ORDER OF THE GENERAL COURT (Fifth Chamber)
14 June 2021 (*)
(Community design – Invalidity proceedings – Registered Community design representing a protective cover for computer hardware – Ground for invalidity – Unauthorised use of a work protected under the copyright law of a Member State – Article 25(1)(f) of Regulation (EC) No 6/2002 – Request that witnesses be heard – Action manifestly lacking any foundation in law)
In Case T‑564/20,
TrekStor GmbH, established in Bensheim (Germany), represented by O. Spieker, A. Schönfleisch and N. Willich, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Zagg Inc., established in Midvale, Utah (United States), represented by T. Schmitz and M. Breuer, lawyers,
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 17 June 2020 (Case R 296/2019-3), relating to invalidity proceedings between TrekStor and Zagg,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann, President, O. Spineanu-Matei (Rapporteur) and R. Mastroianni, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 September 2020,
having regard to the response of EUIPO lodged at the Court Registry on 14 December 2020,
having regard to the response of the intervener lodged at the Court Registry on 4 December 2020,
makes the following
Order
Background to the dispute
1        On 10 January 2011, the intervener, Zagg Inc., 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 that is contested in the present case is represented in the following views:
3        The goods into which the contested design is intended to be incorporated are in Classes 14-02 and 14-99 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended, and correspond to the following description: ‘Protective covers for computer hardware, Keyboards’.
4        The contested design was registered under No 1253876-0002 and published in Community Designs Bulletin No 85/2011 of 12 April 2011.
5        On 26 September 2016, the applicant, TrekStor GmbH, lodged, pursuant to Article 52 of Regulation No 6/2002, an application for a declaration of invalidity of the contested design.
6        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(f) of Regulation No 6/2002, in that the contested design constituted an unauthorised use of a work protected by German copyright law.
7        In support of its application, the applicant submitted the following evidence:
–        a copy of an assignment of rights agreement, dated 5 July 2011 (‘the 2011 assignment agreement’), concerning an iPad case with an integral keyboard, stating that Speedy Mega Corporation Limited (‘Speedy Mega’) and Tosenta Technology (HK) Co. Limited (‘Tosenta’) assign all rights on, and related to, the device exclusively to the applicant. In addition, the agreement contains, in the annex thereto, drawings and images dated 14 and 16 December 2010, reproduced below:
–        an undated printout from the website ‘Trekstor.de’ showing the ‘iGear’ keyboard.
8        By decision of 7 December 2018, the Invalidity Division rejected the application for a declaration of invalidity.
9        On 5 February 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the Invalidity Division’s decision.
10      By decision of 17 June 2020 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal and confirmed the Invalidity Division’s decision. First, it considered that the applicant had not shown that there was a work protected by copyright. Next, regarding the applicable national law, the Board of Appeal considered that the applicant had not shown that the work enjoyed protection under German copyright law: the date or place of the first publication of the work was not stated and it was not possible to identify the holder of the alleged copyright. Lastly, the Board of Appeal rejected the request that witnesses be heard because the applicant had not provided an explanation as to why it had been unable to submit written witness statements or the missing documents during the procedure before EUIPO.
Forms of order sought
11      The applicant claims that the Court should annul the contested decision.
12      EUIPO and the intervener contend, in essence, that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
14      In the present case, the Court considers that it has sufficient information from the documents before it and has decided to give a decision on the action without taking further steps in the proceedings, even though one of the parties, in this instance, the applicant, has requested a hearing (see, to that effect, judgment of 6 June 2018, Apcoa Parking Holdings v EUIPO, C‑32/17 P, not published, EU:C:2018:396, paragraphs 22 to 24, and order of 12 September 2019, Puma v EUIPO (SOFTFOAM), T‑182/19, not published, EU:T:2019:604, paragraph 10 and the case-law cited).
15      In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 25(1)(f) of Regulation No 6/2002.
16      The applicant submits, first of all, that the evidence pre-dating the date on which the contested design was filed was sufficient to establish the existence of a work protected by copyright. In addition, it argues that the contested design is an illegitimate adaptation of the drawings and sketches of A., the creator, made between July and August 2010 and amended in December 2010, which enjoy protection under German copyright law. Next, it maintains that it holds the copyright in respect of the drawings and sketches originally made by A., who transferred his rights to Speedy Mega and Tosenta, which subsequently transferred all their rights to the applicant via the 2011 assignment agreement. Lastly, it alleges that, before dismissing the appeal, the Board of Appeal was under an obligation to hear the witnesses who had been proposed by the applicant.
17      EUIPO and the intervener contest the applicant’s arguments. In addition, EUIPO argues that the applicant’s single plea in law must be rejected as manifestly unfounded, as it does not challenge each pillar of the reasoning followed in the contested decision.
18      It is apparent from a combined reading of the provisions of Article 25(1)(f) and (3) of Regulation No 6/2002 and of Article 28(1)(b)(iii) of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Regulation No 6/2002 (OJ 2002 L 341, p. 28), first, that a Community design may be declared invalid where it constitutes an unauthorised use of a work protected under the copyright law of a Member State, secondly, that an application for a declaration of invalidity may be made solely by the holder of the copyright and, thirdly, that that application must contain the representation and particulars of the protected work on which it is based and particulars showing that the applicant for a declaration of invalidity is the holder of the copyright (judgments of 23 October 2013, Viejo Valle v OHIM – Établissements Coquet (Cup and saucer with grooves and soup dish with grooves), T‑566/11 and T‑567/11, EU:T:2013:549, paragraph 47, and of 24 September 2019, Piaggio & C. v EUIPO – Zhejiang Zhongneng Industry Group (Mopeds), T‑219/18, EU:T:2019:681, paragraph 99).
19      In that respect, as regards the third condition recalled in paragraph 18 above and the question whether the application for a declaration of invalidity filed by the applicant with EUIPO contained the representation and particulars of the protected work on which that application was based and which, according to the applicant, consisted of drawings and sketches made by A. between July and August 2010, the Board of Appeal found that the applicant had failed to identify the work protected by the copyright at issue.
20      First, the Board of Appeal considered that the applicant had limited its arguments to mere assertions without providing, either before the Invalidity Division or at the appeal stage, any of the drawings and sketches made by the alleged creator, A., during the summer of 2010 and in December 2010.
21      Second, the Board of Appeal found that the absence of those drawings and sketches meant it was unable to compare them with the drawings and images reproduced in the annex to the 2011 assignment agreement and verify the applicant’s assertion that they were ‘almost identical’.
22      Third, the Board of Appeal found that the 2011 assignment agreement, which was the sole piece of evidence submitted by the applicant to show that there was a work protected by copyright, was inconclusive. First of all, it noted that that agreement post-dated the date on which the contested design was filed and that, therefore, the drawings and images annexed to that agreement could not be considered to be earlier works. Next, it noted that the 2011 assignment agreement did not refer to copyright, but only to the provisions concerning designs. Lastly, it noted that the agreement itself did not mention the name of the creator, A., which appears in the text underneath some of the drawings.
23      Fourth, the Board of Appeal found that the existence of alternative designs did not mean that it could be ruled out that A.’s drawings and sketches were characterised by functional considerations. Moreover, according to the Board of Appeal, the applicant did not explain why the drawings and images annexed to the 2011 assignment agreement were capable of reaching the threshold that would allow them to be regarded as a work of art; nor did it produce any document to confirm that they were protected by copyright.
24      The applicant claims, first of all, that it provided sufficient evidence, pre-dating the date on which the contested design was filed, to establish the existence of a work which falls under German copyright. However, in order to challenge the Board of Appeal’s finding that the drawings and sketches made by A. were not produced at any stage of the procedure, the applicant merely repeats the arguments already made before the Board of Appeal, asserting that the application for a declaration of invalidity was based on the drawings and sketches made between July and August 2010. Moreover, the applicant does not challenge the Board of Appeal’s finding that those drawings or sketches should exist in written form, given that Speedy Mega and Tosenta had a contractual obligation to provide the applicant with all the further documents and instruments necessary to give full effect to the 2011 assignment agreement.
25      Next, the applicant submits that the drawings and sketches made between July and August 2010 were amended in the ‘final drawings’ of December 2010 with ‘minor changes’ concerning the components within the keyboard, which are not part of the contested design. However, those arguments have already been put forward before the Board of Appeal, which rejected them, finding that the absence of A.’s drawings and sketches meant it was unable to compare them with the drawings and images reproduced in the annex to the 2011 assignment agreement and verify whether they were ‘almost identical’ to the drawings and images annexed to the agreement. It is clear that the applicant does not raise any argument challenging the Board of Appeal’s reasoning in the contested decision.
26      In addition, the applicant asserts that A.’s copyright in respect of the drawings and sketches constitutes a right pre-dating the contested design for the purposes of Article 25(1)(f) of Regulation No 6/2002. However, it merely repeats the arguments it raised before the Board of Appeal, referring to the Invalidity Division’s decision, without challenging the Board of Appeal’s findings in the contested decision regarding the reasons why the Board of Appeal considered that the 2011 assignment agreement was not conclusive per se.
27      Lastly, the applicant submits that EUIPO failed to take account of the relatively low protection requirements under German copyright law and that A.’s drawings and sketches cannot be characterised exclusively by functional considerations on account of the existence of several designs for similar goods. However, the Board of Appeal has already rejected those arguments, relying on the judgment of 23 March 2017 (Case I-20 U 125/15) of the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) which, in proceedings between the applicant and the intervener relating to A.’s drawings and sketches, held that in order to claim protection as a work of art, it was not sufficient that the features of the product were not purely technical; rather, they had to be designed in such a way as to express the designer’s creative spirit in an original manner. In that regard, the Board of Appeal found that the applicant had not put forward any evidence to explain why the drawings and sketches were capable of reaching the threshold that would allow them to be regarded as a work of art, however high or low that threshold might be set. In addition, contrary to the applicant’s assertions, the Board of Appeal took account of its arguments relating to the existence of alternative designs and found that they did not mean that the appearance of a product had been dictated by anything other than technical considerations. It is clear that the applicant does not challenge the Board of Appeal’s findings regarding the protection requirements of German copyright law and the existence of alternative designs.
28      It follows from all of the foregoing that the applicant limits itself to repeating the arguments it raised before the Board of Appeal and does not put forward any arguments intended to call into question the reasoning of that Board of Appeal in the contested decision, recalled in paragraphs 20 to 23 above, or to show that the Board of Appeal incorrectly dismissed the appeal on the basis of the absence of evidence relating to the existence of a work protected by copyright. As a result, its arguments must be rejected as manifestly lacking any foundation in law.
29      Moreover, as regards the request that witnesses be heard, the applicant claims that, before dismissing the appeal, EUIPO was under an obligation to hear the witnesses who had been proposed by the applicant in accordance with the measure of inquiry provided for in Article 65(1)(d) of Regulation No 6/2002.
30      As is apparent from paragraphs 34 and 35 of the contested decision, the Board of Appeal held that there was no need to call the witnesses proposed by the applicant. It considered that the applicant could have used other means of evidence, such as written witness statements, for which it did not need the Board of Appeal’s permission, or could have set out the reasons which prevented it from submitting written evidence or the missing documents, such as the drawings and sketches made between July and August 2010. In addition, it found that the applicant’s observations could not be limited to subjective evaluations of the knowledge of the witnesses, without the submission of factual evidence.
31      In that regard, it should be borne in mind that, under Article 65(1)(d) of Regulation No 6/2002, the hearing of witnesses is a measure of inquiry which can be taken in any proceedings before EUIPO. It follows from that provision that although it is, admittedly, possible for parties to any proceedings before the departments of EUIPO to request or propose that witnesses be heard in order to prove events relevant to the case in question, Article 65(1)(d) of Regulation No 6/2002 does not impose any obligation on the departments of EUIPO to take such a measure following a request made by one of the parties before them.
32      The departments of EUIPO have a broad discretion to decide whether, in the context of proceedings before them, it is relevant to hear the parties or witnesses. Implementing such a measure of inquiry remains optional for those departments, which will do so only if they consider it appropriate; not automatically as a result of a request to that effect by a party (see, to that effect and by analogy, judgment of 12 November 2015, Société des produits Nestlé v OHIM – Terapia (ALETE), T‑544/14, not published, EU:T:2015:842, paragraphs 24 and 25 and the case-law cited).
33      Therefore, contrary to the applicant’s assertions, the Board of Appeal was not required to hear the proposed witnesses, but had a certain discretion in that regard, which it exercised in the present case.
34      In addition, it is clear that the applicant does not rely on any argument challenging the Board of Appeal’s findings as recalled in paragraph 30 above and, in particular, does not give any reason why it was not in a position to provide written evidence or the missing documents.
35      As a result, the applicant’s arguments regarding the Board of Appeal’s refusal to hear the persons proposed as witnesses can only be rejected as manifestly lacking any foundation in law.
36      Moreover, it should be noted that the conditions flowing from a combined reading of the provisions of Article 25(1)(f) and (3) of Regulation No 6/2002 and Article 28(1)(b)(iii) of Regulation No 2245/2002, cited in paragraph 18 above, are cumulative conditions. Therefore, the absence of one of them is sufficient to render Article 25(1)(f) of Regulation No 6/2002 inapplicable, without there being any need to examine whether the other conditions are satisfied.
37      Given that the applicant has not shown that the Board of Appeal was incorrect to find that one of the cumulative conditions for declaring that a Community design is invalid because of an unauthorised use of a work protected under the copyright law of a Member State had not been satisfied (see paragraph 28 above), there is no need to examine the arguments put forward by the applicant challenging the Board of Appeal’s findings relating to the other conditions cited in paragraph 18 above.
38      It follows from all the foregoing considerations that the applicant’s single plea in law must be rejected and, consequently, the action must be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
39      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
40      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 (Fifth Chamber)
hereby orders:
1.      The action is dismissed.
2.      TrekStor GmbH shall pay the costs.
Luxembourg, 14 June 2021.
E. Coulon
D. Spielmann
Registrar
President
*      Language of the case: English.