specialist circles in the sector concerned (judgment of 21 May 2015, Senz Technologies v OHIM – Impliva (Umbrellas), T‑22/13 et T‑23/13, EU:T:2015:310, paragraph 26).
22      In the first place, the applicant submits that the single view image produced by Smartblock to demonstrate disclosure of the earlier design, within the meaning of Article 7(1) of Regulation No 6/2002, does not constitute a clear and unambiguous presentation of that design. It argues that disclosure of only one side of the earlier design, without giving sufficient information on its exterior although the latter constitutes the part of the earlier design that is mostly visible during its normal use, does not allow an actual and effective comparison to be made of the designs at issue. In that regard, it submits that the Board of Appeal could not have made out the missing sides of the earlier design.
23      It should be noted that, as regards the assessment of disclosure for the purposes of Article 7 of Regulation No 6/2002, it is not apparent from that regulation that the representation of the earlier design at issue must include views reproducing it from all possible angles, so long as that representation allows the shape and the features of the design to be identified (see, to that effect, judgment 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 42 and the case-law cited).
24      In the present case, it is apparent from the documents before the Court, first, that the front view of the earlier design, provided by Smartblock in the form of extracts from the Wayback Machine, Twitter and Instagram, as illustrated in paragraph 6 above, in itself makes it possible to identify the relevant features of that design, namely the cuboid or even cubic shape of the transportable building with rounded corners and its front side. While it is true that the representation provided by Smartblock of the earlier design does not provide an exterior view of the back and side walls, it is nevertheless apparent that, because of the transparent elements and the open door in the extract from the Wayback Machine, the presence of the solid back and side walls and a ceiling can be identified.
25      Thus, even though the images of the earlier design furnished by Smartblock do not show all its features, that fact does not prevent the appearance of the earlier design from being discernible and does not prevent a clear and unambiguous identification of the earlier design for the purposes of assessing the individual character of the contested design in relation to the earlier design.
26      Contrary to what the applicant claims, those images and their quality are thus sufficient to identify the relevant features of the earlier design and constitute solid and objective evidence of effective and sufficient disclosure of the earlier design.
27      Secondly, the images of the earlier design provided by Smartblock, as listed in paragraph 6 above, which show the front view of the transportable building, must be assessed in relation to the images presented by the applicant, as listed in paragraph 8 above, which show the view from above.
28      When assessed in relation to each other, the extracts from Wayback Machine, Twitter and Instagram and the screenshots show the same product in the same place, with the door open or closed and with a front and top view of the transportable building. It follows that the earlier design was made available to the public from at least January 2015 at Sotheby’s Institute of Art, which is a public institution, a fact that has not disputed by the applicant, which in the present case questions the completeness of the images provided by Smartblock rather than the disclosure of the prior design to the public.
29      Accordingly, it is apparent from the joint assessment of those images together with the documents described in paragraph 6 above that the images described in paragraph 8 above merely confirm the disclosure of the earlier design, as claimed by Smartblock.
30      In the second place, the applicant claims that the finding of disclosure of the earlier design by the Board of Appeal constitutes an infringement of the principle of clarity and legal certainty, in so far as it unfairly extends the protection of that design.
31      It should be noted that an infringement resulting from an improper extension of the protection of an earlier design takes place only where the Board of Appeal, in assessing the overall impression produced by the earlier design, takes into consideration features which are not apparent from the view submitted when that design was registered, which, however, is not the situation in the present case (judgment of 29 April 2020, Wood-splitting tool, T‑73/19, not published, EU:T:2020:157, paragraph 44).
32      In the present case, the front and top views of the earlier design make it possible to identify the cuboid or even cubic shape of the transportable building with the front frame slightly overhanging the body of that building, the solid door positioned between two transparent panels on the front side and the solid roof with a protrusion. In addition, the presence of the solid back and side walls and the back frame can also be inferred. The Board of Appeal therefore correctly took into consideration, in paragraph 30 of the contested decision, all the features of the transportable building, namely, the walls, back, front and roof of that building. It also correctly identified, in paragraph 49 of the contested decision, the presence of the solid back and side walls without panels, which are visible inside due to the transparent elements which make up the front part of the transportable building.
33      It must therefore be held that the evidence submitted by Smartblock and supplemented by the applicant before EUIPO, as listed in paragraphs 6 and 8 above, taken as a whole, is capable of establishing to the requisite legal standard that the earlier design was disclosed, within the meaning of Article 7(1) of Regulation No 6/2002, as the Board of Appeal correctly noted in paragraph 30 of the contested decision.
34      With regard to the applicant’s argument alleging infringement of Article 62 of Regulation No 6/2002, it should be noted that the applicant, without raising a plea alleging a failure to state reasons for the contested decision as a whole, as it indeed conceded at the hearing, nevertheless criticised the Board of Appeal’s failure to comment on the evidence relating to any distinctive design features on the back and sides of the earlier design that might affect the overall impression produced by it. In that respect, it should be recalled that, as noted in the above paragraph, the Board of Appeal took into account, in paragraph 30 of the contested decision, all the features of the transportable building and also correctly identified, in paragraph 49 of that decision, the presence of the solid, non-panelled back and side walls visible from the inside. The applicant’s argument must therefore be rejected.
35      As regards the argument alleging infringement of Article 63 of Regulation No 6/2002, it must be noted that the applicant was not able to identify the evidence which, in its view, was not provided by any of the parties, but was taken into consideration by the Board of Appeal in its decision to accept disclosure.
36      The other arguments put forward by the applicant, based on the lack of complete images of the back, sides and roof of the earlier design, cannot call into question the finding of disclosure of the earlier design, and will be examined in the context of the second plea in law in so far as it is the individual character of the design that will be analysed.
37      As regards the references made by the applicant to 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), it should be noted that those references are irrelevant. In that case, the Court of Justice held that it was for the applicant for a declaration of invalidity to provide ‘accurate and complete’ reproductions of the earlier design (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 65). However, in that case, the party who filed the application for a declaration of invalidity had not submitted, in its application for a declaration of invalidity, a complete reproduction of the design that was claimed to be earlier, but rather relied on a combination of its various elements in order to obtain the full appearance of the earlier design (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, paragraphs 66 to 69). That is clearly not the case here, since complete representations are included in the documents before the Court.
38      Furthermore, as regards the reference to the judgment of 29 April 2020, Wood-splitting tool (T‑73/19, not published, EU:T:2020:157), relied on by the applicant, it should be noted that, in that case, the Court held that there had been an infringement of the principle of clarity and legal certainty, in so far as the protection of the earlier design was unfairly extended, because features that were not apparent from the view submitted of the design were taken into consideration (judgment of 29 April 2020, Wood-splitting tool, EU:T:2020:157, paragraph 44).
39      However, contrary to what the applicant claims, that does not mean that a design must be regarded as not having been disclosed when only some of its features are visible in the documents put forward to establish its disclosure. In the present case, and as has already been pointed out in paragraph 32 above, the back and side walls were visible from the inside because of the transparent elements which make up the front part of the transportable building. Furthermore, whether the disclosed features of the earlier design are sufficient to ascertain if the contested design produces the same overall impression as that produced by the earlier design must be assessed when comparing the designs at issue within the meaning of Article 6 of Regulation No 6/2002.
40      In the light of all the foregoing, the first plea in law put forward by the applicant must be rejected as unfounded.
The second plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation
41      The applicant claims, in essence, that the Board of Appeal made an error of assessment in finding that the contested design lacked individual character, in breach of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation.
42      EUIPO disputes the applicant’s arguments.
43      It should be borne in mind that Article 25(1)(b) of Regulation No 6/2002 provides that a Community design may be declared invalid only in the cases set out under subparagraphs (a) to (g) of that paragraph and, specifically, as regards the case referred to in subparagraph (b), if it does not fulfil the conditions set out in Articles 4 to 9 of that regulation.
44      Among the requirements for protection of a design by a Community design laid down in Articles 4 to 9 of Regulation No 6/2002 is the requirement that the design has individual character, as set out in Article 6 of that regulation. Under Article 6(1)(b) of Regulation No 6/2002, 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 date of filing the application for registration. Moreover, Article 6(2) of Regulation No 6/2002 states that, in assessing the individual character of a design, the degree of freedom of the designer in developing that design is to be taken into consideration.
45      According to the 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 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).
46      In the assessment of the individual character of a design in relation to any previous presence in the design corpus, account must be taken of the nature of the product in respect of which that design is incorporated, in particular the industrial sector to which it belongs (see recital 14 of Regulation No 6/2002), the degree of freedom of the designer in developing the design (see Article 6(2) of Regulation No 6/2002), whether there is saturation of the state of the art, which might make the informed user more attentive to the differences in the designs compared, and also the manner in which the product at issue is used, in particular the way it is normally handled (see, to that effect, judgment of 7 November 2013, Bounding feline, T‑666/11, not published, EU:T:2013:584 paragraph 31 and the case-law cited).
47      It is in the light of the considerations set out in paragraphs 44 to 46 above and in the light of the earlier design, whose disclosure has been established, that it is necessary to assess whether the contested design lacks individual character within the meaning of Article 6 of Regulation No 6/2002.
–       The informed user
48      In paragraph 32 of the contested decision, the Board of Appeal noted that the relevant sector by reference to which the informed user of the contested design had to be identified was the industrial sector of transportable buildings. In addition, in paragraph 38 of the contested decision, the Board of Appeal stated, in essence, that, having regard to the function of the goods in which it was intended to be incorporated, namely transportable offices, the informed users of the contested design were, on the one hand, sellers, distributors of the transportable buildings and purchasers of such buildings for their companies or businesses, and, on the other hand, employees and private users who purchase them in order to increase their working space.
49      The applicant does not dispute the Board of Appeal’s findings concerning the industrial sector and the definition of the informed user adopted by the Board of Appeal in so far as it includes workers and commercial users, purchasers and sellers. It submits, however, that the informed users are professionals who will notice all differences between the designs being compared and that ‘the consumer is not an informed user’. Transportable buildings are not intended to be used outside, but rather inside offices with sufficient space to accommodate them and are used for their soundproofing function. Accordingly, it is unlikely that a consumer would purchase a large transportable building for private use as it would be unlikely to fit in a house due to its size and would be more expensive than soundproofing part of a house.
50      As regards the informed user, that concept is not defined by Regulation No 6/2002. According to the case-law, 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 has detailed technical expertise. Thus, the concept of the ‘informed user’ may be understood as referring, not to a user displaying an average level of 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).
51      As regards, more specifically, the informed user’s level of attention, 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 or she 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 or her interest in the products concerned, shows a relatively high level of attention when using them (see, to that effect, judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59).
52      It must be noted that the applicant neither explains nor demonstrates the reasons why the transportable buildings are intended to be used only inside an office and not outside. The only arguments put forward by the applicant, concerning the user’s interest in the quality of soundproofing and the ability of a portable structure to fit into the place of use, may well be relevant to the features of portable structures used both inside and outside a building.
53      Moreover, the fact that the transportable structures are large and relatively expensive does not rule out the possibility that they may also be purchased by private users for their own needs. The existence of alternative and more economical solutions, such as soundproofing part of a house, does not exclude a private purchaser from being interested in a transportable building, owing to its features, such as the quality of soundproofing, the ability to fit it into the place of use and the ability to move it from one place to another.
54      As regards the informed user’s degree of knowledge and level of attention, it follows in particular from the case-law cited in paragraphs 50 and 51 above that the informed user, on account of his or her interest in the goods concerned, displays a relatively high level of attention when using them, irrespective of whether he or she is, as in the present case, a professional or the final consumer of the goods at issue, particularly given that the goods in question are not everyday consumer goods and are relatively expensive.
55      Therefore, the Board of Appeal correctly stated that the informed user also included private users purchasing transportable buildings for their own use and wishing to adapt or increase their workspace without having to construct an additional building. The Board of Appeal was also right to conclude that the informed user’s level of attention was relatively high, irrespective of whether he or she is a professional or an end consumer, which, moreover, was acknowledged by the applicant at the hearing. The arguments calling that conclusion into question must therefore be rejected.
–       The designer’s degree of freedom
56      In paragraph 34 of the contested decision, the Board of Appeal noted that the designer’s degree of freedom was limited by technical specifications such as soundproofing, ventilation, providing sufficient user space, plugs and provision of a working environment with seating. The Board of Appeal found that the designer could nevertheless choose from a wide range of colours and construction materials (plastic, metal, glass, wood, etc.). As regards the shape, it considered that a transportable building could be designed in various shapes, namely square, round, oval, rectangular or even an irregular shape. It concluded that, as regards the appearance of transportable buildings, the designer enjoyed a high degree of freedom.
57      The applicant acknowledges that the development of designs for transportable buildings is subject to certain constraints. Nevertheless, it submits that the Board of Appeal erred in its interpretation and application of the principles referred to in Article 6 of Regulation No 6/2002 in so far as the designer’s degree of freedom in developing the earlier design should have been found to be normal instead of high.
58      It must be noted that the designer’s degree of freedom in developing his 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, Grupo Promer Mon Graphic v OHIM – PepsiCo (Representation of a circular promotional item), T‑9/07, EU:T:2010:96, paragraph 67).
59      As a consequence, 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 the 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. Consequently, 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 (judgment of 18 July 2017, Chanel v EUIPO – Jing Zhou and Golden Rose 999 (Ornament), T‑11/16, not published, EU:T:2017:517, paragraph 30 and the case-law cited).
60      It should be noted that the applicant has not furnished any evidence to establish the existence of any regulatory or technical constraint imposing a particular shape or proportions on the goods in question. The applicant’s claim that the rectangular shape is technically the most efficient and easy to achieve is not borne out. In addition, the applicant submits that technical specifications relating to the dimensions of the transportable building must be taken into account in order for it to be used in accordance with its intended purpose. When questioned on this point at the hearing, the applicant was unable to establish to what extent technical specifications were likely to have an impact on the shape of the building. Therefore, it cannot be argued that the designer’s degree of freedom is restricted in the development of such structures, apart from by the limitations already noted by the Board of Appeal.
61      Although the requirements of soundproofing and space make it necessary for the building to be completely closed off from the outside and limit the dimensions, height and roof of transportable buildings, those aspects do not place any particular constraints on the designer as regards its three-dimensional shape, which may be cubic, spherical, ellipsoidal, cuboid or even irregular in shape, or as regards its external appearance. Furthermore, the door and other elements, such as ventilation grilles, can be placed in different positions. The designer is therefore free to choose the shape, colour and transparency or opacity of the transportable building, as well as the patterns and decorative elements characterising its surface.
62      Accordingly, the Board of Appeal was right to find that the designer’s degree of freedom was high, contrary to the applicant’s arguments.
–       Overall impression produced by the designs at issue on the informed user
63      The Board of Appeal confirmed the Invalidity Division’s finding that the contested design and the earlier design produced the same overall impression on the informed user and that certain differences in their appearance were not capable of altering that impression.
64      The applicant claims, in essence, that the differences between the designs at issue are sufficiently significant to produce a different overall impression on the informed user. In the first place, it submits that the back and sides of the earlier design are not visible and could not be compared with the corresponding parts of the contested design. In the second place, it submits that the Board of Appeal did not take into account the transparency of the front and back walls of the contested design in finding that those elements will be perceived as options. It submits that the informed user of the designs at issue is aware of industry practice and of the fact that none of the major manufacturers of transportable buildings offers the option to choose between transparent and non-transparent walls. The only options that can be chosen relate to the colour scheme, furnishings and possible choices for electronic devices and booking procedures. In the third place, the applicant claims that the differences concerning the protrusion on the roof and the depth of overhang of the frames contribute to producing a distinct overall impression on the informed user. In the fourth place, the applicant submits that the Board of Appeal erred in its assessment of the features that would attract the attention of the informed user and disregarded the significant differences between the designs at issue.
65      According to the case-law, 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. The comparison must be based on the features disclosed in the contested design and relate solely to the elements actually protected, without taking account of characteristics, and particularly technical characteristics, excluded from the protection (see judgment of 13 June 2019, Visi/one v EUIPO – EasyFix (Display holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 84 and the case-law cited).
66      Where the similarities between the designs at issue concern constraints of the features imposed by the technical function of the product or of an element of the product, those similarities will have only minor importance in the overall impression produced by those designs on the informed user (see, to that effect, judgment of 18 March 2010, Representation of a circular promotional item, T‑9/07, EU:T:2010:96, paragraph 72).
67      By contrast, differences will be insignificant in the overall impression produced by the designs at issue where they are not sufficiently pronounced to distinguish the goods at issue in the perception of the informed user or offset the similarities found between those designs (see, to that effect, judgment of 21 November 2013, El Hogar Perfecto del Siglo XXI v OHIM – Wenf International Advisers (Corkscrew), T‑337/12, EU:T:2013:601, paragraphs 49 to 54).
68      In order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually from among all the designs which have been made available to the public previously (see, to that effect, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 84 and the case-law cited). Consequently, as noted in paragraph 38 above, missing views cannot be taken into account and must be capable of being deduced from other views.
69      The common essential features that dominate the overall impression of the designs at issue are represented by the simple cuboid geometric shape, with rounded corners and a door placed between two symmetrical transparent panels, which contrast with the non-transparent base, side walls and roof and give the impression of a minimalist construction.
70      As regards the other elements relied on by the applicant, it is true that the images of the earlier design do not include a view from the rear, but it is clear from the visible parts of the earlier design that its back and side walls are solid and that it has a ceiling. Moreover, that cannot give rise to an error of assessment on the part of the Board of Appeal as to the fact that the back wall of the transportable building represented contains the same frame as that visible on the front wall. The presence of the frame at the back of the transportable building can be clearly deduced from the top view, shown in paragraph 8 above. Contrary to what the applicant suggests, if the back wall of the transportable building were only a solid wall, the overhang of the frame would not be visible. Furthermore, the difference between the colour of the back wall on the inside of the transportable building and the colour of the overhang of the frame highlights the difference between the back wall and the frame of the transportable building, allowing them to be perceived as separate elements.
71      The applicant’s arguments alleging a contradiction by the Board of Appeal in its assessment of the side walls of the earlier design cannot succeed either. The applicant submits that the Board of Appeal, first, noted that the external side walls were not visible and, secondly, found that the difference with regard to the side walls was immaterial. In this respect, in paragraph 49 of the contested decision, the Board of Appeal pointed out that the side walls, as seen from the inside, consisted of solid walls without panels. It is therefore that feature which the Board of Appeal considers, in paragraph 53 of the contested decision, to be a negligible difference, without contradicting its own reasoning.
72      Nor can the Court accept the applicant’s argument that the Board of Appeal erred in finding that the transparency of the front and back walls of the contested design will be perceived as an option. It is indeed true, as noted by the applicant, that one of the main advantages of transportable buildings is their ability to be integrated into the place of use. This feature allows for a certain degree of customisation according to the needs of the customers, which includes the possibility of choosing between transparent or non-transparent walls.
73      However, the applicant has not sufficiently explained how the differences between transparent and non-transparent walls take precedence over the essential features of the designs at issue, in particular their simple cuboid geometric shape with rounded corners. It merely states that, at the date of publication of the contested design, it was almost the only one to offer transportable buildings with a transparent door and back wall. Nor has the applicant shown that the choice between transparent and non-transparent walls was not in fact part of the practice of the transportable building sector. Lastly, as regards soundproofing, even considering that the material chosen may have an impact on the quality of soundproofing, it is still possible to make non-transparent walls with good quality of soundproofing, for example by using non-transparent glass.
74      Therefore, in the context of the comparison of the overall impressions of the designs at issue, the Board of Appeal was right to find that the informed user will pay more attention to the essential features of the designs at issue, in particular their simple cuboid geometric shape with rounded corners and not to the differences concerning the transparency of the front and back walls.
75      As regards the difference concerning protrusion on the roof, the applicant does not agree with the Board of Appeal’s findings that roof is not visible during normal use of the transportable building and that it is thus a negligible difference between the designs at issue.
76      It is true that, as the applicant submits, a transportable building can be placed in the middle of a space, against a wall or in a recess. However, first, when the earlier design is viewed from the front, the protrusion on the roof of the design is not visible, as is apparent from the images furnished and as acknowledged by the applicant. Secondly, when looking at the earlier design from other perspectives, the protrusion on the roof, even if visible, will be perceived as a functional feature either for aeration or ventilation.
77      Thus, the Board of Appeal was right in not considering that the protrusion on the roof would be perceived as a significant difference between the designs at issue.
78      As regards the applicant’s argument that the frames of the earlier design overhang the body and attract the attention of the informed user, it should be noted that, in the present case, the overhang of the frames is not particularly pronounced in relation to the dimensions of transportable buildings, which, as the applicant has acknowledged, are large items. The attention of the informed user will be drawn mainly to other elements of the contested design, in particular its simple cuboid geometric shape with rounded corners, which gives it a minimalist impression. The difference in relation to the overhang of the frames of the earlier design, contrary to the applicant’s opinion, is not capable of changing that image by giving it the impression of being more robust. Furthermore, the overhang of the frames can only be seen when the transportable building is viewed from certain angles, which will greatly limit its role in the assessment of the individual character of the contested design.
79      Therefore, the Board of Appeal was fully entitled to find that the difference concerning the depth of the front and back frames was negligible.
80      The applicant’s arguments concerning the incorrect assessment, in the direct comparison between the designs at issue, of features that attract the informed user’s attention and significant differences between the designs at issue cannot succeed either.
81      First, as regards the similarity of the rounded corners, the applicant claims that those corners can be seen only from the front views of the designs at issue. It is apparent from views 1.1 to 1.3 of the contested design, as included in paragraph 6 above, and from all the images of the earlier design, as included in paragraph 8 above, that rounded corners are visible from a number of angles, in particular from the front, above and side. Furthermore, even though the corners are not identical in their curvature or the thickness of the frames, those differences will not be noticed by the informed user. As noted in paragraph 51 above, the informed user is not an expert capable of observing in detail the minimal differences that may exist between the designs at issue.
82      Secondly, as regards the difference between the ‘square’ shape of the earlier design and the ‘rectangular’ shape of the contested design, it must be borne in mind, having regard to paragraph 62 above, that the designer enjoyed a high degree of freedom as regards the choice of the form of the transportable building. The designs at issue are both parallelepipeds. The contested design resembles a cube, whereas the earlier design is cuboid. However, the ratio of the sides of the cuboid of the earlier design does not depart significantly from that of the faces of the cube of the contested design.
83      Thirdly, as regards the position of the door in the centre of the two designs at issue, the applicant’s argument that it is the only possible position due to technical constraints cannot be accepted. The examples of transportable buildings set out in Annexes A.8 and A.9 show a number of transportable buildings with rounded corners and doors placed in various positions. It follows that the central position of the door is only one of the options available to the designer and meets a specific aesthetic requirement, namely that of giving a symmetrical image to the designs at issue.
84      Fourthly, as regards the possible presence of further differentiating elements on the side walls, such as a window or glass wall, it should be noted that the transparent elements at the front of the transportable building show solid back and side walls without panels which are incompatible with the presence of the differentiating elements noted by the applicant.
85      Fifthly, as regards the broad and high threshold in front of the door, formed by the lower part of the frontal frame in the earlier design, it should be noted, as observed by the applicant, that, in the contested design, there is no distinct and visible threshold.
86      It is apparent from the case-law that, when comparing the designs, the comparison may be based only on the features which are disclosed in the contested design (judgment of 13 June 2017, Ball Beverage Packaging Europe v EUIPO – Crown Hellas Can (Cans), T‑9/15, EU:T:2017:386, paragraph 87).
87      Therefore, in so far as the representation of the contested design does not include views with a distinct and visible threshold, the Board of Appeal was right to conclude, in paragraph 51 of the contested decision, that the configuration of the threshold at the entrance of the transportable building should not be taken into account in the assessment of the overall impression.
88      The overall impression of the designs at issue is dominated by a simple cuboid geometric shape with rounded corners, with a door placed between two transparent panels, contrasting with the non-transparent base, side walls and roof. The synergy of those four fundamental features reinforces the impression of minimalism and symmetry of the designs at issue and conveys, to the informed user, who displays a relatively high level of attention and particular vigilance, the same overall impression.
89      Therefore, in view of the high degree of freedom enjoyed by the designer in developing the contested design, the differences concerning the transparency of the back of the transportable building and door as well as the protrusion on the roof are not sufficient to produce a different overall impression on the informed user and to dispel the impression of ‘déjà vu’ from the point of view of that user of the contested design in relation to the earlier design.
90      Accordingly, in the light of all of the foregoing, the second plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
91      Under Article 134(1) of the Rules of Procedure, 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 and EUIPO has applied for costs, the applicant must be ordered to pay the costs.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Framery Oy to pay the costs.
Spielmann
Spineanu-Matei
Mastroianni
Delivered in open court in Luxembourg on 30 June 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.