62020TJ0327
JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
27 April 2022 (
*1
)
(Community design – Invalidity proceedings – Registered Community design representing a shower drainage channel – Earlier design produced after the filing of the application for a declaration of invalidity – Article 28(1)(b)(v) of Regulation (EC) No 2245/2002 – Discretion of the Board of Appeal – Scope – Article 63(2) of Regulation (EC) No 6/2002 – Oral proceedings and measures of inquiry – Articles 64 and 65 of Regulation No 6/2002 – Ground for invalidity – Individual character – Article 6 and Article 25(1)(b) of Regulation No 6/2002 – Identification of the earlier design – Earlier whole design – Determination of the features of the contested design – Global comparison)
In Case T‑327/20,
Group Nivelles NV, established in Gingelom (Belgium), represented by J. Jonkhout, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and G. Predonzani, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court,
Easy Sanitary Solutions BV, established in Oldenzaal (Netherlands), represented by F. Eijsvogels, lawyer,
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 17 March 2020 (Case R 2664/2017-3), relating to invalidity proceedings between Group Nivelles and Easy Sanitary Solutions,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and T. Perišin, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Registry of the General Court on 28 May 2020,
having regard to the response of EUIPO lodged at the Court Registry on 29 September 2020,
having regard to the response of the intervener lodged at the Court Registry on 2 October 2020,
having regard to the designation of another Judge to complete the Chamber after one of its Members was prevented from acting,
further to the hearing on 13 October 2021,
gives the following
Judgment
Background to the dispute
1
On 28 November 2003, the intervener, Easy Sanitary Solutions BV, 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 Community design in respect of which registration was sought and which is contested in the present case is represented in the following views:
25.1
25.2
25.3
3
The goods in which the contested design is intended to be incorporated are in Class 23-02 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘shower drains’.
4
The contested design was registered on 9 March 2004 as Community design No 107834-0025 and published on the same day in Community Designs Bulletin No 19/2004. It was renewed a number of times, including on 16 June 2018.
5
On 3 September 2009, I-Drain BVBA, the legal predecessor of the applicant, Group Nivelles NV, filed an application for a declaration of invalidity of the contested design, pursuant to Article 52 of Regulation No 6/2002.
6
The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4 to 9 of that regulation.
7
I-Drain attached to its application for a declaration of invalidity a copy of international registration DM/059828 (‘registration No DM/059828’ or ‘design No DM/059828’), filed and registered on 2 April 2002 by the intervener and published on 30 June 2002 as follows:
8
On 2 April 2010, in its reply to the intervener’s observations, after filing its application for a declaration of invalidity, I-Drain submitted new documents relating to other designs, including, in particular, extracts from two Blücher product catalogues dating from 1998 and 2000, each containing, at page 33, the following illustration with a cover plate in the centre (‘the Blücher catalogue cover plate’):
9
On 30 August 2010, following a merger by acquisition, the applicant succeeded to the rights and obligations of I-Drain, which ceased to exist as a legal person.
10
By decision of 23 September 2010, the Invalidity Division upheld the application for a declaration of invalidity and declared the contested design invalid on the basis of Article 25(1)(b) of Regulation No 6/2002, on the ground that it lacked novelty within the meaning of Article 5 of that regulation, as regards the Blücher catalogue cover plate.
11
On 15 October 2010, the intervener lodged an appeal with EUIPO under Articles 55 to 60 of Regulation No 6/2002 against the decision of the Invalidity Division.
12
By decision of 4 October 2012 (‘the first decision’), the Third Board of Appeal of EUIPO upheld the appeal and annulled the decision of the Invalidity Division in so far as it was based on Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 4(1) and Article 5 of that regulation, that is to say, in so far as it had found that the contested design lacked novelty. It remitted the case to the Invalidity Division so that it could re-examine the application for a declaration of invalidity in so far as it was based on Article 25(1)(b) of that regulation, read in conjunction with Article 4(1) and Article 6 thereof, that is to say, on the ground of the contested design’s lack of individual character.
13
On 7 January 2013, the applicant brought an action before the General Court under Article 61 of Regulation No 6/2002 against the first decision.
14
By judgment of 13 May 2015, Group Nivelles v OHIM – Easy Sanitary Solutions (Shower Drainage Channel) (T‑15/13, the first judgment of the General Court, EU:T:2015:281), the General Court annulled the first decision and dismissed the action as to the remainder. Like EUIPO had done up to that point, the General Court took into account, as (part of) an earlier design, the Blücher catalogue cover plate, but not design No DM/059828.
15
On 11 July and 24 July 2015, the intervener and EUIPO each brought an appeal before the Court of Justice against the first judgment of the General Court.
16
By judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles (C‑361/15 P and C‑405/15 P, the judgment on appeal, EU:C:2017:720), the Court of Justice dismissed the appeals, having nevertheless found, in paragraphs 72 and 134 of that judgment, that the General Court had committed two errors of law. In the first place, the Court of Justice held that the General Court had erred in law, in paragraphs 77 to 79 and 84 of the first judgment of the General Court, by requiring EUIPO, when assessing the novelty of the contested design, to combine various elements of one or more earlier designs shown in various Blücher catalogue extracts annexed to the application for a declaration of invalidity, even though the applicant for a declaration of invalidity had failed to reproduce in its entirety the design which it had relied on as an earlier design. In the second place, the Court of Justice held that the General Court had erred in law, in paragraph 132 of the first judgment of the General Court, by requiring, in the context of the assessment of the individual character of the contested design, that the informed user of that design should know the product in which the earlier design was incorporated or to which it was applied. Since the appeals were nevertheless dismissed, the annulment of the first decision by the operative part of the first judgment of the General Court became final and the case was remitted to EUIPO.
17
On 19 December 2017, the parties before EUIPO were informed that the appeal against the decision of the Invalidity Division had been remitted to the Third Board of Appeal, sitting in a new composition, as Case R 2664/2017-3.
18
On 24 July 2018, the Rapporteur of the Board of Appeal sent the parties to the proceedings before EUIPO a communication informing them that the earlier design submitted to the Board of Appeal was design No DM/059828, and that it was only design No DM/059828, and not the Blücher catalogue cover plate, which was indicated in the application for a declaration of invalidity. In re-examining the file following the remittal of the case by the Court of Justice, the Rapporteur had noted that the earlier design examined by the adjudicating bodies which had made the previous decisions did not appear in the application for a declaration of invalidity and that no other design was indicated in that application. The parties were given two months to submit their observations.
19
On 21 September 2018, the applicant submitted its observations.
20
By decision of 17 March 2020 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the intervener’s appeal, annulled the decision of the Invalidity Division and rejected the application for a declaration of invalidity. As a preliminary point, it found that the only earlier design indicated in the application for a declaration of invalidity was design No DM/059828 and that the other designs, such as the Blücher catalogue design, had been relied on subsequently, in further observations. It stated that Article 63(2) of Regulation No 6/2002 did not allow the applicant to extend the subject matter of the proceedings by basing its application on new earlier designs.
21
As regards the contested design and its visible features, the Board of Appeal found that it was registered for shower drainage channels composed of a siphon, a collector and a cover plate and, in particular, that the product represented in the contested design had side slots on both sides and thin outer edges, while the cover plate was decorated with dots over its entire surface. The Board of Appeal noted that, according to paragraph 49 of the first judgment of the General Court, once the ‘shower drain’ to which the contested design relates was installed, that is to say, built into the floor of the shower, it was not only the top of the plate which was visible, but also, the two side slots and the top of the rim of the collector.
22
The Board of Appeal took the view that it had to conduct a full review of the evidence submitted in order to establish precisely what constituted the earlier design, since, following the judgment on appeal and the first judgment of the General Court, it could not be the cover plate in the centre of the picture at page 33 of the Blücher catalogues, which did not represent a complete drainage device for liquid waste. After observing that the application for a declaration of invalidity defined the subject matter of the proceedings, which resulted, on the one hand, from the contested design and, on the other, from the earlier designs relied on, the Board of Appeal found that, in the present case, the applicant had based its application for a declaration of invalidity on design No DM/059828 (reproduced in paragraph 7 above).
23
As regards the technical function of the contested design, the Board of Appeal found that none of its features was solely dictated by its technical function and, consequently, no features should be excluded from protection or attributed a substantially reduced role in their impact on the overall assessment. It also stated that there was a strong aesthetic element to design in that area.
24
As regards the individual character of the contested design, first, the Board of Appeal considered that the informed user was a person who was acquainted with the basic features and configurations of drainage channels available in the normal course of business and belonged to both the professional public (such as retailers selling drainage channels to third parties, plumbers installing them, interior designers researching and selecting the drains for their clients taking into account their aesthetic appearance) and the non-professional public, thus including the end users autonomously choosing and purchasing them for installation and use in any sector or environment. Secondly, the Board of Appeal considered that the freedom of the designer was relatively extensive since, even if the informed user, as such, was aware that drainage channels, in order to perform their function of drainage, needed to have a collector with side and end walls, a siphon connected to the drain, and either gratings or a grid or a closed panel with slots or openings through which the water flows, the specific appearance of those features in terms of shapes, materials, sizes, proportions and so forth could still vary as there were no specific constraints other than those of ensuring that the water is eliminated. Thirdly, having established the features of the contested design and the earlier disclosed designs individually and then having compared the overall impressions they created (see paragraphs 117 to 127 below), the Board of Appeal concluded that the contested design possessed individual character and could not, a fortiori, lack novelty, and was therefore valid.
Forms of order sought
25
The applicant claims that the Court should:
–
annul the contested decision;
–
give a new ruling and declare invalid, correcting the grounds as necessary, the contested design;
–
order EUIPO to pay the costs.
26
EUIPO contends that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs.
27
The intervener contends that the Court should:
–
reject the complaints put forward in support of the first, second, fourth, fifth and sixth pleas in law;
–
order the applicant to pay the costs.
Law
28
In support of the action, the applicant raises six pleas in law, alleging, in essence, errors of assessment by the Board of Appeal, first, in paragraph 24 of the contested decision (and in the first two paragraphs of the second page of the Rapporteur’s communication of 24 July 2018, to which that paragraph refers); secondly, in paragraph 26 of the same decision; thirdly, in paragraphs 38 and 39 of that decision, in conjunction with paragraphs 58 and 62 to 65 of that decision; fourthly, in paragraphs 98 to 110 and paragraph 112 of the contested decision; fifthly, in paragraph 111 of that decision, in conjunction with paragraphs 29 and 30 of that decision; and, sixthly, in paragraphs 114 to 117 of that decision.
29
The Court considers it appropriate to examine, first, the third and first pleas, which concern the identification of the earlier design, followed by the second plea, which concerns the determination of the features of the contested design, and, lastly, the fourth, fifth and sixth pleas, which concern the comparison of the designs at issue and the assessment of the individual character of the contested design.
The first and third pleas, concerning the identification of the earlier design
The third plea
30
By the third plea, the applicant claims that the Board of Appeal, in paragraphs 38 and 39 of the contested decision, in conjunction with paragraphs 58 and 62 to 65 of that decision, committed an error and infringed Article 63(2) of Regulation No 6/2002 in finding that only the evidence submitted in the context of the application for a declaration of invalidity before the Invalidity Division, in the present case the application filed on 3 September 2009 by the applicant’s legal predecessor, was admissible and could be taken into account for the purpose of assessing whether or not the design was invalid. It considers that such discretion in the context of the assessment of facts and evidence submitted in invalidity proceedings is conferred on EUIPO by law if and to the extent that it is called upon to take a decision in those proceedings. However, according to the applicant, that discretion is not applicable to facts and evidence submitted in proceedings in which EUIPO has already adjudicated and which have already been the subject of a final and earlier decision by EUIPO.
31
In the present case, according to the applicant, proceedings have already given rise to a final and earlier decision, namely the proceedings before the Invalidity Division of EUIPO which led to the decision of the Invalidity Division of 23 September 2010, and the proceedings before the Board of Appeal of EUIPO which led to the first decision of 4 October 2012. Those two proceedings led to the conclusion that all the facts and all the evidence could be taken into consideration. In the subsequent proceedings before the General Court and the Court of Justice, the question of the admissibility of facts and evidence produced by the parties in the previous proceedings before the Invalidity Division and the Board of Appeal was not raised or called into question, either ex officio or otherwise. In particular, the conclusion in the Rapporteur’s communication of 24 July 2018 that it is not possible to produce the photograph at page 33 of the Blücher catalogues, which the Rapporteur considers can be inferred from the judgment on appeal, is also incorrect. The intervener and EUIPO have never disputed those findings of the Invalidity Division and of the Board of Appeal in that regard, either before the General Court or before the Court of Justice.
32
The applicant therefore submits that, in making that finding in the relevant paragraphs of the contested decision, the Board of Appeal has altered previous final decisions. That is contrary to the general principles of good administration and the settlement of disputes, as laid down in Article 41 of the Charter of Fundamental Rights of the European Union, and to the principles of legal certainty, protection of legitimate expectations and procedural expediency. It concludes that the Board of Appeal could not exercise the discretion conferred on it by Article 63(2) of Regulation No 6/2002 with retroactive effect.
33
EUIPO disputes the applicant’s arguments.
34
The intervener leaves the complaint based on issues of law, put forward by the applicant in this plea, to the discretion of the Court.
35
In paragraphs 38 and 39 of the contested decision, the Board of Appeal considered that, since the Court of Justice held, in the judgment on appeal, that the earlier design which the Board took into consideration in the first decision was not the right one, it was necessary to examine other earlier designs relied on by the applicant. In the application for a declaration of invalidity, the only design indicated as an earlier design by the applicant was design No DM/059828. The other designs had been relied on subsequently by the applicant’s predecessor in law in further observations. In that regard, the Board of Appeal added that account should be taken of the fact that Article 63(2) of Regulation No 6/2002 did not allow the applicant to extend the subject matter of the proceedings by basing its application on new earlier designs, since such an approach would prolong the proceedings and alter the subject matter thereof. The new earlier designs produced by the applicant’s legal predecessor in its further observations, namely those appearing in the Blücher catalogues, had not been relied on as earlier designs in the application for a declaration of invalidity.
36
In paragraph 58 of the contested decision, the Board of Appeal noted that, as it had already determined in a number of previous decisions, the application for a declaration of invalidity defined the subject matter of the proceedings, which resulted, on the one hand, from the contested design and, on the other, from the earlier designs relied on, and that, for that reason, it was no longer possible to introduce into the proceedings other earlier designs that could form an obstacle to the novelty or individual character of the contested design once the application had been made.
37
In paragraph 62 of the contested decision, the Board of Appeal observed that the cover plate in the centre of the picture at page 33 of the Blücher catalogues, indicated by the applicant’s legal predecessor as the earlier design, or one of the earlier designs, that were supposed to demonstrate that the contested design lacked novelty and individual character, had been submitted only in reply to the intervener’s observations. It stated that the fact that the adjudicating bodies which had made the previous decisions had considered that cover plate to be an admissible earlier design was contrary to the abovementioned principles according to which the subject matter of invalidity proceedings was to be defined in the application, and other earlier designs could not be introduced into those proceedings once the application for a declaration of invalidity had been filed.
38
In paragraph 63 of the contested decision, for the sake of completeness, the Board of Appeal observed that the admissibility of additional facts, evidence and documents relating to earlier designs or rights already referred to in the application for a declaration of invalidity was subject to the discretionary powers conferred on the Invalidity Division under Article 63(2) of Regulation No 6/2002. However, that provision did not allow the applicant for a declaration of invalidity to extend the subject matter of the proceedings by basing the application on new earlier designs, because such an approach would prolong the proceedings and alter the subject matter thereof. Therefore, given that the designs listed, inter alia, in enclosures 3a and 3b, namely in the Blücher catalogues, had not been indicated in the application for a declaration of invalidity, neither the Invalidity Division nor the Board of Appeal had any discretion in that regard. Consequently, the designs appearing in those documents cannot be considered admissible prior art for the purposes of the present invalidity proceedings. In paragraph 64 of that decision, the Board of Appeal found, for the same reasons, that the documents and photographs referred to by the applicant in its observations in response to the Rapporteur’s communication, which concerned designs other than those contained in design No DM/059828, could not constitute admissible prior art.
39
In paragraph 65 of the contested decision, the Board of Appeal therefore concluded that, in accordance with the Rapporteur’s communication, the only earlier design in the present case was design No DM/059828.
40
By the third plea, the applicant submits, in essence, that the Board of Appeal committed an error and infringed Article 63(2) of Regulation No 6/2002 by basing its decision solely on the earlier designs represented in the application for a declaration of invalidity, disregarding the evidence (such as the Blücher catalogues) which was produced after that application for a declaration of invalidity had been filed, and which had been the sole basis of the Board of Appeal’s first decision which had become final.
41
In that regard, it must be stated at the outset that the issue of the identification of the earlier designs to be compared with the contested design was never definitively resolved in the earlier proceedings before EUIPO, the General Court and the Court of Justice.
42
First of all, the first decision of the Board of Appeal, which had not, moreover, explicitly adjudicated on the admissibility of the documents produced by the applicant after it filed its application for a declaration of invalidity, was annulled by the first judgment of the General Court, the operative part of which has acquired the force of res judicata (see paragraphs 14 and 16). In accordance with settled case-law, a judgment annulling a measure takes effect ex tunc and thus has the effect of eliminating the annulled measure from the legal order with retroactive effect (see judgments of 27 June 2013, Beifa Group v OHIM – Schwan-Stabilo Schwanhäußer (Instruments for writing), T‑608/11, not published, EU:T:2013:334, paragraph 32 and the case-law cited, and of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 72 (not published) and the case-law cited). Accordingly, the first decision has been removed from the legal order of the European Union and has in no way become final.
43
Secondly, in its first judgment (see paragraph 14 above), the General Court did not rule on the admissibility of those documents, still less on the earlier designs to be compared with the contested design. That point was not raised by the parties or even by the General Court of its own motion. Furthermore, the judgment on appeal (see paragraph 16 above) was limited to the points of law raised in the appeals. Therefore, the questions of the identification of the earlier designs on which the application for a declaration of invalidity was based and of the relevance of the documents produced subsequently in order to establish which designs are the earlier designs were neither raised nor settled in the first judgment of the General Court or in the judgment on appeal.
44
Next, it must be stated that the present plea is based on the premiss that Article 63(2) of Regulation No 6/2002 is applicable in circumstances such as those of the present case. It is therefore necessary to examine whether that provision is applicable in the present case, at least to the question of the identification of the earlier design, in the light, in particular, of Article 28(1)(b)(v) and (vi) of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Regulation No 6/2002 (OJ 2002 L 341, p. 28).
45
In that regard, it should be observed that, under Article 63(2) of Regulation No 6/2002, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned. That provision thus confers a discretion on both the Invalidity Division and the Board of Appeal of EUIPO.
46
According to settled case-law, it follows from the wording of Article 63(2) of Regulation No 6/2002 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 6/2002, and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time. In stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, that provision grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see judgment of 5 July 2017, Gamet v EUIPO – Metal-Bud II Robert Gubała (Door handle), T‑306/16, not published, EU:T:2017:466, paragraphs 15 and 16 and the case-law cited).
47
As regards the exercise of that discretion by EUIPO for the purposes of deciding whether or not to take into account evidence submitted out of time, where EUIPO is called upon to give a decision in invalidity proceedings, taking such facts or evidence into account is likely to be justified, in particular, where EUIPO considers, first, that the material produced out of time is, on the face of it, likely to be relevant to the outcome of the application for a declaration of invalidity before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not preclude such matters being taken into account. It follows that it is for the General Court to assess whether the Board of Appeal in fact exercised the broad discretion conferred on it for the purpose of deciding, in a reasoned manner and taking due account of all the relevant circumstances, whether it was necessary to take account of evidence adduced for the first time before it in order to deliver its decision. It is, furthermore, for the General Court to verify that the Board of Appeal made correct use of the discretion conferred on it by Article 63(2) of Regulation No 6/2002 (see judgment of 5 July 2017, Door handle, T‑306/16, not published, EU:T:2017:466, paragraphs 17 and 18 and the case-law cited).
48
It also follows from the case-law that it remains possible to submit evidence in addition to the evidence adduced within the time limit set by EUIPO for that purpose after expiry of that time limit, and that EUIPO is in no way prohibited from taking account of the supplementary evidence which is produced out of time (see judgment of 14 March 2018, Crocs v EUIPO – Gifi Diffusion (Footwear), T‑651/16, not published, EU:T:2018:137, paragraph 33 and the case-law cited; see also, to that effect and by analogy, judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 88).
49
However, it should also be borne in mind that Article 52(2) of Regulation No 6/2002 provides that the application for a declaration of invalidity must be filed in a written reasoned statement. Under Article 28(1)(b)(i) and (vi) of Regulation No 2245/2002, an application for a declaration of invalidity must contain a statement of the grounds for invalidity and an indication of the facts, evidence and arguments submitted in support of that application. Article 28(1)(b)(v) of that regulation provides, in addition, that, where the application for a declaration of invalidity is based on the lack of novelty or individual character of the registered Community design, it must contain the indication and the reproduction of the earlier designs that could form an obstacle to the novelty or individual character of the registered Community design, as well as documents proving the existence of those earlier designs.
50
According to the case-law, it is for the party which filed the application for a declaration of invalidity to provide EUIPO with the necessary information and, in particular, to identify and reproduce precisely and entirely the design that is allegedly earlier in order to demonstrate that the contested design cannot be validly registered. Thus, it is not for EUIPO, but for the applicant for a declaration of invalidity, to provide evidence to demonstrate the truth of that ground (judgment on appeal, paragraphs 59 and 65; see, also, judgment of 17 September 2019, Aroma Essence v EUIPO – Refan Bulgaria (Washing sponge), T‑532/18, not published, EU:T:2019:609, paragraph 25 and the case-law cited).
51
It should be noted that proof of the existence and identification of the earlier design or designs must be adduced for each of the grounds for invalidity raised by the applicant. In that regard, the General Court held that neither EUIPO nor the applicant for a declaration of invalidity could rely on certain earlier designs in support of a claim of lack of individual character (Article 6 of Regulation No 6/2002) where those designs had been relied on in the application for a declaration of invalidity only in support of another ground for invalidity, such as lack of novelty (Article 5 of that regulation) (see, to that effect, judgment of 14 March 2018, Gifi Diffusion v EUIPO – Crocs (Footwear), T‑424/16, not published, EU:T:2018:136, paragraphs 46 to 48).
52
Furthermore, in accordance with Article 63(1) of Regulation No 6/2002, in invalidity proceedings, EUIPO is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. It is for the applicant to make sure that all the earlier designs relied on are clearly identified and reproduced, given that invalidity proceedings come under inter partes proceedings. Therefore, during the examination of the application for a declaration of invalidity, EUIPO is required to take into consideration only the designs which are expressly relied on by the applicant in the application for a declaration of invalidity, and not in a document submitted subsequently (see, to that effect, judgment of 17 September 2019, Washing sponge, T‑532/18, not published, EU:T:2019:609, paragraphs 30 and 36).
53
Accordingly, Article 28(1)(b)(v) of Regulation No 2245/2002 (see paragraph 49 above) requires that the earlier design or designs be identified when the application for a declaration of invalidity is filed because that application defines the subject matter of the dispute, and so that the holder of the contested design is able to express an opinion on the substance of the application. The proper conduct of the procedure and the protection of the legitimate interest of the holder of the contested design in not being exposed to a dispute the subject matter of which is constantly changing preclude an applicant from relying at will on other earlier designs during the course of the invalidity proceedings. For that reason, compliance with that provision is a condition of the admissibility of an application for a declaration of invalidity, pursuant to Article 30(1) of that regulation.
54
Consequently, it must be held, as noted by EUIPO, that the logic of Article 28(1)(b)(v) of Regulation No 2245/2002 is to impose a ‘pre-determined’ time limit or a limitation period (that is to say, a time limit the failure to comply with which constitutes a bar to proceedings) for the submission of evidence concerning the essential elements of the application for a declaration of invalidity which determine and define the legal framework of the application. Unless EUIPO requires the application to be amended pursuant to Article 30(1) of that regulation, new evidence concerning the indication and reproduction of the earlier designs can no longer be submitted, since that would extend the legal context of the application for a declaration of invalidity.
55
It thus follows from Article 28(1)(b)(v) of Regulation No 2245/2002 that the application for a declaration of invalidity defines the subject matter of the dispute, which is apparent, first, from the contested design and, secondly, from the earlier designs relied on. Therefore, after the application for a declaration of invalidity has been filed, it is no longer possible to introduce into the proceedings other earlier designs that could form an obstacle to the novelty or individual character of the contested design.
56
It must therefore be concluded, having regard to Article 28(1)(b)(v) of Regulation No 2245/2002, that, in invalidity proceedings in respect of a Community design, EUIPO is to examine only the earlier designs identified in the application for a declaration of invalidity, and not other designs subsequently relied on as earlier designs.
57
Furthermore, it is necessary to clarify the scope of Article 28(1)(b)(vi) of Regulation No 2245/2002, which provides that an application for a declaration of invalidity must include ‘an indication of the facts, evidence and arguments provided in support of those grounds’ and, therefore, the scope of the discretion conferred on EUIPO by Article 63(2) of Regulation No 6/2002.
58
In this respect, it is important to note, as EUIPO did, that Article 28(1)(b)(v) and (vi) of Regulation No 2245/2002 draws an essential distinction between the evidence concerning ‘the indication and the reproduction of the prior designs’ required by Article 28(1)(b)(v) of that regulation, and other ‘facts [and] evidence’, referred to in Article 28(1)(b)(vi) of that regulation, such as facts and evidence concerning the disclosure of an earlier design (Article 7 of Regulation No 6/2002) or evidence concerning the functionality of the contested design (Article 8 of Regulation No 6/2002).
59
It follows that the discretion conferred on EUIPO by Article 63(2) of Regulation No 6/2002 to take into account ‘facts or evidence which are not submitted in due time by the parties concerned’ can apply only to the ‘facts [and] evidence’ referred to in Article 28(1)(b)(vi) of Regulation No 2245/2002, and not to ‘the indication and the reproduction of the prior designs’ required by Article 28(1)(b)(v) of that regulation. In particular, Article 63(2) of Regulation No 6/2002 is not applicable to the question of the identification of the earlier design.
60
Thus, although it is permissible under Article 63(2) of Regulation No 6/2002 to take into account additional evidence (see paragraph 48 above), such as a more precise representation or proof of publication of a design already relied on in the application for a declaration of invalidity, it is not permissible under that article to extend the legal framework of that application with entirely new evidence, by allowing the applicant to base that application on other earlier designs, since such an approach would alter the subject matter of the dispute as well as prolong the duration of the proceedings.
61
The Board of Appeal was therefore right to state, in paragraph 39 of the contested decision, inter alia, that Article 63(2) of Regulation No 6/2002 did not allow the applicant for a declaration of invalidity to extend the subject matter of the proceedings by basing its application on new earlier designs.
62
In the present case, it is common ground that, as the Board of Appeal found, in essence, in paragraph 61 of the contested decision, after inviting the parties to submit their observations, the design reproduced in the Blücher catalogues was neither relied on nor represented in the application for a declaration of invalidity of 3 September 2009, but only in the reply to the intervener’s observations, dated 2 April 2010 (see paragraphs 7 and 8 above).
63
That design is not identical to the design initially relied on in the application for a declaration of invalidity, since the cover plate shown in it is different from the earlier designs covered by registration No DM/059828. They are therefore not in any way ‘representations of one and the same earlier design’ within the meaning of the case-law of the General Court (see, to that effect, judgment of 22 June 2010, Shenzhen Taiden v OHIM – Bosch Security Systems (Communications equipment), T‑153/08, EU:T:2010:248, paragraph 25). Moreover, it was not necessary to amend the application pursuant to Article 30(1) of Regulation No 2245/2002, since the applicant’s predecessor in title had correctly identified the earlier designs relied on in support of its application for a declaration of invalidity, namely those covered by registration No DM/059828.
64
In those circumstances, it must be held, as noted by EUIPO, that any taking into account of evidence submitted after an application for a declaration of invalidity was filed, in accordance with Article 63(2) of Regulation No 6/2002, could be permitted only for the purpose of illustrating how the actual goods in which the designs under comparison are incorporated are used, or to support any other fact or claim already raised in the application for a declaration of invalidity. Therefore, it is true that the Board of Appeal did not strictly reject that evidence as inadmissible, in so far as it was intended to supplement the arguments already put forward in relation to the earlier design identified in the application for a declaration of invalidity.
65
However, the formal admissibility of such evidence does not make it permissible for a new earlier design to be added to that initially relied on in the application for a declaration of invalidity, in the light of Article 28(1)(b)(v) of Regulation No 2245/2002. From that point of view, the production of the Blücher catalogues after the filing of the application for a declaration of invalidity amounts to the production of entirely ‘new’ evidence, as opposed to ‘further’ evidence within the meaning of the case-law of the Court of Justice and the General Court concerning Article 63(2) of Regulation No 6/2002 (see paragraph 48 above).
66
The Board of Appeal was therefore correct to find, in paragraph 63 of the contested decision, in essence, that, although further evidence could, admittedly, be taken into account, in addition to the earlier designs already relied on, to expand the factual context of the application for a declaration of invalidity, it could not however be used to extend the legal context of that application to new earlier designs, since the scope of that application for a declaration of invalidity had been definitively determined by the applicant’s legal predecessor when the application was filed, by identifying the earlier designs relied on in support of the application in question.
67
The Board of Appeal was also right to conclude, in paragraphs 65 and 66 of the contested decision, that the only earlier design lawfully relied on in the present case was design No DM/059828, which had been made available to the public within the meaning of Article 7 of Regulation No 6/2002, before the date of filing of the contested design. Moreover, it is not disputed that the disclosure of that design occurred or that that disclosure was earlier.
68
Consequently, it must be held, contrary to what the applicant claims, first of all, that the Board of Appeal did not in any way alter previous final decisions or infringe any of the general principles referred to in paragraph 32 above and, secondly, that the Board of Appeal did not infringe Article 63(2) of Regulation No 6/2002, but correctly applied Article 28(1)(b)(v) of Regulation No 2245/2002.
69
The third plea must therefore be rejected as unfounded.
The first plea
70
By the first plea, which is divided into three parts, the applicant claims that the Board of Appeal made various errors of assessment in paragraph 24 of the contested decision, read in conjunction with the Rapporteur’s communication of 24 July 2018.
71
By the first part, the applicant complains that the Board of Appeal erred in finding that the Rapporteur had considered, in his communication, that the only earlier design to be taken into account was design No DM/059828, as that was the only design indicated in the application for a declaration of invalidity. However, the reason given in that paragraph, namely that that design was the only one included in the application for a declaration of invalidity, cannot be inferred from the Rapporteur’s communication and is not substantiated in the contested decision.
72
By the second part, the applicant complains that the Board of Appeal erred in finding that the photograph at page 33 of the Blücher catalogues cannot be taken into consideration on the ground that the judgment on appeal precludes it from being produced as an earlier design in the invalidity proceedings. According to the applicant, the Board of Appeal drew a conclusion from that judgment which is unsubstantiated. Furthermore, EUIPO did not adopt measures of inquiry, contrary to paragraph 71 of the judgment on appeal.
73
By the third part, the applicant claims that the Board of Appeal erred in finding that only design No DM/059828, as produced by the applicant in the application for a declaration of invalidity, could be examined as an earlier design, given that the Rapporteur had noted that the ‘earlier design examined by the adjudicating bodies which had made the previous decisions’ was not indicated in the application for a declaration of invalidity filed by the applicant’s legal predecessor on 3 September 2009. That conclusion is broader than that drawn in the Rapporteur’s communication, which does not state that the earlier design examined by the adjudicating bodies which had made the previous decisions was not indicated in the application for a declaration of invalidity.
74
EUIPO and the intervener dispute the applicant’s arguments.
75
In paragraph 24 of the contested decision, the Board of Appeal observed that, on 24 July 2018, the Rapporteur had sent a communication to the parties informing them that the earlier design submitted to it was design No DM/059828, which was the only one indicated in the application for a declaration of invalidity. It stated that, while reviewing the file following the remittal of the case by the Court of Justice, the Rapporteur had noted that the earlier design examined by the adjudicating bodies which had made the previous decisions was not indicated in the application for a declaration of invalidity, and that no other designs were indicated in that application.
76
By the first part, in essence, the applicant complains that the Rapporteur, in his communication of 24 July 2018, and the Board of Appeal, in paragraph 24 of the contested decision, failed to state the reasons why only the designs covered by registration No DM/059828 (see paragraph 7 above), and not the representation reproduced in paragraph 8 above, should be taken into account.
77
In that regard, it should be observed that, in accordance with the first sentence of Article 62 of Regulation No 6/2002, decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons has the same scope as the obligation arising under Article 296 TFEU, according to which the reasoning followed by the institution which adopted the measure must be stated in a clear and unequivocal manner. That obligation has two purposes: to allow interested parties to know the justification for the measure adopted so as to enable them to defend their rights, and to enable the EU Courts to exercise their power to review the legality of the decision. The question whether the statement of reasons for a decision satisfies those requirements must be assessed by reference not only to its wording but also to its context and the entire body of legal rules governing the matter in question (see judgment of 13 June 2019, Visi/one v EUIPO – EasyFix(Display holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 57 and the case-law cited).
78
In the present case, first of all, it should be noted that the obligation to state reasons concerns only the contested decision and not the Rapporteur’s communication on the case, which is not an actionable measure. It is apparent from the case-law that a decision of the Board of Appeal may be challenged before the Courts of the European Union if it produces ‘binding legal effects’ on the party to the proceedings before EUIPO (see, to that effect and by analogy, judgment of 17 March 2009, Laytoncrest v OHIM – Erico (TRENTON), T‑171/06, EU:T:2009:70, paragraph 21). That is not the case as regards the Rapporteur’s communication before the Board of Appeal.
79
Next, it is apparent from the examination of the third plea (see paragraphs 30 to 69 above) that, in paragraphs 38 and 39 and 53 to 67 of the contested decision, the Board of Appeal clearly explained the reasons why only an earlier design of which a representation was attached in support of an application for a declaration of invalidity could be taken into account in the examination of the requirements laid down in Articles 5 and 6 of Regulation No 6/2002. In particular, the Board of Appeal relied on an interpretation of Article 63(2) of Regulation No 6/2002, in the light of Article 28(1)(b)(i)(v) and (vi) of Regulation No 2245/2002, which was, moreover, free from error, as was found in the examination of the third plea. That reasoning fully satisfies the obligation to state reasons laid down in the first sentence of Article 62 of Regulation No 6/2002.
80
The first part of the present plea must therefore be rejected as unfounded.
81
By the second part, in essence, the applicant complains that the Board of Appeal failed to take into account the representations in the Blücher catalogues, in particular the one reproduced in paragraph 8 above, even though the admissibility and relevance of that representation acquired the force of res judicata following the judgment on appeal.
82
In that regard, it should be borne in mind that, under Article 61(6) of Regulation No 6/2002, EUIPO is required to take the necessary measures to comply with the judgment of the Court of Justice of the European Union.
83
According to settled case-law, in order to comply with a judgment annulling a measure and to implement it fully, the institution that is the author of the measure is required to have regard not only to the operative part of the judgment but also to the grounds constituting its essential basis, in so far as they are necessary to determine the exact meaning of what is stated in the operative part. It is those grounds which, on the one hand, identify the precise provision held to be illegal and, on the other, indicate the specific reasons which underlie the finding of illegality contained in the operative part and which the institution concerned must take into account when replacing the annulled measure (see judgment of 27 June 2013, Instruments for writing, T‑608/11, not published, EU:T:2013:334, paragraph 33 and the case-law cited).
84
In the present case, in paragraphs 69 to 71 of its judgment on appeal, the Court of Justice held as follows:
‘69 EUIPO cannot be required, in particular in the context of assessing the novelty of a contested design, to combine various elements of an earlier design [namely the drainage collector and the cover plate reproduced in paragraph 8 above], since it is for the applicant for a declaration of invalidity to produce a complete representation of that earlier design. Moreover, any potential combination would be flawed, as the Advocate General has pointed out in point 152 of his Opinion, since it would necessarily entail approximations.
70 In those circumstances, as EUIPO correctly submits, and contrary to what the General Court held in paragraph 78 of the judgment under appeal, the fact that the contested design only exists as a combination of designs that have already been made available to the public and in relation to which it was previously stated that they were intended to be used in combination, is not, in the absence of complete information on and reproduction of the design that is claimed to be earlier, relevant for the purpose of assessing novelty within the meaning of Article 5 of Regulation No 6/2002.
71 In that regard, it is necessary to add that the fact, as referred to by the General Court in paragraph 68 of the judgment under appeal, that ESS, as the intervener before the General Court, produced extracts of a Blücher catalogue that were different from those produced by Group Nivelles in its application for a declaration of invalidity and that contained an image of a cover plate like the one shown in the centre of the illustration reproduced in paragraph 23 of this judgment, positioned on a collector featuring a drain siphon underneath, is insufficient to overcome the fact that there was no specific information on and no specific reproduction of the earlier design referred to by Group Nivelles. If such a fact were able to be taken into account by EUIPO in order to adopt measures of inquiry on the basis of Article 65(1) of Regulation No 6/2002, it would, by contrast, not be for EUIPO to combine the various elements of one or more designs, made available to the public separately, from the various extracts from catalogues attached to the application for a declaration of invalidity in order to obtain the complete appearance of the earlier design referred to. There is no need to assess EUIPO’s argument that paragraphs 68 and 76 of the judgment under appeal are vitiated by a distortion of the facts, since it is sufficient to state that the General Court, in that judgment, does not assert in any way that the image produced by ESS is a complete image of the specific earlier design which is claimed by Group Nivelles to be earlier.’
85
In that regard, first of all, it has already been held, in the context of the examination of the third plea, that the issue of the identification of the earlier designs to be compared with the contested design was never definitively resolved in the earlier proceedings before EUIPO, the General Court and the Court of Justice (see paragraphs 41 to 43 above). The obligation to observe the principle of res judicata is therefore not applicable to this particular issue.
86
Next, it should be noted that the passage in the judgment on appeal cited by the applicant concerns only the obligation to produce a ‘complete … reproduction’ of an earlier design. However, the Court of Justice did not rule on the possibility of producing such a ‘complete representation’ after filing the application for a declaration of invalidity. The obligation to observe the principle of res judicata is therefore not applicable to this particular issue.
87
Furthermore, in so far as the applicant complains that the Board of Appeal did not order measures of inquiry on the basis of Article 65 of Regulation No 6/2002, that criticism is unfounded. The applicant did in fact request the hearing of witnesses in its observations of 21 September 2018, but it does not specify how the failure to adopt such measures of inquiry constitutes an error of assessment. It is true that such witnesses could have supported the claim that designs similar to the contested design were already known on the date of filing of that design. However, such a contribution from those witnesses would have been ineffective, since the fundamental issue resolved by the Board of Appeal, namely the identification of the earlier designs which were to be taken into account in order to assess the novelty and individual character of the contested design, could have been decided on the legal basis of an interpretation of Article 63(2) of Regulation No 6/2002 in the light of Article 28(1)(b)(i), (v) and (vi) of Regulation No 2245/2002. Witness statements of fact from experts would therefore have been, in any event, irrelevant in such a context.
88
Lastly, it should be noted that neither the General Court nor the Court of Justice took a view on the need for the requested measures of inquiry, and that, furthermore, neither one would have had jurisdiction to issue directions to EUIPO, including for the purpose of adopting such measures of inquiry (see, to that effect, judgment of 9 February 2017, Mast-Jägermeister v EUIPO (Beakers), T‑16/16, EU:T:2017:68, paragraph 27).
89
The second part of the present plea must therefore be rejected as unfounded.
90
By the third part, the applicant makes various criticisms of the Rapporteur’s communication of 24 July 2018.
91
In that regard, it is sufficient to note that this third part is inadmissible, in so far as the grounds for annulment raised in an application may concern only the contested decision, and not an earlier procedural measure which does not produce any legal effects in itself and constitutes a measure not open to challenge (see paragraph 78 above), such as the Rapporteur’s communication.
92
Moreover, this third part is unfounded in so far as it concerns the force of res judicata attaching to judgments of the Court of Justice and of the General Court, for the reasons already set out in paragraphs 41 to 43 and 84 to 89 above.
93
The third part of the present plea must therefore be rejected as inadmissible and, in addition, as unfounded.
94
The first plea must therefore be rejected.
The second plea, concerning the determination of the features of the contested design
95
By the second plea, the applicant claims that, in paragraph 26 of the contested decision, the Board of Appeal erred in determining the features of the contested design. Basing its claim, once more, on paragraph 69 of the judgment on appeal (see paragraph 84 above), it submits that EUIPO cannot be required, in the context of assessing the novelty of a contested design, to combine various elements (in this case, a drainage collector and a cover plate) in order to produce a complete representation of that design. According to the applicant, what is relevant is the ‘distinctive feature’ of the contested design. However, it is apparent from the intervener’s observations of 8 December 2009 that the intervener did not in fact wish to register the appearance of a shower drainage channel, but only the appearance of a cover plate intended for use on rectangular and elongated drainage channels. It is also apparent from two judgments delivered by the Netherlands courts that the only ‘distinctive feature’ of the contested design was ‘the closed cover plate’ or ‘the [so-called] “zero-grid”’, namely ‘a grid without holes, through which the water can flow via the slots present on either side of the grill’. Similarly, the Invalidity Division of EUIPO found that the only feature of the contested design visible during normal use was the top surface of the plate.
96
According to the applicant, it is entirely logical that, having reached that conclusion, the Invalidity Division based its reasoning on a comparison between the mere appearance of the ‘zero’ cover plate of the contested design and the appearance of all the other earlier cover plates, including that at page 33 of the Blücher catalogues. The fact that those cover plates are, where appropriate, intended to be used in combination with a rectangular and elongated collector, thus forming a shower drainage channel, is of little importance in that regard, given that, according to the intervener, their features should not be regarded as distinctive, new or individual, and that the rectangular and elongated collector, with the associated features, is not visible during normal use of the drainage channel.
97
EUIPO and the intervener dispute the applicant’s arguments.
98
In paragraph 26 of the contested decision, the Board of Appeal noted that, on 21 September 2018, the applicant had made a request for an oral hearing and submitted its observations based, in essence, on various arguments which the Board listed. In particular, the applicant had referred to the statements submitted during the previous proceedings, which, according to the applicant, showed that specialist circles were aware of the existence of designs for shower drainage channels whose appearance consisted of a rectangular and elongated collector with the same closed cover plate. The applicant had referred in particular to enclosures 5, 6 and 7 and requested that the Board hear those witnesses.
99
By the second plea, in essence, the applicant submits that the Board of Appeal erred in determining the features of the contested design. The Board of Appeal erred in taking into account certain features of the contested design, such as side slots, when the intervener claims exclusive rights only in respect of ‘the appearance of a cover plate for a drainage channel intended to be used with rectangular and elongated (shower) drainage channels’. In other words, neither the rectangular and elongated shape of the drainage channel nor the side slots fall within the scope of protection of the contested design. Only the shape of the shower drain cover plate is capable of distinguishing that design from the earlier designs.
100
At the outset, it should be noted that paragraph 26 of the contested decision is not among the ‘reasons [for the decision]’ (paragraphs 27 to 116), but is part of the ‘summary of facts’ (paragraphs 1 to 26), since it contains a summary of the applicant’s arguments, and not an assessment by the Board of Appeal.
101
According to the case-law, pleas which do not seek to challenge the grounds on which the Board of Appeal dismissed the appeal brought before it must be regarded as ineffective (see order of 16 October 2020, L. Oliva Torras v EUIPO – Mecánica del Frío (Vehicle couplings), T‑629/19, not published, EU:T:2020:506, paragraph 26 and the case-law cited). That is the case here.
102
Furthermore, it should be noted, as EUIPO did, that the subject matter of a contested design and its features must be determined exclusively by reference to the representations produced in support of the application for registration.
103
When assessing the novelty or individual character of the contested design, it must be compared with earlier designs in the form in which it was registered (see, to that effect and by analogy, judgments of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 57, and of 21 April 2021, Chanel v EUIPO – Huawei Technologies(Representation of a circle containing two interlaced curves), T‑44/20, not published, EU:T:2021:207, paragraph 25).
104
Furthermore, the findings as to the subject matter and features of a contested design cannot be left to the parties to assess and, ultimately, be at the parties’ discretion (see, to that effect, regarding the legal characterisation of the act of disclosure, judgment of 23 October 2018, Mamas and Papas v EUIPO – Wall-Budden (Cot bumpers), T‑672/17, not published, EU:T:2018:707, paragraph 60).
105
The second plea must therefore be rejected as ineffective and unfounded.
The fourth, fifth and sixth pleas, concerning the comparison of the designs at issue and the assessment of the individual character of the contested design
Legislation and case-law
106
Under Article 25(1)(b) of Regulation No 6/2002, a Community design may be declared invalid if it does not fulfil the requirements of Articles 4 to 9 of that regulation, which include, in particular, novelty and individual character.
107
According to Article 6(1)(b) of Regulation No 6/2002, a 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 made available to the public before the date of filing of the application for registration or, if a priority is claimed, the date of priority. Article 6(2) of that regulation further provides that, in assessing individual character, the degree of freedom of the designer in developing the design is to be taken into consideration.
108
The assessment as to whether a Community design has individual character involves an examination carried out, in essence, in four stages. That examination consists of deciding upon, first, the sector to which the products in which the design is intended to be incorporated or to which it is intended to be applied belong; secondly, the informed user of those products in accordance with their purpose and, with reference to that informed user, the degree of awareness of the prior art and the level of attention to the similarities and the differences in the comparison of the designs; thirdly, the designer’s degree of freedom in developing the design, the influence of which on individual character is in inverse proportion; and, fourthly, taking that degree of freedom into account, the outcome of the comparison, direct if possible, of the overall impressions produced on the informed user by the contested design and by any earlier design which has been made available to the public, taken individually (see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 66 and the case-law cited).
109
As regards the earlier design or designs, the assessment of the individual character of a design must be carried out in relation to one or more earlier designs, taken individually from among all the designs which have been made available to the public previously, and not in relation to a combination of isolated elements taken from a number of earlier designs (judgments of 19 June 2014, Karen Millen Fashions, C‑345/13, EU:C:2014:2013, paragraphs 25 and 35, and of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 84; see also, to that effect, the judgment on appeal, paragraph 61). Thus, an earlier design must be an earlier design which is ‘whole’ or comprises ‘all the component parts’, and cannot be the result of a combination of elements.
110
It is essential that the adjudicating bodies of EUIPO have an image of the earlier design that makes it possible to see the appearance of the product in which the design is incorporated and to identify the earlier design precisely and with certainty, so that they may, in accordance with Articles 5 to 7 of Regulation No 6/2002, assess the novelty and individual character of the contested design and carry out a comparison of the designs at issue as part of that assessment. It is a prerequisite of an examination whether the contested design does in fact lack novelty or individual character that a specific and defined earlier design is available. Furthermore, it is for the party which filed the application for a declaration of invalidity to provide EUIPO with the necessary information and, in particular, to identify and reproduce precisely and entirely the design that is allegedly earlier in order to demonstrate that the contested design cannot be validly registered. By contrast, EUIPO cannot be required, in particular in the context of assessing the novelty of a contested design, to combine various elements of an earlier design, since it is for the applicant for a declaration of invalidity to produce a complete representation of that earlier design (see, to that effect, the judgment on appeal, paragraphs 64, 65 and 69).
111
Furthermore, it should be noted that knowing the sector of the goods covered by the application for registration is not relevant for the purpose of relying on the earlier design in invalidity proceedings, or, moreover, as regards the scope of protection of the design in infringement proceedings, having regard to Article 36(6) of Regulation No 6/2002. Thus, according to the case-law of the Court, it is not necessary for the informed user of the contested design to know the product in which the earlier design is incorporated or to which it is applied (see, to that effect, the judgment on appeal, paragraph 134). In other words, an earlier design incorporated in a product other than that concerned by the contested design constitutes, in principle, an earlier design which is relevant for the purpose of assessing the individual character within the meaning of Article 6 of Regulation No 6/2002, of the contested design.
112
As regards the contested design, the non-visible features of the product, which do not relate to its appearance, cannot be taken into account in the determination of whether the contested design could be protected (see, to that effect, judgment of 9 September 2014, Biscuits Poult v OHIM – Banketbakkerij Merba (Biscuit), T‑494/12, EU:T:2014:757, paragraph 29).
113
As regards the comparison of the designs at issue, according to settled case-law, the individual character of a design results from an overall impression of difference, or the 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 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 83 and the case-law cited).
114
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. That comparison must take as a basis the features disclosed in the contested design and must relate solely to the features protected, without taking account of the features excluded from protection. The comparison must relate to the designs, in principle, as registered, and the applicant for a declaration of invalidity cannot be required to produce a graphic representation of the design relied on, comparable to the representation in the application for registration of the contested design (see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 84 and the case-law cited).
115
It is in the light of that case-law that it is necessary to examine the applicant’s fourth, fifth and sixth pleas, after individually reproducing the designs at issue and recalling the assessments made by the Board of Appeal in paragraphs 98 to 112 of the contested decision.
The contested decision and individual reproduction of the designs at issue
116
The designs at issue are represented as follows. The six designs covered by registration No DM/059828 must be taken individually, as each one constitutes, subject to the examination of the fourth plea in law (see paragraphs 128 to 147 below), an earlier whole design (see paragraph 109 above):
25.1 25.2 25.3
Contested design
Earlier designs
25.1 25.2 25.3
Contested design
Earlier designs
25.1 25.2 25.3
Contested design
Earlier designs
25.1 25.2 25.3
Contested design
Earlier designs
25.1 25.2 25.3
Contested design
Earlier designs
25.1 25.2 25.3
Contested design
Earlier designs
25.1 25.2 25.3
Contested design
Earlier designs
117
In paragraphs 98 and 99 of the contested decision, the Board of Appeal observed that earlier designs 1 and 3 were the only ones showing a non-perforated cover plate, whereas the other earlier designs had slots the numbers and shapes of which were different. Since the presence of slots greatly contributed to creating a clearly different overall impression with respect to the contested design, the Board found it appropriate to proceed with the assessment of individual character by considering with special care earlier designs 1 and 3. Nonetheless, for the sake of completeness, the Board also took into account the other earlier designs, namely earlier designs 2, 4, 5 and 6, since, according to the applicant, some of them had dimensions and proportions which coincided with those of the shower drainage channel represented by the contested design. It added that, in comparing the designs at issue, it would take into account the appearance of only those features which would remain visible once the shower drainage channels are installed.
118
In paragraph 100 of the contested decision, the Board of Appeal noted that, in paragraph 49 of the first judgment of the General Court (see paragraph 14 above), the General Court had considered that the product to which the contested design related was a ‘shower drain’ and that, once built into the floor of the shower, it was not only the top of the plate which was visible, but also the two side slots and the top of the rim of the collector. Therefore, the Board of Appeal was clearly referring to that latter feature when it mentioned the ‘thin outer edges of the shower drain’ in the first decision. Therefore, in paragraph 59 of that judgment, the General Court had taken the same view as the Board of Appeal in its first decision, namely that, once the ‘shower drain’ represented by the contested design is installed, the horizontal surface of the cover plate was not the only element of it that would remain visible.
119
In that regard, it should be explained immediately, for the sake of terminological accuracy and clarity, that the contested design is not a ‘siphon de douche’ [‘shower drain’] (‘douchesifon’ in Dutch) in the strict sense, as stated by the General Court in the French version of its first judgment (see paragraphs 49 and 59 of that judgment), but rather a ‘caniveau d’évacuation de douche’ [‘shower drainage channel’] (‘douchegoot’ or ‘doucheput’ in Dutch), comprising not only a drain, but also and above all a drainage collector and a cover plate. Moreover, the expression ‘caniveau d’évacuation de douche’ is a more precise translation of the English expression ‘shower drain’, which is also used in that judgment and appears in the application for registration (see paragraph 3 above).
120
In paragraph 101 of the contested decision, the Board of Appeal found as follows:
–
the designs at issue shared an elongated and rectangular shape;
–
earlier design 5 and the contested design displayed almost identical proportions between the four sides of the plate;
–
earlier designs 1 and 3 and the contested design had a closed cover plate;
–
with the exception of earlier design 5, the other earlier designs and the contested design had thin outer edges on the four sides.
121
In paragraph 102 of the contested decision, the Board of Appeal found, however, that the designs at issue differed in the following features:
–
earlier designs 1, 2, 3 and 5 had a circular water collector in the centre of their surface, which corresponded to the siphon positioned on the underside, whereas that feature was not present in the contested design;
–
earlier designs 1 and 2 had four attaching extensions on their long sides. Those features were absent in the other designs, including the contested design, but their visibility was at most very limited when the product was installed;
–
earlier designs 4, 5 and 6 did not have a cover plate, but a perforated plate, whilst the contested design had a closed and decorated cover plate;
–
only the cover plate in the contested design had elongated slots on the longer sides, whilst the earlier designs had a circular water collector or a grid of slots or perforations;
–
in the earlier designs, there were no decorative elements on the plate, whereas, in the contested design, the cover plate was decorated with a pattern of dots over its entire surface.
122
In paragraphs 103 and 104 of the contested decision, the Board of Appeal observed that the overall impression that earlier designs 1 and 3 produced on the informed user was determined mainly by the presence of the rectangular and elongated shape of the collector and the circular opening in the centre corresponding to the siphon placed below it. According to the Board of Appeal, those features differed from those that can be found in the sector of liquid drainage devices, which can also have collectors that are square or circular in shape and slots that are, for instance, rectangular in shape. Conversely, according to the Board of Appeal, the thin outer edges on the four sides were less noticeable than the other elements and have a reduced impact in their overall impression.
123
In paragraphs 105 and 106 of the contested decision, the Board of Appeal found that, moreover, the contested design had a rectangular and elongated cover plate of which the thin outer edges on the four sides were visible. According to the Board of Appeal, however, unlike in the earlier designs examined, that cover plate was completely closed because the water was drained by the elongated slots on the long sides of the shower drain in the contested design, and it was also decorated with a pattern of grey dots on its surface. Furthermore, in the present case, the presence of the thin outer edges was not particularly noticeable when using the draining device in question. Indeed, from a vertical view, those features would not produce a particular impression on the informed user, who would focus mainly on the lines and shapes of the cover plate.
124
In paragraph 107 of the contested decision, the Board of Appeal therefore found that, although those designs and the contested design consisted of elongated and rectangular shapes with thin outer edges, with similar proportions to those of the earlier designs identified by the applicant, the contested design included a fully closed and, equally importantly, decorated cover plate with slots on either side. According to the Board of Appeal, those features gave the contested design an impression which was different from that produced by the earlier designs. In the earlier designs, the absence of decoration on a fully closed cover plate and the presence of the immediately noticeable circular shape of the collector or of a grid of slots contributed decisively to the overall impression they produced.
125
In paragraph 108 of the contested decision, the Board of Appeal stated that those differences were not negligible, small, or otherwise inconsequential, and that that was especially true when considering that the cover plate of the contested design was decorated with small grey dots. According to the Board of Appeal, the applicant could not validly argue that the appearance, lines and shapes of the drainage systems in question should be disregarded because they fulfilled a technical purpose or because there were indications in the evidence that there may be a trend, in the relevant sector, of offering rectangular elongated drain devices with closed cover plates. On the contrary, the features in question, although having a technical purpose, displayed shapes, dimensions and positions which could vary in view of the rather high degree of freedom of the designer and which had been dictated by aesthetic considerations. Similarly, the applicant’s claim that the contested design was identical to design No DM/059828, with the exception of the perforated cover plate, which, in its view, was dictated by technical considerations, cannot be upheld. Indeed, according to the Board of Appeal, the shape and position of the slots in the grid were elements which the designer had considerable freedom in designing and which could be worked on independently of or additionally to any technical function that those features may also perform. Thus, the shape of the slots may differ from one drainage device to another, and their position and arrangement may also differ, with the result that the appearance of those features may have an impact on the overall impression.
126
In paragraphs 109 and 110 of the contested decision, the Board of Appeal therefore found that, while the contested design produced the overall impression of an elegant, essential and minimal shower drainage channel with a decorated closed cover plate and side slots, the earlier designs produced overall impressions characterised by more standardised features, such as the circular water collector in the centre or a grid of slots. Furthermore, according to the Board of Appeal, the earlier designs did not have decorative features, whereas decorative features were present in the contested design. Although the applicant insisted that the presence of side slots in shower drainage channels having a closed cover plate was commonplace and also dictated by a technical function, the Board of Appeal found that, as represented, those side slots had a certain aesthetic value which helped to give the intervener’s shower drainage channel an elegant and minimalist general appearance.
127
In paragraph 112 of the contested decision, the Board of Appeal added that, for the same reasons and also in view of the fact that earlier designs 2, 4, 5 and 6 did not have a closed cover plate, but a perforated plate with slots of different numbers, shapes and dimensions, the Board found that the overall impression produced by those designs on the informed user was not the same as the overall impression produced by the contested design, which had a closed surface decorated with dots, and that those differences decisively affected the appearance of the designs at issue.
The fourth plea
128
By the fourth plea, the applicant alleges that the Board of Appeal, in paragraphs 98 to 110 and 112 of the contested decision, erred in its assessment of the novelty or individual character of the contested design by comparing it with the designs reproduced in registration No DM/059828. According to the applicant, the comparison is erroneous because the Board of Appeal made it on the basis of the incorrect observation, in paragraphs 98 and 101 of the contested decision, that design 1 (shown in figures 1.1 and 1.2) and design 3 (shown in figures 3.1 and 3.2), as set out in registration No DM/059828, concerned shower drainage channels with a so-called ‘zero’, non-perforated cover plate (cover of rooster).
129
First, the design shown in figures 1.1 and 1.2 consists only of a drainage collector (of which figure 1.1 is the view from above and figure 1.2 the view from below), with no cover plate, perforated or otherwise, installed in or placed on it. Therefore, that design does not show a complete shower drainage channel like the contested design. It is established that the drainage collector presented by the design shown in figures 1.1 and 1.2 is built into the floor and, with the exception of the upper edges of the drainage collector, is not visible during normal use. For that reason, design 1 does not fall within the scope of protection of the Community design. The same is true of the other design referred to in paragraphs 98 and 101, namely design 3 (shown in figures 3.1 and 3.2), which, again, comprises only a drainage collector (of which figure 3.1 is the view from above, and figure 3.2 the view from below), with no cover plate, perforated or otherwise, installed in or placed on it. Moreover, the thin outer edges on the four sides of the designs shown in figures 1.1 and 1.2, referred to in paragraph 101 and in the second indent of paragraph 102 of the contested decision, are also hidden once the drain is built into the floor and are not visible during normal use.
130
Secondly, as regards design 5 (shown in figures 5.1 and 5.2) and design 6 (shown in figures 6.1 and 6.2), the Board of Appeal stated, in the third indent of paragraph 102 of its decision, that they concerned shower drainage channels with a perforated cover plate. However, those designs do not show a shower drainage channel. The images of the design in figures 5.1 and 5.2 show only a perforated cover plate (of which figure 5.1 is the view from above, visible only during normal use, and figure 5.2 the view from below). The same applies to the images of the design in figures 6.1 and 6.2 (figure 6.1 being the view from below and figure 6.2 the view from above, visible only during normal use). In so doing, the Board of Appeal compares the appearance of a complete drainage channel – the contested design – with that of a stand-alone cover plate which forms part of a drainage channel.
131
On reading the paragraphs of the contested decision relevant to the present plea, it is clear, according to the applicant, that the Board of Appeal overlooked the fact that the designs shown in figures 1.1, 1.2, 3.1 and 3.2 concern only drainage collectors (without a cover plate), that the designs shown in figures 5.1, 5.2, 6.1 and 6.2 concern only (perforated) cover plates, and that only designs 2 and 4 present a complete drainage channel, like the contested design, with a drainage collector and a cover plate installed in or placed on it. Consequently, the design shown in figures 1.1 and 1.2, together with the design shown in figures 5.1 and 5.2, form the appearance of design 2, while the design shown in figures 3.1 and 3.2, together with the design shown in figures 6.1 and 6.2, form the appearance of design 4. In reality, registration No DM/059828 reproduces only two earlier designs, namely designs 2 and 4, showing a complete drainage channel like the contested design.
132
The applicant adds that the finding made in the first indent of paragraph 102 of the contested decision is also incorrect. According to that finding, designs 1, 2, 3 and 5 of registration No DM/059828 present a circular water collector in the centre of their surface. However, according to the applicant, although designs 1 and 3 are in fact drainage collectors or water collectors, they are not visible during normal use. Designs 2 and 5 are not fitted with a water collector, but have a cover plate with a circular perforation in the centre of its surface.
133
The applicant submits that the finding made in the fifth indent of paragraph 102 and in paragraphs 106 and 107 of the contested decision is also incorrect. According to that finding, the cover plates for the drainage channel designs shown in registration DM/059828 (and therefore, according to the Board of Appeal, only designs 2 and 4) do not contain any decorative element, whereas the contested design’s cover plate is decorated with a pattern of dots. The applicant, for its part, considers that the cover plates of the designs under registration DM/059828 contain decoration in the form of a defined pattern of perforations. By contrast, the contested design’s cover plate is characterised by the absence of decorative elements, since it consists solely of a smooth, stainless steel cover plate, also known as a ‘zero’ cover plate. There is no decoration on that cover plate, either in the form of dots or in any other form.
134
The applicant therefore considers that the Board of Appeal erred as to the nature and appearance of the objects to be compared as earlier designs, because it compared the contested design first with the appearance of a drainage collector for a shower drainage channel, then with the appearance of a cover plate for a shower drainage channel and, lastly, with a complete shower drainage channel. It concludes from this that the feature or features that make it possible to distinguish the appearance of the contested design from the earlier designs are also subject to uncertainty.
135
EUIPO and the intervener dispute the applicant’s arguments.
136
As a preliminary point, it should be noted that the applicant does not dispute the definition of the informed user set out in paragraph 85 of the contested decision, or the finding that the designer’s freedom is relatively extensive, in paragraph 88 of that decision (see paragraph 24 above). Nor does it dispute the Board of Appeal’s finding, in paragraph 77 of that decision, that there are no features of the contested design which needed to be excluded from protection or attributed a substantially reduced role in their impact on any overall comparison as a result of being solely dictated by their technical function (see paragraph 23 above). Moreover, there is no reason to call into question that definition and those findings.
137
It is also common ground, following the judgment on appeal, that there is no requirement that the informed user of the contested design should know the product in which the earlier design is incorporated or to which it is applied (see paragraph 16 above). In other words, an earlier design incorporated in a product other than that concerned by the contested design constitutes, in principle, an earlier design which is relevant for the purpose of assessing the individual character within the meaning of Article 6 of Regulation No 6/2002, of the contested design (see paragraph 111 above). In the present case, the fact that the earlier designs are intended for industrial use for the drainage of liquid waste, and not for use as a shower drainage channel in a sanitary area such as a bathroom, does not therefore preclude their being taken into account as earlier designs which are relevant for the purpose of assessing the individual character of the contested design.
138
By the fourth plea, in essence, the applicant submits that the Board of Appeal erred in its comparison of the contested design with the earlier designs represented in registration No DM/059828. The Board of Appeal was wrong to find that the earlier designs represented by the views of the designs shown in figures 1.1 and 1.2, and then 3.1 and 3.2, concerned a non-perforated cover plate, whereas those designs concerned only a drainage collector. According to the applicant, those earlier designs are not visible during normal use (that is to say, once they are built into the floor), so they do not fall within the scope of Community design protection (see paragraphs 98 and 101 of the contested decision). Similarly, the Board of Appeal erred in finding that the earlier designs shown in figures 5.1, 5.2, 6.1 and 6.2 concerned drainage channels with a perforated cover plate, whereas they each comprised only a cover plate. The applicant concludes that only designs 2 and 4 of registration No DM/059828 represent a complete drainage channel, like the contested design, with the drainage collector and a cover plate incorporated in or placed on top of it.
139
In other words, the applicant considers that the contested design could be compared only with the two earlier designs 2 and 4, in so far as those two designs were the only ones, covered by registration No DM/059828, to concern complete ‘shower drainage channels’ composed of two elements, namely the drainage collector and cover plate.
Design 2 of registration No DM/059828
Design 4 of registration No DM/059828
140
In that regard, first of all, it must be noted, as EUIPO did, that any error which the Board of Appeal might have made in defining the features of the designs other than designs 2 and 4 of registration No DM/059828 could not have had any effect on the legality of the contested decision, since the Board of Appeal did compare the contested design with designs 2 and 4 as earlier whole designs, that is to say, designs representing a complex product composed of two elements, namely a drainage collector and a cover plate, forming a shower drainage channel. Even if the Board of Appeal had also compared the contested design with the appearance of a drainage collector alone or a cover plate alone when it examined earlier designs 1, 3, 5 and 6, that could not invalidate the result of the comparison of the contested design with the complete shower drainage channels, namely earlier designs 2 and 4.
141
Next, the comparison between the contested design and earlier designs 2 and 4 is correct. That is so even if, contrary to what is stated in the third indent of paragraph 102 of the contested decision, earlier design 4 includes a cover plate. It is sufficient for that design to include, as stated by the Board of Appeal, a perforated plate the pattern of which is functional rather than decorative for the findings in paragraphs 109, 110 and 112 of the contested decision to be valid and without error as to the outcome. The very minor error made by the Board of Appeal in the third indent of paragraph 102 of that decision cannot therefore have any decisive effect on the legality of that decision.
142
Lastly, it should be noted that, in its written pleadings, the applicant does not put forward any argument capable of invalidating the findings made in paragraphs 109, 110 and 112 of the contested decision.
143
In addition, at the hearing, the applicant acknowledged that there had been a ‘problem’ with the Blücher catalogue representations because, while the drainage collector appeared in one photograph and the cover plate appeared in another, that collector and that plate were not represented together. In that regard, it should also be noted that an earlier design must be an earlier design which is ‘whole’ or comprises ‘all the component parts’, and cannot be produced from a combination of features, in accordance, in particular, with judgment of 19 June 2014, Karen Millen Fashions (C‑345/13, EU:C:2014:2013, paragraphs 25 and 35), cited in paragraph 109 above. In the present case, it must be noted, as EUIPO did at the hearing, that it is apparent from the file that the applicant did not produce any representation of a complete drainage system comprising the drainage collector and the cover plate, as sold in the Blücher catalogues. Therefore, the only earlier whole designs on which the applicant may rely are, in any event, earlier designs 2 and 4, under registration No DM/059828, which represent complete shower drainage channels.
144
The Board of Appeal was therefore right to consider, in paragraphs 109 and 110 of the contested decision, in essence, that, while the contested design produced the overall impression of an ‘elegant, essential and minimal’ shower drainage channel with a decorated, closed cover plate and side slots of which the aesthetic value contributed to that ‘elegant and minimalist’ appearance, the overall impression produced by the earlier designs, and in particular by designs 2 and 4, on the other hand, was different because it was characterised by more ‘standardised’, functional and non-decorative features, such as the centrally placed circular water collector (of design 2, according to the views of the design shown in figures 1.1 and 1.2, and of design 4, according to the views of the design shown in figures 3.1 and 3.2) or a grid of slots (of design 2, according to the views of the design shown in figures 5.1 and 5.2, and of design 4, according to the views of the design shown in figures 6.1 and 6.2).
145
The Board of Appeal was also right, in paragraph 112 of the contested decision, read in conjunction with paragraph 107 of that decision, to add, in essence, that, for the same reasons as those set out in paragraphs 109 and 110 of that decision, and taking into account the fact that earlier designs 2 and 4 had a functional and non-decorative perforated plate with slots, it considered that the overall impression produced by those designs on the informed user was different from that produced by the contested design, which had a closed cover plate decorated with dots and side slots with a certain aesthetic value.
146
Lastly, the Board of Appeal was right, in paragraph 113 of the contested decision, which is not expressly disputed by the applicant, to consider, in essence, that the abovementioned difference in the appearance of the features which had been the subject of the work of a designer with a high degree of freedom, was sufficient to produce a different overall impression despite the existence of certain overlaps, and thus to conclude that, purely on the basis of the earlier designs identified in the application for a declaration of invalidity, in particular design 2 (according to the views of the designs shown in figures 1.1, 1.2, 5.1 and 5.2) and design 4 (according to the views of the designs shown in figures 3.1, 3.2, 6.1 and 6.2), the contested design had individual character.
147
The fourth plea must therefore be rejected as unfounded.
The fifth plea
148
By the fifth plea, the applicant claims that the Board of Appeal erred in holding, in paragraph 111 of the contested decision, in conjunction with paragraphs 29 and 30 of that decision, that the statements to which the applicant referred had not been sworn or affirmed, since most of those statements were emails and, moreover, came from the sphere of the applicant itself and were not supported by any independent declaration. The applicant assumes that the statements at issue are those which it attached as Annexes 4 to 7 to its reply of 2 April 2010, to which it also referred in paragraph 20 of its observations of 21 September 2018. According to the applicant, there was no reason not to take into account the content of those statements for the purpose of assessing the novelty and individual character of the contested design.
149
First of all, the applicant considers it ‘strange and inconsistent’, in the light of the third plea, that the Board of Appeal took those statements into consideration. The applicant produced the annexes in question at the same time as the photograph from page 33 of the Blücher catalogues, which the Board of Appeal rejected pursuant to Article 63(2) of Regulation No 6/2002 on the ground that it had not been produced in the context of the application for a declaration of invalidity of 3 September 2009. Although the applicant acknowledges that most of those statements are emails, it nevertheless points out that none of the parties involved, nor any of the adjudicating bodies which made the previous decisions, has ever called into question the accuracy or integrity of those emails. Those statements and their content have never been challenged at all. Furthermore, the applicant adds that those statements do not come from its own sphere, but that Annexes 4, 5 and 7 come from Blücher, an undertaking which is entirely independent of the applicant, and with which the applicant has no contractual, corporate or any other type of relationship, while Annex 6 comes from the intervener’s legal adviser.
150
EUIPO and the intervener dispute the applicant’s arguments.
151
In paragraph 111 of the contested decision, the Board of Appeal observed that the statements to which the applicant referred were not sworn or affirmed, since most of them were emails, and that, furthermore, they came from the sphere of the applicant itself and were not supported by any independent declaration coming, for instance, from manufacturers’ associations or chambers of commerce. Therefore, the Board of Appeal considered that it could not deprive the individual features of the contested design of aesthetic value in view of the documents referred to by the applicant. On the contrary, in the present case, according to the Board, account should be taken of the whole design and of the shape, size, position and proportion of its component parts.
152
By the fifth plea, in essence, the applicant submits that the Board of Appeal erred in depriving of probative value those statements and exchanges of emails from, inter alia, Blücher employees or I-Drain.
153
First of all, it is clear that the present plea is based on a misreading of the contested decision. It was not the intention of the Board of Appeal, in paragraph 111 of the contested decision, to deprive of any probative value the statements produced by the applicant in Annexes 4 to 7 to its reply of 2 April 2010 to the intervener’s observations before the Invalidity Division and concerning, in essence, the extent to which the contested design was aesthetic or functional. The Board of Appeal merely referred to the settled case-law of the General Court according to which, in essence, statements by third parties have a certain probative value, the force of which diminishes, however, in proportion to the interest of the signatory in the success of the case (see, to that effect, judgments of 16 July 2014, Nanu-Nana Joachim Hoepp v OHIM – Stal-Florez Botero (la nana), T‑196/13, not published, EU:T:2014:674, paragraph 32 and the case-law cited, and of 16 June 2015, H.P. Gauff Ingenieure v OHIM – Gauff (Gauff JBG Ingenieure), T‑585/13, not published, EU:T:2015:386, paragraph 28).
154
Next, irrespective of the probative value of those statements, it is also clear that the Board of Appeal did take those documents into account, as is apparent from its analysis in paragraph 111 of the contested decision. The Board of Appeal thus exercised the discretion conferred on it by Article 63(2) of Regulation No 6/2002 (see paragraphs 44 to 48 above). It was free to do so, since the documents identified as Annexes 4 to 7 to the applicant’s reply of 2 April 2010 did not concern the identification of the earlier designs. However, it should be borne in mind that those designs must be identified within the strict context of the application for a declaration of invalidity, which does not allow such discretion to be exercised (see the General Court’s reply to the third plea in paragraphs 40 to 69 above).
155
Lastly, in the context of its free assessment of the facts, the Board of Appeal was not bound by those statements. It could find, without erring in law, that such statements could not call into question the finding that the contested design had aesthetic rather than purely functional aspects. It is those aesthetic aspects which distinguish the overall impression produced by the contested design, which is that of an ‘elegant, essential and minimal’ shower drainage channel, from the more functional or ‘standardised’ impression produced by the earlier designs, as the Board of Appeal correctly found in paragraph 109 of the contested decision (see paragraph 144 above).
156
Furthermore, in so far as the applicant’s arguments may be interpreted as meaning that the applicant was deprived of the opportunity for the third party signatories of the statements to be heard in the course of oral proceedings and for witnesses to be heard before the Board of Appeal, as requested by the applicant under Articles 64 and 65 of Regulation No 6/2002, it should be noted that, in paragraphs 29 and 30 of the contested decision, the Board of Appeal considered, first of all, that oral proceedings were not expedient or necessary in the present case, secondly, that in the previous appeal proceedings, the applicant had objected to the intervener’s request for an oral hearing and, lastly, that it had sufficient elements, facts, arguments and evidence before it to enable it to take a decision. The Board of Appeal therefore rejected the request for a hearing and, for the same reasons, the request to hear witnesses.
157
First, as regards the request for oral proceedings, Article 64(1) of Regulation No 6/2002 provides that if EUIPO considers that oral proceedings would be expedient, they are to be held either at the instance of EUIPO or at the request of any party to the proceedings.
158
Thus, it is apparent from the wording of Article 64 of Regulation No 6/2002 and the expression ‘if the Office considers that oral proceedings would be expedient’ that EUIPO enjoys a broad discretion in organising oral proceedings.
159
Furthermore, it is apparent from the case-law relating to designs that the Board of Appeal enjoys a discretion as to whether oral proceedings before it are really necessary. That discretion regarding whether oral proceedings are necessary applies even where a party requests that oral proceedings be organised (judgment of 13 December 2017, Delfin Wellness v EUIPO – Laher (Infrared cabins and saunas), T‑114/16, not published, EU:T:2017:899, paragraph 114).
160
By analogy, according to the case-law relating to trade marks, a refusal is not vitiated by any manifest error where the party requesting oral proceedings does not establish that the Board of Appeal did not have all the information necessary for the adoption of its decision (see, to that effect and by analogy, judgment of 27 February 2018, Hansen Medical v EUIPO – Covidien (MAGELLAN), T‑222/16, not published, EU:T:2018:99, paragraphs 56 to 59).
161
That is the case here. The Board of Appeal, considering itself to be in possession of all the information necessary to make the contested decision, did not err in exercising its broad discretion. Furthermore, there is nothing in the file to suggest that the Board of Appeal did not have all the information needed as a basis for the operative part of that decision.
162
Secondly, Article 65(1) of Regulation No 6/2002 provides that, in any proceedings before EUIPO, it is possible to adopt measures of inquiry, including hearing the parties, requests for information, the production of documents and evidence, hearing witnesses, experts’ reports and statements in writing sworn or affirmed or having a similar effect under the law of the State in which they are drawn up. According to Article 65(3) of that regulation, if EUIPO considers it necessary for a party, witness or expert to give evidence orally, it is to issue a summons to the person concerned to appear before it for a hearing.
163
Thus, it is clear from the wording of Article 65 of Regulation No 6/2002 and from the expression ‘if the Office considers it necessary’ that EUIPO enjoys a broad discretion in organising the hearing of witnesses (see also, to that effect, order of 14 June 2021, TrekStor v EUIPO – Zagg (Protective cover for computer hardware), T‑512/20, not published, EU:T:2021:359, paragraph 32).
164
Therefore, the Board of Appeal was not required to hear the witnesses proposed, but enjoyed broad discretion in that regard, and exercised that discretion without committing any error in this case.
165
It is clear from the case-law concerning trade marks, by analogy, that there is no manifest error in refusing to hear witnesses where the party which made the request for the hearing of witnesses could have filed the testimonies of its witnesses in writing (see, to that effect and by analogy, order of 18 January 2018, W&O medical esthetics v EUIPO – Fidia farmaceutici (HYALSTYLE), T‑178/17, not published, EU:T:2018:18, paragraphs 15 to 24). The same applies, a fortiori, where, as in the present case, such witness statements have actually been submitted in writing. Moreover, reference should be made to the grounds already stated in paragraph 87 above.
166
The fifth plea must therefore be rejected as unfounded.
The sixth plea
167
By the sixth plea, in the first place, the applicant alleges that the Board of Appeal erred in considering, in paragraphs 114 and 115 of the contested decision, that the contested design did not lack individual character or, therefore, novelty, and was therefore valid. It refers to each of the previous pleas, which are also considered in conjunction with each other. In the second place, it submits that the measures of inquiry, as referred to in Article 65 of Regulation No 6/2002, were not adopted, or even envisaged, contrary to paragraph 71 of the judgment on appeal. Similarly, the Board of Appeal also failed to respond to the applicant’s proposal to produce additional evidence, in particular by producing specifically designated witnesses, such a proposal having been reiterated before the General Court ‘in so far as necessary’.
168
EUIPO and the intervener dispute the applicant’s arguments.
169
In the first place, in paragraphs 114 and 115 of the contested decision, the Board of Appeal held that, since the contested design had individual character, it could not, a fortiori, lack novelty for the purposes of Article 5 of Regulation No 6/2002, and was therefore valid.
170
In that regard, it should be noted that the condition of individual character, referred to in Article 6 of Regulation No 6/2002, goes beyond the requirement of novelty, set out in Article 5 of that regulation, in terms of the degree of differentiation it requires in relation to each earlier design. Thus, according to the case-law, a design which is new may or may not have individual character (see, to that effect, judgment of 6 June 2013, Kastenholz v OHIM – Qwatchme (Watch dials), T‑68/11, EU:T:2013:298, paragraph 38). Conversely, a design which is not new cannot, a fortiori, have individual character.
171
It may be inferred from the fact that a design has individual character that it is, a fortiori, novel, as is the case here, whereas the fact that a design lacks individual character does not necessarily indicate that it lacks novelty, but is, in any event, sufficient to declare that design invalid. Conversely, lack of novelty is decisive in support of the conclusion that a design lacks individual character, whereas novelty does not necessarily indicate that a design has individual character, which is also required in order for it to be declared valid.
172
Consequently, where, as in the present case, an application for a declaration of invalidity of a design is made on the basis of the grounds set out in Articles 5 and 6 of Regulation No 6/2002 and in relation to those earlier designs, a finding that the contested design has individual character implies that that design should be declared valid in the light of those grounds for invalidity and those earlier designs.
173
In circumstances where a design is found to have individual character, as in the present case, it is not necessary for the adjudicating bodies of EUIPO to examine in detail the novelty requirement, since examining as a matter of priority whether a sign has individual character may be justified for reasons of methodology and procedural economy. Conversely, in circumstances where a design is found to lack novelty, examining the novelty requirement as a matter of priority may also be justified for the same reasons of methodology and procedural economy, since a finding of lack of novelty necessarily leads to the design at issue being declared invalid, without there being any need to examine expressly the condition of individual character.
174
In the light of the considerations set out in paragraphs 170 to 173 above, the Court finds that the Board of Appeal did not err in examining, for reasons of methodology and procedural economy, whether the contested design had individual character before concluding, a fortiori, that that design was novel.
175
In the second place, as regards measures of inquiry, it is sufficient to note that, in paragraph 71 of its judgment on appeal (cited in paragraph 84 above), the Court of Justice merely referred to the fact that ‘such a fact [was] able to be taken into account by EUIPO in order to adopt measures of inquiry on the basis of Article 65(1) of Regulation No 6/2002’. By using the wording ‘[was] able’, the Court of Justice thus recognised the broad discretion enjoyed by EUIPO for the purpose of adopting measures of inquiry under that provision (see paragraphs 162 and 163 above). Consequently, the Board of Appeal’s decision not to adopt measures of inquiry, in particular the hearing of witnesses, by virtue of its broad discretion can in no way be contrary to judgment on appeal, nor be otherwise erroneous.
176
Moreover, as regards the offers of evidence made repeatedly before the General Court, it should be observed that, under Article 85(3) of the Rules of Procedure of the General Court, ‘the main parties may, … produce or offer further evidence before the oral part of the procedure is closed … provided that the delay in the submission of such evidence is justified’. In the present case, as it concerns an administrative procedure which began in 2009, and given the absence of any new information before the Court, the delay in the submission of such evidence cannot, in any event, be justified. Moreover, the Court considers that since it has sufficient information available to it from the documents in the file, that evidence is not necessary for it to give a decision.
177
The sixth plea must therefore be rejected as unfounded.
178
In the light of all the foregoing considerations, the action must be dismissed in its entirety.
Costs
179
Under Article 134(1) of the Rules of Procedure, the unsuccessful party must be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
180
Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Ninth Chamber),
hereby:
1.
Dismisses the action;
2.
Orders Group Nivelles NV to pay the costs.
Costeira
Kancheva
Perišin
Delivered in open court in Luxembourg on 27 April 2022.
[Signatures]
Table of contents
Background to the dispute
Forms of order sought
Law
The first and third pleas, concerning the identification of the earlier design
The third plea
The first plea
The second plea, concerning the determination of the features of the contested design
The fourth, fifth and sixth pleas, concerning the comparison of the designs at issue and the assessment of the individual character of the contested design
Legislation and case-law
The contested decision and individual reproduction of the designs at issue
The fourth plea
The fifth plea
The sixth plea
Costs
(
*1
)	Language of the case: Dutch.