JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
10 April 2024 (*) (1)
(Community design – Invalidity proceedings – Registered Community design representing door and window handles – Earlier design – Ground for invalidity – Individual character – Article 25(1)(b) and Article 6 of Regulation (EC) No 6/2002)
In Case T‑654/22,
M&T 1997, a.s., established in Dobruška (Czech Republic), represented by T. Dobřichovský, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
VDS Czmyr Kowalik sp.k., established in Świętochłowice (Poland), represented by M. Witkowska and A. Pilecka, lawyers,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, I. Dimitrakopoulos (Rapporteur) and B. Ricziová, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 12 October 2023,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, M&T 1997, a.s., seeks the annulment and the alteration of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2022 (Case R 29/2022-3) (‘the contested decision’).
Background to the dispute
2        On 23 October 2020, the intervener, VDS Czmyr Kowalik sp.k., filed an application for a declaration of invalidity of the registered Community design following an application filed by the applicant’s predecessor in title on 17 November 2012 which is represented in the following views:
3        The goods to which the design, in respect of which a declaration of invalidity is sought, was intended to be applied were in Class 08-06 of the Locarno Agreement of 8 October 1968 Establishing an International Classification for Industrial Designs, as amended, and corresponded to the following description: ‘Door and window handles’.
4        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(b), read in conjunction with Article 6(1)(b), of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
5        The application for a declaration of invalidity was based on the argument that the contested design had no individual character because the overall impression produced on the informed user did not differ from the impression produced by the shape of handles existing on the market prior to its filing date. In support of its line of argument, the intervener relied, inter alia, on the earlier Griffwerk FRAME design represented below:
6        On 11 November 2021, the Cancellation Division upheld the application for a declaration of invalidity finding that the contested design had no individual character within the meaning of Article 6 of Regulation No 6/2002.
7        On 6 January 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
8        By the contested decision, the Board of Appeal dismissed the appeal on the ground that the contested design did not have individual character, since it did not produce, in the handle sector, a different overall impression on the informed user from that produced by the earlier design.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        alter the contested decision in order to uphold the appeal and dismiss the application for a declaration of invalidity in its entirety;
–        order the intervener to pay the costs, including those incurred before EUIPO.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
11      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs, including those incurred before the Board of Appeal.
Law
Substance
12      In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, and second, infringement of the right to oral proceedings and the right to be heard under Article 62 of Regulation No 6/2002, read in conjunction with Article 64(1) and Article 65(1) of that regulation.
13      In the context of the first plea, the applicant, in essence, complains that the Board of Appeal erred in finding that the overall impression produced by the contested design on the informed user did not differ from that produced by the earlier design on that user and that, therefore, the contested design did not have individual character.
14      That plea is divided into three parts, concerning, in essence, the Board of Appeal’s assessment relating, first, to the definition of the informed user, second, to the determination of the designer’s degree of freedom and, third, to the comparison of the overall impressions that the designs at issue produce on the informed user.
15      EUIPO and the intervener dispute the applicant’s complaints.
16      As a preliminary point, it should be borne in mind that Article 25(1)(b) of Regulation No 6/2002 provides that a Community design may be declared invalid only if it does not fulfil the requirements referred to in Articles 4 to 9 of that regulation. Under Article 4(1) of Regulation No 6/2002, a design is to be protected to the extent that it is new and has individual character (judgment of 24 September 2019, Piaggio & C. v EUIPO – Zhejiang Zhongneng Industry Group (Mopeds), T‑219/18, EU:T:2019:681, paragraphs 24 and 25).
17      It follows from the wording of Article 6(1)(b) of Regulation No 6/2002 that individual character must be assessed in the light of the overall impression that it produces on the informed user. In the case of a registered Community design, the overall impression produced on the informed user must be different from that produced by any design made available to the public before the date on which the application for registration was filed or, if a priority is claimed, the date of priority. Article 6(2) of Regulation No 6/2002 states that in the assessment of individual character, the degree of freedom of the designer in developing the design is to be taken into consideration (judgment of 18 October 2018, Linak v EUIPO – ChangZhou Kaidi Electrical (Electrically operated lifting column), T‑367/17, not published, EU:T:2018:694, paragraph 17).
18      Furthermore, it is apparent from recital 14 of Regulation No 6/2002 that, when assessing whether a design has individual character, account should be taken of the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the designer’s degree of freedom in developing the design (judgment of 18 May 2022, Domator24.com Paweł Nowak v EUIPO – Siwek and Didyk (Armchair), T‑256/21, not published, EU:T:2022:297, paragraph 43).
19      According to settled case-law, the assessment of the individual character of a Community design is carried out, in essence, in four stages. That examination consists in 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; second, 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; third, the designer’s degree of freedom in developing his or her design, the influence of which on individual character is in inverse proportion; and, fourth, 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, Visi/one v EUIPO – EasyFix (Display holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 66 and the case-law cited).
20      It is in the light of those principles that the Board of Appeal’s assessment of the individual character of the contested design must be examined.
21      First of all, it should be noted that the sector concerned, in the present case, is the door and window handle sector. It is therefore necessary to examine, in turn, the Board of Appeal’s findings, disputed by the applicant, concerning the informed user, the designer’s degree of freedom and the comparison of the overall impressions produced by the designs at issue.
The informed user
22      The Board of Appeal noted, in paragraph 20 of the contested decision, that the informed user, without being a designer or a technical expert, knows the various designs that exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include and, as a result of his or her interest in the products concerned, shows a relatively high level of attention when using them. In paragraph 21 of the contested decision, the Board of Appeal found that the informed user is anyone who habitually purchases door handles, who puts them to their intended use, possesses a certain degree of knowledge with regard to the features which those designs normally include and has informed himself or herself about those products. According to the Board of Appeal, due to his or her interest in those items, the informed user displays a relatively high level of attention when using them. Lastly, in paragraph 22 of the contested decision, the Board of Appeal rejected the applicant’s argument that the informed user was a handle dealer or purchasing manager.
23      The applicant disputes that assessment, claiming, in essence, that the Board of Appeal adopted an incorrect approach to the concept of ‘informed user’. According to the Board of Appeal, the concept of ‘informed user’, in the light of the case-law, is between that of the ‘average consumer’ in trade mark law and that of the ‘sectoral expert’ in patent law. The informed user shows special vigilance, because of personal experience or extensive knowledge of the industry in question. Moreover, the informed user is a person who is familiar with the various designs that exist in the sector, possesses a certain degree of knowledge with regard to the features which those designs normally include and, as a result of his or her interest in the products concerned, demonstrates a relatively high level of attention when using them. Accordingly, it follows from the case-law that the informed user is not only the end user but also the expert who purchases the goods at issue for the purpose of distributing them to end users. The applicant submits that such a person is generally a handle salesperson, which was completely overlooked by the Board of Appeal in the contested decision, whose level of attention is higher than that of an end user.
24      EUIPO and the intervener dispute the applicant’s arguments.
25      It should be noted that Regulation No 6/2002 does not define the concept of the ‘informed user’. According to the case-law, the concept of ‘informed user’ must be understood as lying somewhere between that of the ‘average consumer’, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks at issue, and the ‘sectoral expert’, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his or her personal experience or his or her extensive knowledge of the sector in question (judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 53).
26      As regards the informed user’s level of attention, it should be noted that, although the informed user is not the well-informed and reasonably observant and circumspect average consumer who normally perceives a design as a whole and does not proceed to analyse its various details, he or she is also not an expert or sectoral expert capable of observing in detail the minimal differences that may exist between the designs at issue. Thus, the qualifier ‘informed’ suggests that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his or her interest in the products concerned, shows a relatively high degree of attention when he or she uses them (see, to that effect, judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59 and the case-law cited).
27      In the present case, as regards the applicant’s argument that it is not only the end user himself or herself who may be regarded as an informed user, but also the handle salesperson, it should be noted that, according to the case-law referred to in paragraphs 25 and 26 above, the concept of ‘informed user’ does not refer to a professional quality linked to the product concerned. Furthermore, the informed user is neither an expert nor a specialist, such as a sectoral expert. The applicant’s argument therefore cannot succeed.
28      Furthermore, the case-law cited by the applicant cannot call that finding into question, in accordance with the arguments of EUIPO and the intervener. First, as regards the judgment of 14 June 2011, Sphere Time v OHIM – Punch (Watch attached to a lanyard) (T‑68/10, EU:T:2011:269), it must be recalled that the findings of the Court, in paragraph 53 of that judgment, on the informed user were limited to promotional items that could be purchased by sellers of other goods in order to promote those other goods and, therefore, those considerations cannot be applied to the present case. Second, as regards the judgment of 21 November 2013, El Hogar Perfecto del Siglo XXI v OHIM – Wenf International Advisers (Corkscrew) (T‑337/12, EU:T:2013:601), it should be noted that, in that case, the Court referred, in paragraphs 29 and 30 of that judgment, to professionals as informed users only in so far as they could possibly use the goods at issue to promote other goods and not as sellers of the goods at issue. Thus, the case-law cited by the applicant does not support the argument that the handle salesperson also constitutes an informed user in the present case.
29      Moreover, it should be noted that the applicant does not dispute the Board of Appeal’s finding that the informed user displays a relatively high level of attention when using door handles.
30      In the light of the foregoing, it must be concluded that the applicant’s complaint that the Board of Appeal made an error of assessment in its definition of the informed user must be rejected.
The designer’s degree of freedom
31      The Board of Appeal found, in paragraphs 23 to 26 and 35 of the contested decision, that the degree of freedom of the designer of door handles was high. Although it found that the designer’s freedom was restricted by the fact that the door handles had to be equipped with an opening mechanism and a grip and had to be capable of being mounted onto a door, the Board of Appeal observed that there was a high degree of freedom as regards the shape, size, material, colour and decorative elements of the door handles. In particular, it based that finding on the images of various examples of handles, set out in paragraph 25 of the contested decision, which, according to the Board of Appeal, showed that the gripping part of the handle could come in different sizes and forms, provided that it facilitates the opening of the door.
32      The applicant disputes that assessment, arguing that the technical requirements of door handles limit the designer’s freedom. In that regard, it submits that the ability to open a door means that the gripping part of the door handle must be of sufficient length to form a pivoting lever that facilitates the opening of the door, even with minimal force. Thus, the number of shape elements that may be included in the freedom of the designer of the door handle is very limited.
33      EUIPO and the intervener dispute the applicant’s arguments.
34      According to the case-law, the degree of freedom of the designer of a design is determined by, inter alia, the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product to which the design is applied. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (see judgment of 29 October 2015, Roca Sanitario v OHIM – Villeroy & Boch (Single control handle faucet), T‑334/14, not published, EU:T:2015:817, paragraph 35 and the case-law cited).
35      In the present case, the Board of Appeal’s assessment, set out in paragraph 31 above, is consistent with the case-law of the Court according to which the degree of freedom of the designer of a door handle with a grip is high, on account of the fact that that handle can be made in a significant variety of shapes, colours and materials (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 45 to 47).
36      Contrary to what the applicant claims, the length of the pivoting lever of a door handle with a grip does not appreciably limit the designer’s freedom either in relation to the particular shape of that lever or in relation to the other elements of the appearance of such a handle, as shown by the examples of door handles illustrated in paragraph 25 of the contested decision.
37      Accordingly, the applicant’s complaint that the Board of Appeal erred in its assessment of the degree of freedom of the designer of a door handle must be rejected.
The comparison of the overall impressions produced by the designs at issue
38      The Board of Appeal found, in paragraphs 27 to 36 of the contested decision, that the contested design did not produce a different overall impression from that of the earlier design. In that regard, first, it noted that the two designs at issue showed a door handle consisting of a lever in a flat, rectangular shape, a grip in a cuboid shape of the same dimensions and proportions, and a thin profile. Second, it noted that the differences between the two designs at issue were limited only to the curvature of the edges, which were rounded in respect of the contested design, and to the shape of the neck, the transition of which was curved in the contested design and perpendicular in the earlier design, and that those differences were not sufficient to produce distinct overall impressions on the informed user, in particular in view of the designer’s high degree of freedom. The difference in curvature would not be immediately perceived by the informed user without an examination of the exact degree of angles. Furthermore, the difference in the neck, which is located at the back of the handle and not on the exposed side, does not play a decisive role in the overall impression. Third, the Board of Appeal rejected two other differences relied on by the applicant, namely a rosette shape and a shade of colour on the contested design, finding that the existence of the former could not be inferred from the lines of the contested design and that the second was not sufficient to offset the similarities of the designs at issue. Fourth, it found that the fact that the contested design obtained the ‘Red Dot’ award in 2013 was irrelevant for the assessment of the overall impression on the informed user under Article 6(1)(b) of Regulation No 6/2002.
39      The applicant disputes that assessment, claiming that the Board of Appeal made several errors of assessment.
40      In that regard, the applicant submits that there are numerous differences between the designs at issue. First, the front face of the handle of the contested design has significantly rounded corners, while having a slim edge, unlike the earlier design. Second, the transition between the lever and the neck of the handle of the contested design is formed by a gradual curve, whereas that transition is perpendicular to the handle of the earlier design, without any rounding. Third, the back of the handle of the earlier design has a flat surface, unlike that of the handle of the contested design, which is significantly rounded, which gives the impression that the wall of the grip is very thin. Fourth, the handle of the contested design is designed in such a way that none of the cross-sections, perpendicular or horizontal with either side, are rectangular, unlike the handle of the earlier design. Fifth, the contested design contains a rosette at the junction of its neck and the door which follows the neck smoothly in shape whereas the earlier design completely lacks a rosette altogether. Thus, the rounding and softening of the edges of the handle in the contested design confer on it individual character distinct from that of the handle of the earlier design. According to the applicant, the Board of Appeal failed to examine all those differences in detail.
41      In addition, the applicant submits that, contrary to the Board of Appeal’s analysis in the contested decision, the informed user will discern the abovementioned differences between the designs at issue. In so far as the informed user has an increased level of attention, he or she will easily be able to perceive the distinctive design of the back of the door handle, even when looking at it from the front, due to his or her average height and, consequently, his or her overheard view of the handle. In that regard, the applicant submitted, at the hearing, that the rounded and softened edges of the handle are not only visible, but also tangible for the end user.
42      In addition, the applicant maintains that the novelty and individual character of the contested design are confirmed by the fact that it received the ‘Red Dot’ international design award in 2013.
43      EUIPO and the intervener dispute the applicant’s arguments.
44      In that context, EUIPO refers to the analysis carried out in the contested decision in that regard, stating that the Board of Appeal took into account all the differences between the two designs at issue. EUIPO adds that the comparison of the overall impressions must be made by reference to the contested design as registered, and that the products marketed may be taken into consideration only in order to support the findings of such an assessment.
45      At the hearing, EUIPO added that the differences in curvature led to a softer grip on the handle, but remained minor, and it stated that, although the edges of the two designs at issue were rounded, the shape of the grips remained rectangular.
46      The intervener also supports the Board of Appeal’s assessment in the contested decision, claiming that the Board of Appeal correctly identified and compared the features of the two designs at issue. First, it submits that the determination of the overall impression is based on the impressions of an informed user who makes the assessment from the perspective of use of that product, taking into account the typical manner of such use, and that the informed user will not notice the differences at the back and on the side of the handle, since his or her attention is not focused on each of the elements of the designs at issue. Second, it argues that the applicant used photographs in its application of a product allegedly incorporating the contested design which is contrary to the accepted practice, namely the examination of the registered design, and not of an item incorporating the design. Third, it states that obtaining the ‘Red Dot’ award is not a legal criterion for determining the individual character of the contested design within the meaning of Article 6(1)(b) of Regulation No 6/2002.
47      In that regard, it should be borne in mind that, according to settled case-law, the individual character of a design results from an overall impression of difference, or lack of ‘déjà vu’, from the point of view of an informed user in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions (see judgment of 4 July 2017, Murphy v EUIPO – Nike Innovate (Electronic wristband), T‑90/16, not published, EU:T:2017:464, paragraph 43 and the case-law cited).
48      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 (see judgment of 29 October 2015, Single control handle faucet, T‑334/14, not published, EU:T:2015:817, paragraph 58 and the case-law cited).
49      The overall impression produced on the informed user by a design must necessarily be determined in the light of the manner in which the product in question is normally used (see, to that effect, judgment of 4 February 2014, Gandia Blasco v OHIM – Sachi Premium-Outdoor Furniture (Cuboid Armchair), T‑339/12, not published, EU:T:2014:54, paragraph 26 and the case-law cited). In that context, account must be taken of the fact that the attention of the informed user is focused rather on the most visible and most important elements when using the product (see, to that effect, judgments of 29 October 2015, Single control handle faucet, T‑334/14, not published, EU:T:2015:817, paragraph 74, and of 28 September 2017, Rühland v EUIPO – 8 seasons design (Lamp in the form of a star), T‑779/16, not published, EU:T:2017:674, paragraph 43).
50      In this respect, the importance of the visible features of the product is assessed on the basis of their impact not only on its appearance, but also on the ease with which it can be used (see, to that effect, judgments of 4 February 2014, Cuboid Armchair, T‑339/12, not published, EU:T:2014:54, paragraphs 26 and 30, and of 6 September 2023, Cayago Tec v EUIPO – iAqua (Shenzhen) (Personal watercraft, Speedboat), T‑377/22, not published, under appeal, EU:T:2023:504, paragraph 54).
51      Furthermore, according to the case-law, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs which do not have significant differences produce the same overall impression on an informed user and, accordingly, the contested design does not display individual character. Conversely, if the designer has a low degree of freedom, that reinforces the conclusion that the sufficiently marked differences between the designs produce a dissimilar overall impression on the informed user and, accordingly, the contested design displays individual character (see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 76 and the case-law cited).
52      It is therefore necessary to determine, in the present case, whether the differences between the two designs at issue are sufficiently marked to produce distinct overall impressions on the informed user.
53      As a preliminary point, it should be noted, as the Board of Appeal did, that the fact that the contested design received the ‘Red Dot’ international design award cannot reasonably be relied on by the applicant in that regard, since such a factor gives no indication as to the overall impression of that design on the informed user in the present case. Obtaining that award is not, therefore, a relevant factor for the assessment of the individual character of the design in the light of the requirements of Article 6 of Regulation No 6/2002 (see, to that effect, judgment of 6 June 2019, Porsche v EUIPO – Autec (Motor vehicles), T‑209/18, EU:T:2019:377, paragraph 96).
54      Furthermore, in paragraph 34 of the contested decision, the Board of Appeal found that it could not be inferred from the views of the contested design that it contained a separate rosette. That finding of the Board of Appeal is not specifically disputed by the applicant. Therefore, that element, relied on by the applicant, in the comparison of the overall impressions produced by the designs at issue, cannot be taken into account, in accordance with the considerations set out in paragraph 48 above.
55      Furthermore, as regards the elements which are, for their part, relevant to the comparison of the overall impressions produced by the designs at issue, it should be noted that, when the informed user uses a door handle with a grip in accordance with its normal use, he or she clasps its gripping area with the hand, which corresponds, in the present case, to the grip, in order to exert downward pressure so that the latch of the door slides and allows the door to be opened, which can then be pushed or pulled. Where the informed user approaches the door handle in order to use it normally, that user sees it from above. Accordingly, the most visible elements of the handle are those corresponding to the outward-facing parts of the handle, namely the front, side and top parts of the handle. As the Board of Appeal acknowledged in paragraphs 33 and 35 of the contested decision, the differences at the back, namely the curvature of the edges and the shape of the neck, will also be visible to the informed user and will not be overlooked by him or her. Moreover, as the applicant points out, the rounded curvature of the edges of the contested design is accompanied by a thinner and smoother appearance which the informed user will easily notice.
56      Furthermore, the rounded and thinner shapes of the edges of the contested design constitute differences from the earlier design which will be perceived by the informed user as influencing the manipulation of the handle and are, therefore, important elements in relation to the overall impression produced by the contested design, in accordance with the considerations set out in paragraphs 49 and 50 above. Those aspects have an impact on the ease of use of the handle, since they correspond to the parts of it which come into direct contact with the hand of the informed user.
57      Consequently, in accordance with the considerations set out in paragraph 49 above, the attention of the informed user is focused on all the elements set out in paragraphs 55 and 56 above.
58      In the light of the information provided in paragraphs 55 and 56 above and the high level of attention of the informed user in the present case (see paragraph 22 above), it must be held that, contrary to what the Board of Appeal found in paragraph 35 of the contested decision, the differences in the angles of the grip and the neck are neither marginal nor minor variations of one and the same design. A more rounded shape generally results in a softening of the lines of the neck and grip, which has a significant effect both on the overall appearance and on the ease of use of the door handle. It is therefore an element which attracts the informed user’s attention.
59      It follows from the foregoing that, although the designer’s freedom is high (see paragraph 35 above), those differences are sufficiently significant to produce a different overall impression of the designs at issue, contrary to the Board of Appeal’s analysis.
60      In the light of those considerations, the Board of Appeal erred in finding that the designs at issue produced the same overall impression on the informed user and that the contested design therefore lacked individual character within the meaning of Article 6(1)(b) of Regulation No 6/2002.
61      Therefore, the first plea in law must be upheld and the contested decision must be annulled.
62      It follows that there is no need for the Court to examine the applicant’s second plea, alleging infringement of the right to oral proceedings and of the right to be heard.
63      As regards the applicant’s second head of claim, by which it requests the Court to alter the contested decision in order, first, to uphold its appeal before the Board of Appeal and, second, to reject the application for a declaration of invalidity in its entirety, it should be recalled that the review carried out by the Court under Article 61 of Regulation No 6/2002 is a review of the legality of the decisions of the Boards of Appeal of EUIPO and that it may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 61(2) of that regulation. It follows that the power of the Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72, and of 18 January 2023, Dorsum v EUIPO – id Quantique (Clavis), T‑758/21, not published, EU:T:2023:3, paragraph 20). In so far as the Board of Appeal did not examine, in the contested decision, the issue of the invalidity of the contested design in the light of the seven other designs relied on by the intervener in its application for a declaration of invalidity, it is not for the Court to rule on that issue and to alter the contested decision by upholding the applicant’s appeal before the Board of Appeal and rejecting the intervener’s application for a declaration of invalidity in its entirety. Therefore, the second head of claim must be rejected because the Court does not have jurisdiction.
Costs
64      Under Article 134(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the parties must bear their own costs. However, if it appears justified in the circumstances of the case, the Court may order that one party, in addition to bearing its own costs, pay a proportion of the costs of the other party.
65      In the present case, EUIPO and the intervener have been unsuccessful for the main part in so far as the contested decision is annulled, whereas the applicant has been unsuccessful in its application for alteration of the contested decision.
66      In the light of those circumstances, the parties must be ordered to bear their own costs.
67      In addition, the applicant claimed that the intervener should be ordered to reimburse it for the costs incurred before the Cancellation Division and before the Board of Appeal and the intervener requested that the applicant be ordered to pay the costs incurred before the Board of Appeal. In that regard, it is clear from Article 190(2) of the Rules of Procedure that only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. By contrast, the costs incurred for the purposes of the proceedings before the Cancellation Division do not constitute recoverable costs, with the result that, to that extent, the applicant’s claim cannot succeed.
68      Consequently, first, the form of order sought by the applicant must be rejected in so far as it requests that the intervener be ordered to pay the costs incurred before the Cancellation Division. Second, in so far as the requests of the applicant and the intervener concern the costs of the proceedings before the Board of Appeal, it will be for the latter to decide, in the light of the present judgment, on the costs relating to those proceedings (see, to that effect, judgment of 6 July 2022, Les Éditions P. Amaury v EUIPO – Golden Balls (BALLON D’OR), T‑478/21, not published, EU:T:2022:419, paragraphs 84 and 85).
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Annuls the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2022 (Case R 29/2022-3);
2.      Dismisses the action as to the remainder;
3.      Orders each party to bear its own costs.
Kowalik-Bańczyk
Dimitrakopoulos
Ricziová
Delivered in open court in Luxembourg on 10 April 2024.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.
1      This judgment is published in extract form.