JUDGMENT OF THE GENERAL COURT (Second Chamber)
1 December 2021 (*)
(Community design – Invalidity proceedings – Registered Community design representing a doll’s head – Earlier design – Ground for invalidity – No individual character – Degree of freedom of the designer – No different overall impression – Articles 6 and 25(1)(b) of Regulation (EC) No 6/2002)
In Case T‑84/21,
Jieyang Defa Industry Co. Ltd, established in Jieyang (People’s Republic of China), represented by C. Bercial Arias and F. Codevelle, 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
Mattel, Inc., established in El Segundo, California (United States), represented by A. Pompe-Ciszewska and P. Mleczak, lawyers,
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 14 December 2020 (Case R 2021/2019-3), relating to invalidity proceedings between Mattel and Jieyang Defa Industry Co.,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović (Rapporteur), President, F. Schalin and P. Škvařilová-Pelzl, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 9 February 2021,
having regard to the response of EUIPO lodged at the Court Registry on 28 April 2021,
having regard to the response of the intervener lodged at the Court Registry on 22 April 2021,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 7 May 2014, the applicant, Jieyang Defa Industry Co. Ltd, 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). It claimed priority on the basis of German application No 402013101117.3, filed on 14 November 2013.
2        The Community design in respect of which registration was sought, which is contested in the present case, is represented in the following views:
1
2
3
4
5
6
7
3        The products in which the contested design is intended to be incorporated are in Class 21.01 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Doll’s heads, heads for dolls’.
4        The contested design was registered on 7 May 2014 as Community design No 2459701-0001 and published in Community Designs Bulletin
No 87/2014 of 13 May 2014.
5        On 4 August 2017, the intervener, Mattel, Inc., filed an application for a declaration of invalidity of the contested design, pursuant to Article 52 of Regulation No 6/2002.
6        The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4 to 6 of that regulation.
7        In support of its application for a declaration of invalidity, the intervener submitted that the contested design lacked novelty and individual character in relation to the earlier designs Defa Doll and Barbie CEO Sculpture. As evidence of disclosure of the earlier design Barbie CEO Sculpture, the intervener produced, inter alia, a copy of a 78-page Polish catalogue entitled ‘Barbie KATALOG Jesień/Zima 2008’ (Barbie catalogue, Autumn/Winter 2008) from the company Mattel Poland sp. z o.o., including, inter alia, the following image:
8        On 10 July 2019, the Cancellation Division upheld the application for a declaration of invalidity and declared the contested design invalid. It found that that design lacked individual character in relation to the earlier design Barbie CEO Sculpture.
9        On 10 September 2019, the applicant filed an appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Cancellation Division.
10      By decision of 14 December 2020 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal. In essence, it found that the contested design lacked individual character and that the overall impression produced on the informed user by the two designs was the same.
11      First, the Board of Appeal found that the items of evidence submitted by the intervener, including the Polish catalogue of 2008 (see paragraph 7 above), were distributed and that, consequently, the design displayed in the catalogue had been published, within the meaning of Article 7(1) of Regulation No 6/2002.
12      Secondly, the Board of Appeal took the view that the designer’s degree of freedom in developing dolls’ heads is wide and that that freedom was restricted only in so far as those heads had to follow the basic characteristics of a human being.
13      Thirdly, the Board of Appeal held that, given that a doll’s head forms an integral part of a doll, the informed user in the present case is any member of the general public, for example a child or an adult who buys the doll for his or her child or as a collector.
14      Fourthly, the Board of Appeal considered that what will strike the attention of the informed user is that both designs show a doll’s head with an oval-shaped face, the same facial characteristics and proportions, very similar make-up and the same expression. Thus, in view of the wide degree of freedom enjoyed by the designer, the differences between the designs at issue are insufficiently pronounced to produce a different overall impression.
Forms of order sought
15      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
16      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
17      The applicant relies, in essence, on a single plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4 and 6 of that regulation.
18      The applicant submits that the Board of Appeal erred in finding that the contested design was devoid of any distinctive character because of the disclosure of the earlier design and that the differences between the designs at issue were not decisive in the assessment of the individual character of the contested design. In particular, the applicant claims that, besides the fact that the designs at issue both concern made-up dolls representing a young woman, the facial features of the designs are sufficiently different to produce a different overall impression on the informed user. According to the applicant, the facial expression of the contested design is completely different from that of the face of the ‘Barbie doll’. In addition, the Board of Appeal did not take into account all the views protected by the contested design. Similarly, the applicant submits that the freedom of the designer in the present case is restricted because of the need to respond to market preferences from a marketing point of view.
19      EUIPO and the intervener dispute the applicant’s contentions.
20      Under Article 25(1)(b) of Regulation No 6/2002, a Community design may be declared invalid only, in particular, if it does not fulfil the requirements of Articles 4 to 9 of that regulation.
21      Under Article 4(1) of Regulation No 6/2002, a design is to be protected by a Community design to the extent that it is new and has individual character. According to Article 6(1)(b) of that regulation, a design is to be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing the application for registration or, if a priority is claimed, the date of priority. Article 6(2) of that regulation further provides that, in assessing individual character, the degree of freedom of the designer in developing the design is to be taken into consideration. Recital 14 of that regulation states that, when assessing the individual character of a design by reference to the existing design corpus, it is necessary to take into account 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.
22      According to the case-law, it follows from the foregoing provisions that 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 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 (Door hanger for vehicles), T‑74/18, EU:T:2019:417, paragraph 66 and the case-law cited).
23      It is in the light of those considerations that it is necessary to assess whether the overall impression produced by the contested design differs from that produced by the earlier design.
24      In the present case, the designs at issue are dolls’ heads, with the result that the sector to which they relate is that of toys.
The informed user
25      With regard to the interpretation of the concept of informed user, the status of ‘user’ implies that the person concerned uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended. The qualifier ‘informed’ suggests, in addition, 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 (judgment of 22 June 2010, Shenzhen Taiden v OHIM – Bosch Security Systems (Communications Equipment), T‑153/08, EU:T:2010:248, paragraphs 46 and 47; see also, to that effect, judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59).
26      The concept of ‘informed user’ must therefore be understood as a concept 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 in conflict, 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 personal experience or his 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).
27      In the present case, the Board of Appeal found, in paragraph 34 of the contested decision, that, given that a doll’s head forms an integral part of a doll, the informed user is any member of the general public, for example a child or an adult buying the doll for his or her child or to collect it. The informed user is familiar with the specific characteristics of those dolls and the corresponding dolls’ heads.
28      The Board of Appeal’s assessments, which, moreover, are not disputed by the parties, are free from error and must be upheld.
29      In that regard, it must be noted that the applicant, although it does not dispute the Board of Appeal’s definition of the informed user in the present case, submits that that definition should have led it to conclude that, because the informed user is familiar with the specific characteristics of those dolls and the corresponding dolls’ heads and on account of the relatively high degree of attention, the overall impression created on that user by the designs at issue ought to differ.
30      That argument will be examined in the section dealing with the assessment of the overall impression produced by the designs at issue.
The designer’s degree of freedom
31      The designer’s degree of freedom in developing a design is established, in particular, by 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 judgments of 10 September 2015, H&M Hennes & Mauritz v OHIM – Yves Saint Laurent (Handbags), T‑525/13, EU:T:2015:617, paragraph 28 and the case-law cited, and of 13 June 2019, Door hanger for vehicles, T‑74/18, EU:T:2019:417, paragraph 74 and the case-law cited).
32      Therefore, the greater the designer’s freedom in developing a design, the less likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression 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. Consequently, 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 (see judgment of 10 September 2015, Handbags, T‑525/13, EU:T:2015:617, paragraph 29 and the case-law cited).
33      In that regard, the Board of Appeal found, in paragraph 30 of the contested decision, that, in the present case, the designer enjoyed a wide degree of freedom in developing dolls’ heads and that that freedom was restricted only in so far as those heads had to follow the basic characteristics of a human being. It noted that there were different ways of designing the facial characteristics of dolls’ heads, inter alia, as regards their shape, their proportions, the shape of their facial characteristics or their make-up.
34      The applicant does not dispute the Board of Appeal’s finding in so far as it took the view that the designer’s freedom was restricted in the case of dolls’ head in that they should resemble a human head. On the other hand, it submits that the designer’s freedom in the present case is also limited by market preferences from a marketing point of view which results in the creation of a young girl with blue eyes and make-up. Contrary to the Board of Appeal’s findings, it is a very relevant factor which toy manufacturers must take into account when they design their products so as to succeed on the market in order to promote sales. Therefore, even if there is a certain degree of freedom for any kind of doll, that freedom is more restricted when the objective is to target the consumers of ‘fashion dolls’ conforming to certain beauty standards.
35      EUIPO and the intervener dispute the applicant’s arguments.
36      At the outset, it should be noted that the Board of Appeal dealt, in essence, with the applicant’s argument that the freedom of the designer is limited by the need to comply with beauty standards and market preferences.
37      In response to that argument, the Board of Appeal maintained that a general trend cannot be regarded as a factor which restricts the designer’s freedom. According to the Board of Appeal, it was necessary to distinguish between following a design trend and being required, by a regulation or out of functional necessity, to incorporate a particular element into a design. The Board of Appeal added that consumer or market preferences with regard to a particular shape or features did not fall within the category of restrictions on design freedom, the purpose of which is to ensure that objective and externally enforced limitations on the range of possible designs are recognised and taken into account in assessing individual character.
38      In that regard, it is necessary to point out, as do EUIPO and the intervener, that a general design trend cannot be regarded as a factor which restricts the designer’s freedom, since it is precisely that freedom on the part of the designer that allows him to discover new shapes and new trends or even to innovate in the context of an existing trend (judgments of 13 November 2012, Antrax It v OHIM – THC (Radiators for heating), T‑83/11 and T‑84/11, EU:T:2012:592, paragraph 95, and of 13 June 2019, Door hanger for vehicles, T‑74/18, EU:T:2019:417, paragraph 75).
39      In fact, 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, such a question is not relevant in 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 the aesthetic or commercial considerations (judgments of 22 June 2010, Communications Equipment, T‑153/08, EU:T:2010:248, paragraph 58, and of 13 June 2019, Door hanger for vehicles,
T‑74/18, EU:T:2019:417, paragraph 75).
40      It follows that the need for doll manufacturers to follow market trends in order to promote sales of the products concerned or to comply with beauty standards cannot be regarded as a factor which may limit the designer’s degree of freedom, within the meaning of the case-law cited in paragraph 31 above.
41      Therefore, the Board of Appeal was right to find that the designer enjoyed a wide degree of freedom in developing dolls’ heads and that that freedom was not limited by market preferences as regards the appearance of ‘fashion dolls’.
The comparison of the overall impressions produced by the designs at issue
42      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 judgments of 16 February 2017, Antrax It v EUIPO – Vasco Group
(Thermosiphons for radiators), T‑828/14 and
T‑829/14, EU:T:2017:87, paragraph 53 and the case-law cited, and of 13 June 2019, Door hanger for vehicles, T‑74/18, EU:T:2019:417, paragraph 83 and the case-law cited).
43      In the present case, the Board of Appeal held, in paragraph 38 of the contested decision, that the designs at issue had the following features in common: light-coloured skin; oval-shaped face; slightly curved brown eyebrows; blue-coloured, almond-shaped eyes with straight-looking black eyelashes; thin lips with a slight smile showing the teeth; a small, thin nose; and the position of those features.
44      As regards the differences between the designs at issue, the Board of Appeal noted that the contested design merely showed the hairline, but did not have hair, whereas the earlier design had blond hair. As regards the hole present in the head of the contested design, it cannot contribute significantly to the overall impression because the informed user knows that the purpose of the hole is to fix the head to the doll’s body. Likewise, in the opinion of the Board of Appeal, the informed user will give less importance to the differences in the shape of the skull and the absence of hair and presence of a hairline because he or she is aware that the doll’s head will be covered by hair. As regards the ears, which are not visible in the earlier design, the Board of Appeal took the view that that difference will have little impact on the informed user and, in any event, is not sufficient to offset the features which the designs at issue have in common. Similarly, as regards the alleged difference in the make-up, the Board of Appeal found that it was not sufficient to produce distinct overall impressions of the designs at issue on the informed user.
45      Thus, according to the Board of Appeal, taking into account also the designer’s wide freedom in developing dolls’ heads as an integral part of dolls, the differences are insufficiently pronounced to produce on the informed user a different overall impression of the contested design from that produced on such a user by the prior design.
46      The applicant submits that the facial features of the designs at issue are sufficiently different to produce a different overall impression on the informed user. According to the applicant, the shape of the face and the eyebrows are different and the eyes, although blue, do not have the same shape. The eyes of the contested design are bigger and slender with noticeable blue and pink eye shadow. Similarly, the contested design has an upturned and smaller nose than that of the earlier design, which is more pointed. The applicant claims that the Board of Appeal did not take into account all the views protected by the contested design and that the differences between the designs at issue are considerable when the perspective view is compared with the earlier design. In short, apart from the fact that the designs at issue correspond to a made-up doll with blue eyes, there are significant differences in the shape and facial features which make the dolls’ heads sufficiently different from each other to be capable of creating a different impression on the informed user. The applicant submits that it is undeniable that there are other types of dolls, but that, on the market for ‘fashion dolls’, it is quite common to find dolls with the appearance of a young woman with the same characteristics corresponding to generally accepted beauty standards. It adds that the contested design is only a head without hair which can be used with different colours and different types of hair. Lastly, the applicant submits that an informed user who is familiar with the specific characteristics of dolls and dolls’ heads will easily perceive the differences, namely the very different facial expression of the designs at issue.
47      EUIPO and the intervener call into question the applicant’s claims.
48      As is apparent from paragraph 43 above, the Board of Appeal considered, in paragraph 38 of the contested decision, that the designs at issue had the following features in common: the colour of the skin; the shape of the face; the shape and colour of the eyebrows, eyes and eyelashes; thin lips with the same smile; a thin nose; and the position of all of those features. That assessment is correct.
49      In particular, it should be noted that all of the features referred to in paragraph 48 above and their positioning contribute to the creation of the impression of an identical face in the designs at issue, as the Board of Appeal correctly pointed out in paragraph 41 of the contested decision.
50      Thus, the Board of Appeal was entitled to take the view that the attention of the informed user will be drawn to the fact that the designs at issue showed dolls’ heads, the faces of which had an oval shape and identical features and proportions, very similar make-up and the same expression.
51      Therefore, it must be held that, for the reasons set out above, the designs at issue do not produce a different overall impression on the informed user.
52      That finding cannot reasonably be called into question by the arguments put forward by the applicant.
53      First, as regards the applicant’s claim that the Board of Appeal did not take into account all the views of the contested design, it should be noted that the Board of Appeal did indeed take account of all the views of that design. In paragraph 41 of the contested decision, it noted, first, that the hole at the base of the head of the contested design cannot contribute significantly to the overall impression, because the informed user was aware that the purpose of that hole was to fix the head to the doll’s body and, secondly, that that user will attach less importance to the differences in the shape of the skull, the absence of hair and to the presence of the hairline, because he or she is aware that the doll’s head will be covered by hair. As regards the ears, which are particularly visible in views Nos 3 and 4 of the contested design, the Board of Appeal stated that they were not visible on the earlier design, but that that difference will have little impact on the informed user and, in any event, could not outweigh the coincidences produced by the identical features.
54      In that regard, it must be borne in mind, as observed by the intervener, that the fact that a characteristic of a design is visible is an essential feature of that protection. It is stated in recital 12 of Regulation No 6/2002 that the protection of designs should not be extended to those component parts which are not visible during normal use of a product, nor to those features of such part which are not visible when the part is mounted and that those characteristics should not, for those reasons, be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection (judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 63).
55      In the present case, without that assessment being called into question by the applicant and as, in essence, the Board of Appeal held, the shape of the skull and the hole at the base of the head will not be visible in the contested design during its normal use.
56      It is true that the applicant submits that the contested design ‘is only a head without hair’. However, the fact that it adds, in that regard, that that design may be used with different colours and different hair types indicates that it shares the view of the Board of Appeal that the shape of the skull will be covered by hair and, consequently, will not be visible during normal use of the product in which the design will be incorporated.
57      As regards the argument that the contested design may be used with different colours or types of hair, clearly the Board of Appeal did not maintain that the two designs coincide in the colour or type of hair used. It carried out a global assessment of those designs taking into account the part of the doll’s head that was not or would not be covered by hair, so that the applicant’s argument relating to the different colours and different kinds of hair used is, in any event, ineffective in the present case.
58      Secondly, as regards the other differences alleged by the applicant, namely the shape of the face, the eyebrows, the shape of the eyes and that of the nose, it must be held that those differences, even if they exist, remain insufficiently marked to affect the overall impression of the designs at issue and, therefore, are not such as to call into question the Board of Appeal’s conclusion.
59      In particular, it should be noted that no notable difference as regards the shape of the face, the eyebrows and the nose between the designs at issue can be found, in the present case, contrary to what is maintained by the applicant.
60      As regards the shape of the eyes and their make-up, it must be held, as did EUIPO, that they are minor differences which do not affect the expression of the two dolls’ heads.
61      Those differences cannot therefore dispel the impression of ‘déjà vu’ conveyed by the designs at issue, having regard to their common elements, which form part of their most visible and most important elements (see, to that effect, judgment of 13 June 2019, Door hanger for vehicles, T‑74/18, EU:T:2019:417, paragraph 91
and the case-law cited).
62      Thirdly, concerning the applicant’s argument that the overall impression produced by the designs at issue on the informed user is different because of his experience and level of attention (see paragraph 29 above), it should be recalled that,
in spite of his relatively high level of attention, the informed user does not observe in detail the minimal differences liable to exist between the designs at issue (judgment of 13 June 2019, Door hanger for vehicles, T‑74/18, EU:T:2019:417, paragraph 90). Accordingly, the applicant’s argument must be rejected.
63      Fourthly, as regards the impact of the designer’s degree of freedom on the assessment of overall impressions when ‘fashion dolls’ which comply with current beauty standards
are created, in the present case, it must be borne in mind, first, that market preferences are not regarded as aspects limiting the designer’s freedom (see paragraph 40 above) and, secondly, it must be noted that, in any event, the objective of creating an attractive doll cannot require the reproduction of the facial expression of the earlier design.
64      In that regard, it must be added that, according to the case-law, the factor relating to the designer’s freedom in developing the design at issue cannot on its own determine the assessment of the individual character of a design, but it may serve to moderate that assessment (see judgment of 13 June 2019, Door hanger for vehicles, T‑74/18, EU:T:2019:417, paragraph 76 and the case-law cited). In the present case, the Board of Appeal was right to find that the degree of freedom of the designer was high.
65      It follows that the Board of Appeal was right to find that the contested design lacked individual character within the meaning of Article 6 of Regulation No 6/2002.
66      In the light of all the foregoing considerations, the single plea in law must be rejected and the action dismissed in its entirety.
Costs
67      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.
68      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 (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Jieyang Defa Industry Co. Ltd to pay the costs.
Tomljenović
Schalin
Škvařilová-Pelzl
Delivered in open court in Luxembourg on 1 December 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.