JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
4 February 2014 (*)
(Community design – Invalidity proceedings – Registered Community design representing an armchair – Earlier design – Ground for invalidity – Lack of individual character – Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002)
In Case T‑357/12,
Sachi Premium-Outdoor Furniture, Lda, established in Estarreja (Portugal), represented by M. Oehen Mendes, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Gandia Blasco, SA, established in Valencia (Spain), represented by I. Sempere Massa, lawyer,
ACTION brought against the decision of the Third Board of Appeal of OHIM of 27 April 2012 (Case R 969/2011‑3) in relation to invalidity proceedings between Gianda Blasco, SA and Sachi Premium-Outdoor Furniture, Lda,
THE GENERAL COURT (Seventh Chamber),
composed of M. Van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 7 August 2012,
having regard to OHIM’s response lodged at the Court Registry on 21 November 2012,
having regard to the intervener’s response lodged at the Court Registry on 14 November 2012,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month of notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1        The applicant, Sachi Premium-Outdoor Furniture, Lda, is the holder of the Community design filed with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on 14 May 2009, registered on that same day under No 1512633‑0003 (‘the contested design’) and published in the Community Designs Bulletin No 116/2009 of 18 June 2009.
2        The contested design, intended to be applied to ‘armchairs, loungers’, is represented as follows:
3        On 1 April 2010, the intervener, Gandia Blasco, SA, applied to OHIM for a declaration that the contested design was invalid, based on Articles 4 to 9 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
4        In support of its application for a declaration of invalidity, the intervener relied on the Community design registered on 9 December 2003 under No 52113‑0001 (‘the earlier design’) for ‘armchairs’, represented as follows:
5        By decision of 7 March 2011, the Invalidity Division rejected the application for a declaration of invalidity on the ground that the contested design was new and had individual character within the meaning of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 5 and 6 of that regulation.
6        On 6 May 2011, the intervener filed a notice of appeal pursuant to Articles 55 to 60 of Regulation No 6/2002 against the decision of the Invalidity Division.
7        By decision of 27 April 2012 (‘the contested decision’), the Third Board of Appeal of OHIM annulled the decision of the Invalidity Division. First, the Board of Appeal found that the designs at issue were not identical within the meaning of Article 5(2) of Regulation No 6/2002. Secondly, the Board of Appeal declared the contested design invalid on the ground that it lacked individual character within the meaning of Article 6 of Regulation No 6/2002. The Board of Appeal took the view that the contested design created the same overall impression on informed users as the earlier design since all the essential characteristics of the latter were reproduced in the former and, to differentiate the contested design, besides very slight, barely perceptible variations, only one other component had been added, namely, three cushions, [a component] which could generally be associated with that type of product in the course of ordinary use of the product.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision and declare the contested design valid;
–        order OHIM to pay the costs.
9        By letter lodged at the Court Registry on 19 February 2013, the applicant withdrew its head of claim that the Court should declare the contested design valid.
10      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
11      The intervener contends that the Court should:
–        confirm the contested decision;
–        declare the contested design invalid;
–        make an order as to costs.
Law
12      The applicant puts forward, in essence, a single plea in law based on infringement of Article 6 of Regulation No 6/2002.
13      Under Article 6(1)(b) of Regulation No 6/2002, individual character falls to be assessed, in the case of a registered Community design, in the light of the overall impression produced on the informed user, which must be different from that produced by any design made available to the public before the date of filing of the application for registration or, if a priority is claimed, before the date of priority. Article 6(2) of Regulation No 6/2002 states that, for the purposes of that assessment, the designer’s degree of freedom in developing the design is to be taken into consideration.
14      As regards the concept of the ‘informed user’, by reference to which the individual character of the contested Community design falls to be assessed, the Board of Appeal identified that user, in the present case, as any person who ‘habitually purchases’ armchairs and puts them to their intended use and who has acquired information on the subject by browsing through catalogues of armchairs, going to relevant shops, downloading information from the internet, or who is a reseller of those products.
15      As regards the informed user’s level of attention, as the Board of Appeal has stated, according to the case-law, 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 personal experience or his extensive knowledge of the sector in question (Case C‑281/10 P PepsiCo v Grupo Promer Mon Graphic [2011] ECR I‑10153, paragraph 53).
16      It is also apparent from the case-law 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 is also not an expert or specialist capable of observing in detail the minimal differences that may exist between the designs at issue. Thus, the qualifier ‘informed’ suggests that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them (PepsiCo v Grupo Promer Mon Graphic, paragraph 15 above, paragraph 59).
17      The Board of Appeal took the view that the informed user in the present case was familiar with the product in accordance with the level of attention required in the case-law cited in paragraphs 15 and 16 above.
18      The applicant does not dispute the Board of Appeal’s findings concerning the definition and level of attention of the informed user.
19      As regards the designer’s degree of freedom, according to the case-law, that freedom is established 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. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (judgments of 9 September 2011 in Case T‑11/08 Kwang Yang Motor v OHIM – Honda Giken Kogyo (Internal combustion engine), not published in the ECR, paragraph 32, and of 25 April 2013 in Case T‑80/10 Bell & Ross v OHIM – KIN (Wristwatch case), not published in the ECR, paragraph 112).
20      Therefore, the greater the designer’s freedom in developing a design, the less likely it is that minor differences between the designs at issue will be sufficient to produce different overall impressions on an informed user. Conversely, the more the designer’s freedom in developing a design is restricted, the more likely it is that minor differences between the designs at issue will be sufficient to produce different overall impressions on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that designs that do not have significant differences produce the same overall impression on an informed user (Internal combustion engine, paragraph 19 above, paragraph 33, and Wristwatch case, paragraph 19 above, paragraph 113).
21      In the present case, the Board of Appeal rightly took the view that the freedom of the designer of armchairs is almost unlimited since armchairs can take any combination of colours, patterns, shapes and materials, and that the only limitation for the designer is the fact that armchairs have to be functional, that is, they must include at least a seat, a backrest and two armrests.
22      While not disputing that assessment by the Board of Appeal, the applicant argues that the designer’s degree of freedom is limited by ‘[the] style/fashion/trend/mode in which it is integrated’ and that those [factors] have to be taken into account in the assessment of the individual character of a design.
23      In this connection, suffice it to point out that, according to the case-law cited in paragraph 19 above, the designer’s degree of freedom may be limited by the constraints of the features imposed by the technical function of the product or by statutory requirements applicable to the product. However, a general design trend cannot be regarded as a factor that restricts the designer’s freedom (Joined Cases T‑83/11 and T‑84/11 Antrax It v OHIM – THC (Radiators for heating) [2012] ECR, paragraph 95).
24      The Court has also held that the question whether a design does or does not follow a general design trend is relevant, at the most, in relation to the aesthetic perception of the design concerned and can therefore, possibly, have an influence on the commercial success of the product in which the design is incorporated. By contrast, it is not relevant to the examination of the individual character of the design concerned, which consists in verifying whether the overall impression produced by it differs from the overall impressions produced by the designs made available earlier, irrespective of aesthetic or commercial considerations (Case T‑153/08 Shenzhen Taiden v OHIM – Bosch Security Systems (Communications equipment) [2010] ECR II‑2517, paragraph 58).
25      As regards the comparison of the overall impressions produced by the earlier design and by the contested design, the Board of Appeal observed that they shared numerous identical or strongly similar elements, namely, a rectangular overall structure including rectangular frames as armrests; frame heights smaller than [frame] widths; flat seats; flat vertical backrests; juxtaposed and slightly separated rectangular plates on the seats; a board below the plates on either side of the armchairs; [and] armrests on the same level as the upper limits of the backs of the armchairs and linked to the upper limit of the backs of the armchairs. The Board of Appeal stated that the designs at issue differ in the number of juxtaposed rectangular plates composing the seats and backs of the armchairs represented in the designs at issue; by there being, in the earlier design, an open space between the seat and the back of the armchair; and also by the presence of three cushions in the contested design and a slight difference in the distance between the seat of the armchair and the ground. The Board of Appeal observed that the differences between the designs at issue, namely, the different number of juxtaposed rectangular plates composing the seats and backs of the armchairs represented in the designs at issue, and there being, in the earlier design, an open space between the seat and the back of the armchair, were considerably less striking than the overall impression produced by the numerous partially identical and/or strongly similar elements. It found that the overall impressions produced by the designs at issue were almost identical and that the slight differences were barely perceptible.
26      The Board of Appeal then stated that the only relevant difference between the designs at issue consisted in the fact that the contested design also included three cushions, which were not present in the earlier design. It found that this had a merely marginal impact on the overall impressions produced by the designs at issue since the cushions were a feature added to the version of the armchair represented in the earlier design and the informed user would attribute far more importance to the overall impression produced by the structure of the armchairs. The Board of Appeal concluded that the contested design created the same overall impression on informed users as the earlier design since all the essential characteristics of the latter were reproduced in the former and, to differentiate the contested design, besides very slight, barely perceptible variations, only one other component had been added, namely, three cushions, [a component] which could generally be associated with that type of product in the course of ordinary use of the product.
27      In its first complaint, the applicant maintains that there is a contradiction in the contested decision. On the one hand, in paragraph 17 of the contested decision, in assessing novelty for the purposes of Article 5(2) of Regulation No 6/2002, the Board of Appeal noted that there were differences between the designs at issue, consisting in the number of rectangular plates composing the seats and backs of the armchairs represented in them and in there being a space between the back and the seat in the earlier design, which could not be considered immaterial details, and from which it inferred that the designs at issue were not identical. On the other hand, the Board of Appeal disregarded those differences in assessing individual character for the purposes of Article 6 of Regulation No 6/2002 in stating, in paragraph 31 of the contested decision, that the only relevant difference between the designs at issue consisted in the fact that the contested design included three cushions, which were not present in the earlier design. According to the applicant, the differences taken into consideration in the assessment of the criterion of novelty have also to be taken into consideration in the assessment of the individual character of the contested design.
28      Under Article 5(2) of Regulation No 6/2002, ‘[d]esigns shall be deemed to be identical if their features differ only in immaterial details’. Under Article 6(1)(b) of Regulation No 6/2002, the individual character of a design falls to be assessed in the light of the overall impression produced on the informed user, which must be different from that produced by the earlier design.
29      The determination as to the novelty and that as to the individual character of a design are therefore based on different assessments. The fact that the differences referred to in paragraph 17 of the contested decision do not constitute immaterial details and are sufficient for the designs at issue to be found to be not identical does not preclude those differences from being insufficient for the designs at issue to produce different overall impressions.
30      In this connection, it must be pointed out that, contrary to what the applicant claims, the Board of Appeal took into consideration, in its assessment of the individual character of the contested design, the differences referred to in paragraph 17 of the contested decision. It took the view that those differences were slight, barely perceptible and considerably less striking than the overall impression produced by the numerous partially identical and/or strongly similar elements that it had found between the designs at issue.
31      The fact that the differences between the designs at issue referred to in paragraph 17 of the contested decision are slight, barely perceptible and do not result in different overall impressions being produced on the informed user is not inconsistent with the finding that such differences are sufficient for concluding that the designs at issue are not identical.
32      Accordingly, the applicant’s first complaint, concerning the existence of a contradiction in the contested decision, must be rejected.
33      In its second complaint, the applicant maintains that the Board of Appeal did not take into account the contested design as registered in assessing its individual character. It did not take account of the fact that the contested design includes cushions.
34      In this connection, it must be pointed out that, in the contested decision, the Board of Appeal observed that the only relevant difference between the designs at issue consisted in the fact that the contested design included three cushions, which were not present in the earlier design. It found, however, that the fact that the contested design included three cushions not included in the earlier design played only a marginal role as regards the overall impressions produced by the designs at issue. The Board of Appeal took the view that the cushions were a feature that the applicant had added to the armchair represented in the earlier design and that, even though the cushions had thus become an element of the contested design, it was a relatively marginal element, in the sense that the armchair produced, with or without the cushions, the same overall impression on the informed user.
35      It is apparent from the contested decision that, contrary to what the applicant claims, the Board of Appeal did indeed take account of the fact that the contested design included cushions and that the designs at issue were different because of the presence of cushions in the contested design. The Board of Appeal merely found that the presence of those cushions did not result in the contested design and the earlier design producing a different overall impression.
36      The applicant argues that the Board of Appeal was wrong to take the view that because the cushions were not a fixed element, they were merely an accessory. [The applicant argues that] whether the cushions are removable is irrelevant and that they are highly relevant to assessing the individual character of the contested design.
37      In the contested decision, the Board of Appeal took account of the fact that the cushions were not a fixed element, but elements that were easily separated from the main product, and that they were often sold and purchased separately, at a relatively low cost compared to that of the structure of an armchair. It inferred therefrom that those factors decreased the importance that could be attributed to the cushions in assessing the overall impression and that the informed user would attribute far more importance to the overall impression produced by the structures of the armchairs. The Board of Appeal added that the informed user might perceive the cushions as a mere optional accessory and that they could hardly be considered to be ‘a significant part of the design’.
38      The Board of Appeal was right in taking the view that, because they are not fixed, the informed user will perceive the cushions as less important and be more sensitive to the overall structure of armchairs. It found that the overall impression produced by the designs at issue was dominated by the structure of the armchairs itself and not by the cushions, which could be regarded as secondary elements. Contrary to what the applicant claims, it is not irrelevant to assessing the individual character of the contested design that the cushions are removable elements.
39      The applicant argues that, because it examined the contested design as if it did not have cushions, the Board of Appeal incorrectly took the view that there appeared to be a slight difference in the distance between the seat of the armchairs and the ground in the designs at issue, whereas that difference is significant.
40      It must be pointed out that the side views of the designs at issue indicate that the seats are not positioned at the mid-point of the rectangular frames forming the sides of the armchairs, but are positioned lower down. Accordingly, the armchairs represented in the designs at issue both have a low seat in relation to the overall structure of the armchair.
41      It is true that a more detailed examination of the designs at issue indicates that the seats are not positioned at exactly the same height. The fact remains, however, that the overall impression [produced by] the designs at issue is that they are armchairs with low seats and the Board of Appeal was therefore right in finding that the difference in the distance between the seat of the armchairs and the ground in the designs at issue was ‘slight’.
42      Contrary to what the applicant claims, that finding does not result from a failure to take account of the cushions that appear in the contested design, but from a comparison of the structure of the armchairs represented in the designs at issue. The fact that the addition of the cushions raises the seat of the armchair represented in the contested design is therefore irrelevant.
43      Accordingly, the applicant’s second complaint must be rejected.
44      In its third complaint, the applicant argues that the designs at issue produce different overall impressions.
45      In the first place, as regards the differences between the designs at issue, first, the applicant is wrong in claiming that it is clearly perceptible that the distance between the seat of the armchair and the ground in the contested design is greater than that in the earlier design. It is apparent from paragraph 41 above that the Board of Appeal was right in finding that the difference in the distance between the seat of the armchairs and the ground in the designs at issue was ‘slight’.
46      Secondly, the applicant’s claim that the armrests of the armchair represented in the contested design are [positioned well below] the back of the armchair is incorrect. It is clear from the contested design reproduced in paragraph 2 above that the armrests are on the same level as the upper limit of the back [of the armchair] and that only the backrest cushion extends above the armchair’s structure. The Board of Appeal was therefore right in finding that the fact that the armrests were on the same level as the upper limits of the backs of the armchairs constituted an element of similarity between the designs at issue.
47      Thirdly, the applicant claims that the fact that the backrest cushion represented in the contested design extends above the frame of the armchair means that it cannot be confused with a cube and that this is therefore a difference vis-à-vis the earlier design, which produces an impression of a perfect cube. In this connection, suffice it to state that the Board of Appeal did not base its assessment that the designs at issue produced the same overall impression on the finding that they both produced an impression of a perfect cube. Indeed, the Board of Appeal clearly rejected the applicant’s argument to that effect in the contested decision by stating that the impression of a perfect cube [allegedly produced by] the earlier design was not clearly apparent from the views [provided] of that design. Since that element was not referred to amongst the similarities taken into account by the Board of Appeal, that argument is ineffective.
48      Fourthly, the applicant confines itself to reiterating the differences between the designs at issue that were taken into account by the Board of Appeal, namely, that the contested design includes three cushions, which were not present in the earlier design, that the seats and backs of the designs at issue are composed of a different number of juxtaposed rectangular plates and that the earlier design has an open space between the seat and the back of the armchair.
49      It follows from the foregoing that the applicant has not shown that the Board of Appeal erred in its assessment of the differences between the designs at issue.
50      In the second place, as regards the elements of similarity between the designs at issue taken into account by the Board of Appeal, the applicant argues, first, that the rectangular overall structure of the contested design is called in question by the fact that the backrest cushion extends above the frame of the armchair and by the presence of a cylindrical cushion.
51      In this connection, the Board of Appeal found that the structure of the contested design was rectangular, as the applicant itself had stated, and that it was apparent from the views [provided] of the earlier design that it too had a rectangular structure in which the side of the armchair was longer than its front and its height. Accordingly, the Board of Appeal’s finding that the designs at issue had a ‘rectangular overall structure including [rectangular] frames as armrests’ concerns the structure of the armchairs only. The presence of cushions on that structure, in the contested design, does not alter the fact that it shares with the earlier design a structure formed by two rectangular frames composing the sides of the armchairs.
52      Secondly, the applicant claims that some similar elements taken into account by the Board of Appeal, namely, that the heights of the frames are smaller than the widths, the existence of flat seats, flat vertical backrests and rectangular plates juxtaposed on the seats, are not conclusive since they are common to a large number of armchairs.
53      Suffice it to state that the fact that elements are common to a large number of armchairs does not affect the finding that they are common to the armchairs represented in the designs at issue and that they therefore contribute to the same overall impression produced by them.
54      Thirdly, the applicant argues that the slightly separated juxtaposed rectangular plates on the seats are different in the designs at issue as regards their number, their width and the distance separating them, and that they are covered by cushions in the contested design.
55      It is true that a side view of the contested design indicates that, underneath the cushions, the seat of the armchair is composed of four plates. It can be distinguished in this respect from the earlier design by the fact that the seat of the armchair represented in the latter is composed of three plates.
56      Nevertheless, it must be pointed out that a part of a product represented in a design that is outside the user’s field of vision will have no great impact on how the design in question is perceived by that user (Wristwatch case, paragraph 19 above, paragraph 133). Accordingly, the fact that, underneath the cushions, the seat of the armchair represented in the contested design is composed of plates is of little importance to the overall impression produced on the informed user. The same is therefore true of the fact that the number of plates is different in each of the designs at issue.
57      Consequently, even though the Board of Appeal could correctly take into account as an element of similarity the fact that the seats of the armchairs represented in the designs at issue were composed of juxtaposed rectangular plates, that barely visible element is of little importance to the assessment of the overall impression produced by the contested design.
58      Fourthly, the applicant claims, wrongly, that the presence of a board below the plates on either side of the armchairs is called for by stability and structural requirements. Suffice it to point out that, in the present case, the Board of Appeal rightly found that the freedom of the designer was limited only by the fact that the armchairs have to be functional and include a seat, a backrest and two armrests. The applicant has not established that the presence of that board was a consequence of a technical constraint in constructing an armchair and the fact that many armchairs do not contain that board contradicts the applicant’s claim.
59      Fifthly and lastly, the applicant’s argument that the Board of Appeal stated, incorrectly, that the armrests of the armchairs were on the same level as the upper limits of the backs [of the armchairs] and that they were linked to them must be rejected. As stated in paragraph 46 above, it is clear from the designs at issue that the armrests of the armchairs are linked to the backs [of the armchairs], which is a structural element they have in common, and that only the cushion extends above the back of the armchair represented in the contested design.
60      It follows from the foregoing that the applicant has not shown that the Board of Appeal erred in its assessment of the elements of similarity between the designs at issue, nor, consequently, in finding that the designs at issue produced the same overall impression on the informed user. Accordingly, the applicant’s third complaint must be rejected.
61      The Board of Appeal did not err, therefore, in concluding that the contested design did not have individual character within the meaning of Article 6 of Regulation No 6/2002.
62      It follows from the foregoing that the single plea in law put forward by the applicant must be rejected.
63      In addition, it is appropriate to point out that, by its first and second heads of claim, the intervener contends, in essence, that the Court should dismiss the action. The intervener contends that the designs at issue are identical within the meaning of Article 5 of Regulation No 6/2002, on the ground that their features differ only in immaterial details. It must be held that, by those arguments, the intervener is disputing the Board of Appeal’s finding that the designs at issue are not identical and that it is contending that the Board of Appeal ought to have granted its application for a declaration of invalidity on the basis of Article 5 of Regulation No 6/2002 for the contested design’s lack of novelty. In so far as those arguments are to be understood as an independent plea in law based on Article 134(2) of the Rules of Procedure, it should be pointed out that that plea is incompatible with the form of order sought by the intervener and must be rejected, since the intervener has not applied for the annulment or alteration of the contested decision under Article 134(3) of the Rules of Procedure (see judgment of 21 October 2008 in Case T‑95/07 Aventis Pharma v OHIM – Nycomed (PRAZOL), paragraph 34, and the case-law cited).
64      It follows from the foregoing that the action must be dismissed.
Costs
65      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay OHIM’s costs, in accordance with the form of order sought by OHIM.
66      Since the intervener has not applied for the applicant to be ordered to pay the costs, it must bear its own costs, in accordance with Article 87(4) of the Rules of Procedure.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action.
2.      Orders Sachi Premium-Outdoor Furniture, Lda to pay its own costs and also the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
3.      Orders Gandia Blasco, SA to pay its own costs.
Van der Woude
Wiszniewska-Białecka
Ulloa Rubio
Delivered in open court in Luxembourg on 4 February 2014.
[Signatures]
* Language of the case: English.