JUDGMENT OF THE GENERAL COURT (Second Chamber)
23 October 2018 (*)
(Community design — Invalidity proceedings — Registered Community design representing a cot bumper — Examination by the Board of Appeal of its own motion of the facts constituting disclosure — Principle of functional continuity — Insufficient evidence to establish disclosure)
In Case T‑672/17,
Mamas and Papas Ltd, established in Huddersfield (United Kingdom), represented by J. Reid, Barrister, and by B. Whitehead, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, D. Walicka and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Jane Wall-Budden, established in Byfleet (United Kingdom),
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 25 July 2017 (Case R 208/2016-3), relating to invalidity proceedings between Mamas and Papas and Jane Wall-Budden,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, F. Schalin and M.J. Costeira (Rapporteur), Judges,
Registrar: I. Dragan,
having regard to the application lodged at the Court Registry on 25 September 2017,
having regard to the response lodged at the Court Registry on 20 December 2017,
further to the hearing on 26 June 2018,
gives the following
Judgment
Background to the dispute
1        Jane Wall-Budden is the holder of the Community design filed with the Office of the European Union for Intellectual Property (EUIPO) on 18 August 2010 and registered under number 1230460-0001 (‘the contested design’) pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
2        The contested design is represented in the following seven coloured views:
3        The contested design is intended to be incorporated into cot bumpers, which are in Class 06-06 of the Locarno Agreement establishing an International Classification for Industrial Designs of 8 October 1968, as amended.
4        On 12 January 2015, the applicant, Mamas & Papas Limited, filed an application for a declaration of invalidity relating to the contested design on the basis of Article 25(1)(b) of Regulation No 6/2002, asserting, first, that the registered Community design lacks novelty and individual character and, second, that it differs from the previous state of the art only in features which are solely dictated by its technical function.
5        In support of its arguments, the applicant submitted, inter alia, images of an earlier design, Bumpster I.
6        By decision of 3 December 2015, the Invalidity Division rejected the application for a declaration of invalidity.
7        On 29 January 2016, the applicant filed a notice of appeal, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Invalidity Division.
8        By decision of 25 July 2017 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal.
9        In the first place, the Board of Appeal found that the applicant had not adduced solid and objective evidence of the disclosure of the earlier design Bumpster I. In addition, it stated that the fact that the holder of the contested design has not challenged the disclosure of the product Bumpster I cannot discharge the applicant from that obligation to adduce proof nor compensate for the lack of evidence of the disclosure.
10      In the second place, the Board of Appeal found that cot bumpers were not component parts of complex products within the meaning of Article 4(2) of Regulation No 6/2002, but mere accessories which may be added to the bars of a cot, so that all the features of the designs at issue must be taken into account for the purposes of assessing the individual character of the contested design.
11      In the third place, the Board of Appeal found that the informed user to be taken into account in this case was any person who is familiar with cot bumpers and protectors used with baby cots.
12      In the fourth place, the Board of Appeal found, in essence, that having regard to the intended purpose of the product in question, the freedom of the designer was limited to the measurements and material used for padding and the cloth, the pattern and colour of the cloth and the method of fastening the cot bumper to the cot bars.
13      In the fifth place, the Board of Appeal found, in essence, that having regard to the designer’s degree of freedom, the contested design produced on the informed user, taking into account its additional hook-and-loop fastener, a different overall impression from that produced by the earlier design.
Forms of order sought
14      The applicant claims that the Court should:
–        annul the contested decision;
–        declare the contested design invalid;
–        order the holder of the contested design to pay the costs incurred by the applicant in the invalidity proceedings and the appeal proceedings.
15      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the document submitted at the hearing
16      At the hearing, the applicant applied to the Court for leave to place on the case file the photocopy of an extract from a legal text.
17      The Court finds that the document in question is a new element presenting an academic opinion on civil and criminal procedural rules on the admission of evidence before the courts of common law.
18      It should be noted that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO, within the meaning of Article 61 of Regulation No 6/2002. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it.
19      However, it is apparent from the case-law that neither the parties nor the Court itself can be precluded from drawing on national legislation, case-law or academic writing for the purposes of interpreting national law to which EU law makes reference, where it is not alleged that the Board of Appeal failed to take the factual aspects of a specific national judgment into account, but rather reliance is placed on judgments or academic writing in support of a plea alleging that the Board of Appeal misapplied a provision of national law (see judgment of 28 October 2015, Rot Front v OHIM — Rakhat (Маска), T‑96/13, EU:T:2015:813, paragraph 15 and the case-law cited).
20      It follows that the document produced at the hearing by the applicant must be considered admissible.
Substance
21      In support of the action, the applicant relies on four pleas in law.
22      The first plea alleges infringement of Article 7(1) of Regulation No 6/2002. The second plea alleges infringement of Articles 3(b) and (c) and 4(2) of Regulation No 6/2002. The third plea alleges infringement of Article 6 of Regulation No 6/2002. The fourth plea alleges infringement of Article 8(1) of Regulation No 6/2002.
The first plea, alleging infringement of Article 7(1) of Regulation No 6/2002
23      The first plea is divided, in essence, into two complaints. The first complaint relates to the examination by the Board of Appeal of the facts constituting disclosure. The second complaint relates to the incorrect assessment by the Board of Appeal of the evidence produced by the applicant for the purposes of establishing the facts constituting disclosure.
–       Complaint relating to the examination of the facts constituting disclosure by the Board of Appeal
24      The applicant submits, on the basis of Article 63(1) of Regulation No 6/2002, that the Board of Appeal was not entitled to conclude that the evidence it submitted was insufficient to establish that the product Bumpster I corresponded to the previous state of the art within the meaning of Article 7(1) of Regulation No 6/2002, since that claim had not been called into question during the proceedings by the holder of the contested design.
25      EUIPO disputes the applicant’s arguments.
26      In the first place, it should be noted that, under Article 4(1) of Regulation No 6/2002, a design shall be protected by a Community design to the extent that it is new and has individual character.
27      Article 5 of Regulation No 6/2002 states that a design shall be considered to be new if no identical design has been made available to the public.
28      Article 6 of Regulation No 6/2002 states that a design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public.
29      The novelty and individual character of a Community design must therefore be examined at its date of filing or, where applicable, the date of priority, in the light of the relevant earlier designs.
30      It follows that the question relating to the disclosure of an earlier design is a key issue, whose resolution at the outset is necessary for the correct application of Articles 5 and 6 of Regulation No 6/2002.
31      As a consequence, that question may be ruled on by EUIPO even when it has not been raised by the parties (see, to that effect and by analogy, judgment of 1 February 2005, SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 21 and the case-law cited).
32      In the second place, it should be noted that, in accordance with Article 63(1) of Regulation No 6/2002, in proceedings for a declaration of invalidity, the examination by EUIPO is restricted to the facts, evidence and arguments provided by the parties and the relief sought. That provision relates, inter alia, to the factual basis of decisions by EUIPO, that is, the facts and evidence on which those decisions may be validly based. Thus, the Board of Appeal, when hearing an appeal against a decision terminating proceedings for a declaration of invalidity, may base its decision only on the facts and evidence submitted by the parties (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, paragraph 31 and the case-law cited).
33      However, that does not mean that EUIPO is required to accept that points put forward by one party and not challenged by the other party to the proceedings are established. That provision binds EUIPO only with regard to the facts, evidence and arguments on which its decision is based (see, to that effect and by analogy, judgment of 24 September 2008, Anvil Knitwear v OHIM — Aprile e Aprile (Aprile), T‑179/07, not published, EU:T:2008:401, paragraph 72).
34      In the present case, the applicant maintains that, in so far as the holder of the contested design did not call into question during the proceedings the claim that the product Bumpster I corresponded to the previous state of the art, the Board of Appeal was not entitled to examine that claim.
35      Such a line of argument misconstrues the meaning of Article 63 of Regulation No 6/2002. As is apparent from paragraphs 31 to 33 above, while that provision precludes EUIPO from taking into consideration facts which were not put forward by the parties, with the exception of facts which are well known, it does not prevent it, on the basis of its assessment of the facts actually put forward by one of the parties, from arriving at a finding which is different from that desired by the party in question (see, to that effect and by analogy, judgment of 24 September 2008, Aprile, T‑179/07, not published, EU:T:2008:401, paragraph 75).
36      Disclosure within the meaning of Article 7(1) of Regulation No 6/2002 does not, as such, constitute a fact within the meaning of Article 63(1) of Regulation No 6/2002, but the result of a factual assessment (see, to that effect and by analogy, judgment of 24 September 2008, Aprile, T‑179/07, not published, EU:T:2008:401, paragraph 76), EUIPO being required to examine all evidence submitted in order to establish whether it actually proves disclosure of the earlier design (see judgment of 13 December 2017, Delfin Wellness v EUIPO — Laher (Infrared cabins and saunas), T‑114/16, not published, EU:T:2017:899, paragraph 47 and the case-law cited).
37      It follows that EUIPO was entitled to arrive at a finding which is different from that sought by the parties, provided that that finding is based on an assessment of the facts and evidence presented by the parties.
38      That finding cannot be called into question by the applicant’s argument that the Invalidity Division accepted that the product Bumpster I corresponded to the previous state of the art.
39      It should be noted that it is apparent from well-established case-law that there is continuity in terms of their functions between the different units of EUIPO, on the one hand, and the Boards of Appeal, on the other. It follows from that functional continuity between the departments of EUIPO that, in the context of the review which the Boards of Appeal must undertake of the decisions taken by the units of EUIPO which heard the application at first instance, the Boards of Appeal are required to base their decisions on all the matters of fact and of law which the parties put forward, either in the proceedings before the department which heard the application at first instance or in the appeal. Thus, by virtue of the devolutive effect of appeal proceedings, the review by the Boards of Appeal requires a reappraisal of the dispute as a whole, and the Boards of Appeal must re-examine in full the initial application and take into account evidence produced in due time (see judgment of 25 April 2013, Bell & Ross v OHIM — KIN (Wristwatch case), T‑80/10, not published, EU:T:2013:214, paragraphs 44 and 45 and the case-law cited).
40      It follows from all of the foregoing considerations that the first complaint must be rejected as unfounded.
–       Complaint concerning the erroneous assessment of the evidence produced by the applicant to establish disclosure
41      The applicant submits, in essence, that the Board of Appeal wrongly concluded that the evidence submitted was insufficient to establish that the product Bumpster I corresponded to the previous state of the art. Furthermore, the applicant argues, first, that the holder of the contested design did not, during the proceedings, challenge disclosure of that product. Second, the Invalidity Division accepted the disclosure of the product at paragraph 14 of its decision.
42      EUIPO disputes the applicant’s arguments.
43      At the outset, it should be noted that Article 7(1) of Regulation No 6/2002 provides, inter alia, that a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b), as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union.
44      According to settled case-law, a design is therefore deemed to have been made available once the party asserting it has proven the events constituting disclosure. In order to refute that presumption, the party challenging the disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those events from becoming known in the normal course of business to the circles specialised in the sector concerned (judgment of 21 May 2015, Senz Technologies v OHIM — Impliva (Umbrellas), T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 26).
45      Commission Regulation (EC) No 2245/2002 of 21 October 2002 laying down detailed rules for the application of Council Regulation No 6/2002 on Community designs (OJ 2002 L 341, p. 28) does not contain any indications as to the evidence of disclosure of the earlier design to be given by the applicant for a declaration of invalidity. In particular, Article 28(1)(b)(v) of that regulation merely requires that where the application for invalidity is based, in particular, on the lack of novelty of the Community design for which protection is claimed, it must contain the indication and the reproduction of the invalidity applicant’s design that could form an obstacle to the novelty or individual character of the registered Community design for which protection is claimed,
as well as documents proving the previous disclosure of the earlier design (see judgment of 14 July 2016, Thun 1794 v EUIPO — Adekor (Decorative graphical symbols), T‑420/15, not published, EU:T:2016:410, paragraph 26 and the case-law cited).
46      Moreover, neither Regulation No 6/2002 nor Regulation No 2245/2002 specifies a compulsory form of evidence to be lodged by the invalidity applicant to prove the disclosure of his design before the date of filing of the application for registration of the design for which protection is claimed. Thus, Article 28(1)(b)(v) and (vi) of Regulation No 2245/2002 merely requires that the application for a declaration of invalidity contains ‘documents proving the existence [of the earlier design]’ as well as ‘an indication of the facts, evidence and arguments submitted in support of the grounds’. Equally, Article 65(1) of Regulation No 6/2002 provides only a non-exhaustive list of possible measures of inquiry before EUIPO (see judgment of 14 July 2016, Decorative graphical symbols, T‑420/15, not published, EU:T:2016:410, paragraph 26 and the case-law cited).
47      It follows that, first, the applicant for a declaration of invalidity is free to choose the evidence which it considers useful to submit to EUIPO in support of its application for a declaration of invalidity and, second, EUIPO is required to examine all evidence submitted in order to establish whether that evidence actually proves disclosure of the earlier design (see judgment of 14 July 2016, Decorative graphical symbols, T‑420/15, not published, EU:T:2016:410, paragraph 26 and the case-law cited).
48      Therefore, in the course of the examination of the lack of novelty of a design, an overall assessment must be carried out which takes into account all the relevant factors in the particular case. Moreover, the disclosure of an earlier design cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence that proves effective disclosure of the earlier design on the market. In addition, the elements of evidence provided by the invalidity applicant must be assessed in relation to each other. Whilst some of that evidence might be insufficient on its own to prove the disclosure of an earlier design, the fact remains that, when combined or read in conjunction with other documents or information, it may nevertheless contribute to establishing disclosure. Lastly, in order to assess the evidential value of a document, it is necessary to verify the plausibility and the accuracy of the information which that document contains. Account must be taken of, inter alia, the origin of the document, the circumstances of its preparation and its recipient, and whether it seems from the content to be sensible and reliable (see judgment of 14 July 2016, Decorative graphical symbols, T‑420/15, not published, EU:T:2016:410, paragraph 27 and the case-law cited).
49      The question whether the Board of Appeal was wrong to hold that the evidence submitted by the applicant was insufficient to prove disclosure of the earlier design Bumpster I must be examined in the light of those considerations.
50      In the present case, the applicant produced, by way of proof of disclosure, first, a letter dated 18 June 2014 from the holder of the contested design and, second, draft particulars of infringement proceedings against it indicated in that letter and the annexes thereto.
51      After having examined those documents, the Board of Appeal found, in essence, that the evidence submitted by the applicant did not establish that the product Bumpster I, and therefore the earlier design relied on, had been disclosed before the date of filing of the application for registration of the contested design.
52      More specifically, the Board of Appeal found that, first, in the absence of additional information, evidence of the disclosure could not be established solely on the basis of the documents submitted by the applicant. Second, the fact that the holder of the contested design did not call into question, during the proceedings, the disclosure of the product Bumpster I could not discharge the applicant from its obligation to adduce proof, nor compensate for the lack of evidence of the disclosure.
53      Contrary to what the applicant claims, it is necessary to uphold that finding of the Board of Appeal.
54      As EUIPO points out in its response, the applicant has not adduced any solid, objective evidence of effective disclosure of the earlier design on the market.
55      In that regard, it should be noted, as the Board of Appeal found that, in the first place, the applicant has put forward as evidence only the letter of 18 June 2014 from the holder of the contested design and the draft particulars of infringement proceedings against it referred to in that letter and the annexes thereto.
56      In the second place, the evidence of the date of disclosure of the product Bumpster I was based solely on the claim of the holder of the contested design contained, first, in the draft particulars of infringement proceedings against the applicant and, second, in its response before the Invalidity Division.
57      It should be noted that it is apparent from the file of the proceedings before EUIPO that the photographs submitted by the applicant contained no indication regarding the date of disclosure of the product Bumpster I, or the place and means of its disclosure.
58      In addition, as EUIPO correctly states in its response, the evidential value of the information contained in the draft particulars of infringement proceedings against the applicant is uncertain, having regard to the requirements of the case-law referred to in paragraph 48 above. That information is derived from the draft particulars of infringement proceedings of the holder of the contested design against the applicant, following an alleged infringement by the applicant of the product Bumpster I. However, the holder of the contested design had, in this case, a clear interest in asserting acquired rights as soon as possible in relation to the applicant. In addition, it should be noted that, first, the draft particulars of infringement proceedings refer to Bumpster products and not to the product Bumpster I, so it is not possible to know whether the information referred to in that draft specifically concerns the product Bumpster I.
59      Second, that information, in so far as it is not derived from an independent source, but from the holder of the contested design, cannot, in any event, suffice in itself to prove the disclosure of the earlier design (see, to that effect and by analogy, judgment of 18 November 2015, Liu v OHIM — DSN Marketing(Case for a portable computer), T‑813/14, not published, EU:T:2015:868, paragraph 29 and the case-law cited).
60      In the third place, the fact that the holder of the contested design has not challenged the disclosure of the product, in the context of its submissions in reply before the Invalidity Division, cannot strengthen the evidential value of the documents produced by the applicant or compensate for its lack of evidence. Disclosure cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient disclosure of the earlier design (see judgment of 13 December 2017, Infrared cabins and saunas, T‑114/16, not published, EU:T:2017:899, paragraph 48 and the case-law cited).
61      It follows that, in the light of the foregoing considerations, the Board of Appeal was right to find that the evidence submitted by the applicant did not prove the disclosure of the earlier design Bumpster I.
62      The second complaint must therefore be rejected as unfounded and, consequently, the first plea in its entirety.
63      It must therefore be concluded that the action must be dismissed as unfounded, without it being necessary (i) to consider the other pleas in the application, since, in order to challenge the validity of a Community design on the ground of its lack of novelty or individual character, it is necessary to prove an earlier design which is identical or produces a similar overall impression, has been made available to the public before the filing of the application for registration or, if a priority is claimed, the date of priority and (ii) to rule on the admissibility, disputed by EUIPO, of the second head of claim in the application, seeking annulment of the contested design.
Costs
64      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
65      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Mamas and Papas Ltd to bear the costs.
Prek
Schalin
Costeira
Delivered in open court in Luxembourg on 23 October 2018.
E. Coulon
M. Prek
Registrar
President
*      Language of the case: English.