JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

21 April 2021 ( *1 )

(Community design – Invalidity proceedings – Registered Community design representing a beverage bottle – Prior international design – Ground for invalidity – Conflict with a prior design – Individual character – Informed user – Degree of freedom of the designer – Different overall impression – Article 6 and Article 25(1)(d)(iii) of Regulation (EC) No 6/2002)

In Case T‑326/20,

Bibita Group, established in Tirana (Albania), represented by C. Seyfert, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė and J. Crespo Carrillo, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Benkomers OOD, established in Sofia (Bulgaria),

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 27 April 2020 (Case R 1070/2018‑3), relating to invalidity proceedings between Bibita Group and Benkomers,

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 27 May 2020,

having regard to the response lodged at the Court Registry on 27 July 2020,

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 ( 1 )

Background to the dispute

1 On 13 March 2017, Benkomers OOD 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), as amended.

2 The Community design in respect of which registration was sought and which is contested in the present case is represented in the following views:

3 The products to which the design is intended to be applied are in Class 09-01 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Beverage bottles’. …

5 On 24 July 2017, the applicant, Bibita Group, filed an application for a declaration of invalidity of the contested design pursuant to Article 52 of Regulation No 6/2002.

6 The ground relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(d)(iii) of Regulation No 6/2002.

7 The applicant submitted in its application for a declaration of invalidity that, since, in the context of Article 25(1)(d) of Regulation No 6/2002, the same criteria as for the assessment of individual character under Article 25(1)(b), read in conjunction with Article 6 of that regulation, should be applied, the contested design lacked individual character in relation to the design that formed the subject of international registration No 095336, of which it was the holder, which had been protected from a date prior to the application for registration of the contested design. The prior international design is represented below: …

Forms of order sought

17 The applicant claims that the Court should: – annul the contested decision and, accordingly, declare the contested design invalid; – order EUIPO and the other party to the proceedings before EUIPO to pay the costs of the proceedings before the Board of Appeal, in accordance with Article 190 of the Rules of Procedure of the General Court; – order EUIPO to pay the entirety of the costs of the present proceedings.

18 EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs.

Law

…

Substance

24 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 25(1)(d)(iii) of Regulation No 6/2002.

25 EUIPO disputes all the applicant’s arguments.

The fact that the design relied on in support of the application for a declaration of invalidity is a prior design and the concept of conflict within the meaning of Article 25(1)(d)(iii) of Regulation No 6/2002

…

29 In the second place, since the concept of conflict within the meaning of Article 25(1)(d)(iii) of Regulation No 6/2002 is not defined as such in that regulation, account must be taken of the interpretation provided by the case-law.

30 For the purposes of the interpretation of Article 25(1)(d) of Regulation No 6/2002, it must be recalled that, in accordance with Article 10 of that regulation, the scope of the protection conferred by a design is to include any design which does not produce on the informed user a different overall impression and that, in assessing the scope of that protection, the degree of freedom of the designer in developing his or her design is to be taken into consideration.

31 Consequently, Article 25(1)(d) of Regulation No 6/2002 must be interpreted as meaning that a Community design is in conflict with a prior design when, taking into consideration the freedom of the designer in developing the Community design, that design does not produce on the informed user a different overall impression from that produced by the prior design relied on (judgment of 18 March 2010, Grupo Promer Mon Graphic v OHIM – PepsiCo (Representation of a circular promotional item), T‑9/07, EU:T:2010:96, paragraph 52).

32 That interpretation of Article 25(1)(d) of Regulation No 6/2002 is the only one which can ensure that the rights of the holder of a prior design that is referred to in that provision is protected against any infringement of the design resulting from the coexistence of a subsequent Community design that produces the same overall impression on the informed user. If Article 25(1)(d) of Regulation No 6/2002 were not interpreted in that way, the holder of an earlier right would be precluded from applying for a declaration of invalidity in respect of a subsequent Community design that produces the same overall impression, and deprived of the actual protection conferred by his or her design under Article 10 of Regulation No 6/2002 (judgment of 18 March 2010, Representation of a circular promotional item, T‑9/07, EU:T:2010:96, paragraph 53).

33 The Board of Appeal was therefore fully entitled to adopt such an interpretation in paragraph 23 of the contested decision, finding, like the Invalidity Division found, that a conflict arose between two designs when they produced the same overall impression on the informed user, and that in that connection the degree of freedom of the designer in developing the contested design had to be taken into account.

The alleged ‘particularly broad’ protection of the prior design

34 In the first place, the applicant claims that the prior design enjoys particularly broad protection under Article 6 of Regulation No 6/2002, read in conjunction with recital 14 of that regulation. …

37 Despite the reference in recital 14 of Regulation No 6/2002 to the existence of a ‘clear’ difference between the overall impressions produced by the designs at issue, it should be noted that the wording of Article 6 of that regulation is clear and unambiguous. In accordance with the case-law relating to that provision, it must be borne in mind, for the purposes of applying Article 25(1)(d) of that regulation and assessing whether there is a conflict between the designs at issue, that a design is eligible for the protection afforded by the Community design under the relevant legislation if it produces on the informed user a different overall impression from that produced by a prior design (see, to that effect, judgment of 22 November 2018, Buck-Chemie v EUIPO – Henkel (Cleansing block for toilets), T‑296/17, not published, EU:T:2018:823, paragraph 29 and the case-law cited).

38 In the second place, the applicant claims that the prior design was entirely new on the date of its filing. It submits that the uniqueness of the shape resembling the structure of a dumbbell for a beverage bottle justifies the increased protection that would be afforded to the prior design.

39 In that regard, it should be noted that, by relying on the ‘particularly broad protection’ enjoyed by the prior design, the applicant is in fact seeking to introduce a new criterion for the protection of a prior design relating to its alleged innovative and unprecedented character in the sector of the industry to which the products at issue belong.

40 On the one hand, even if it were established that, at the date of its registration, the shape resembling the structure of a dumbbell applied to a beverage bottle would have been entirely new in the industrial sector concerned, the uniqueness of such a shape does not confer on the prior design broader protection than that which it enjoys under Regulation No 6/2002. On the other hand, the individual character of a design required for its registration applies to the contested design in relation to the prior design, without the allegedly unprecedented character or originality of its appearance having any influence whatsoever on the assessment of the individual character of the contested design. The applicant’s arguments in that regard must therefore be rejected.

41 Thus, it is necessary to examine, by carrying out a four-stage assessment, whether the contested design is in conflict with the prior design, in the sense that they produce the same overall impression on the informed user, taking into consideration the designer’s degree of freedom in developing the contested design. That examination consists in deciding upon, first, the sector to which the products in which the design is intended to be incorporated or to which it is intended to be applied belong; second, the informed user of those products in accordance with their purpose and, with reference to that informed user, the degree of awareness of the prior art and the level of attention to the similarities and the differences in the comparison of the designs; third, the designer’s degree of freedom in developing his or her design, the influence of which on individual character is in inverse proportion; and, fourth, taking that degree of freedom into account, the outcome of the comparison, direct if possible, of the overall impressions produced on the informed user by the contested design and by the prior design which has been made available to the public, taken individually (see judgment of 13 June 2019, Visi/one v EUIPO – EasyFix (Display holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 66 and the case-law cited).

42 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 the prior design relied on, 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, to that effect, judgment 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). …

The designer’s degree of freedom

…

52 However, it submits that the Board of Appeal erred in its interpretation and application of the principles set out in Article 6 of Regulation No 6/2002, since the designer’s degree of freedom in developing the prior design was ‘endless’ as regards the use of a shape resembling the structure of a dumbbell. According to the applicant, there were no limitations caused by functionalities or quantity standardisation that made such a shape necessary. In that regard, it emphasises that a design relating to a bottle with such a shape did not exist before the prior design. Moreover, the applicant claims that that shape does not merely fulfil a technical function, but gives the product a ‘sporty’ impression and image, distinguishing it from other bottles present on the market with slimmer middle parts.

53 The designer’s degree of freedom in developing his or her design is established, inter alia, 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. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (judgment of 18 March 2010, Representation of a circular promotional item, T‑9/07, EU:T:2010:96, paragraph 67).

54 Accordingly, 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 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 a different overall impression 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 18 July 2017, Ornamentation, T‑57/16, EU:T:2017:517, paragraph 30 and the case-law cited). …

The overall impression produced by the designs at issue on the informed user

…

60 The applicant claims, on the contrary, that the contested design lacks individual character, since there is no clear difference between the overall impression it produces on the informed user and the overall impression produced on that user by the prior design. According to the applicant, when comparing the designs at issue directly, the Board of Appeal focused on minor characteristics of the contested design. Furthermore, the black lines in that design which were mentioned by the Board of Appeal are not drawn in black on the bottles covered by that design, but depict a shape change that is barely visible.

61 According to case-law, the comparison of the overall impressions produced by the designs at issue must be synthetic and may not be limited to an analytic comparison of a list of similarities and differences. That comparison must take as a basis the features disclosed in the contested design and must relate solely to the features protected, without taking account of the features, particularly technical features, excluded from the protection (see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 84 and the case-law cited).

62 Where the similarities between the designs at issue relate to the constraints of the features imposed, inter alia, by the technical function of the product or an element thereof, those similarities will have only minor importance in the overall impression produced by those designs on the informed user (see, to that effect, judgment of 18 March 2010, Representation of a circular promotional item, T‑9/07, EU:T:2010:96, paragraph 72).

63 Furthermore, differences will be insignificant in the overall impression produced by the designs at issue where they are not sufficiently pronounced to distinguish the goods at issue in the perception of the informed user or offset the similarities found between those designs (see, to that effect, judgment of 21 November 2013, El Hogar Perfecto del Siglo XXI v OHIM – Wenf International Advisers (Corkscrew), T‑337/12, EU:T:2013:601, paragraph 53).

64 In the first place, as has been noted in paragraph 31 above, a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by the prior design. Contrary to what the applicant claims, the assessment to be made in that regard involves taking into account all the elements that distinguish the designs at issue, other than those which remain insufficiently significant to affect that overall impression. …

70 As regards the label on the prior design, in paragraph 35 of the contested decision, the Board of Appeal found that it did not play a significant role in the comparison of the overall impressions produced by the designs at issue. Before the Court, the applicant merely reproduced the prior design without the word elements on that label, and did not call the Board of Appeal’s finding into question. Even without a label, the designs at issue have significant differences, as has been stated in paragraphs 66 to 69 above.

71 It follows that the Board of Appeal made no error of assessment in finding, in paragraphs 36 and 37 of the contested decision, that the contested design and the prior design produced different overall impressions on the informed user and in concluding that the contested design could not be considered to be in conflict with the prior design within the meaning of Article 25(1)(d)(iii) of Regulation No 6/2002. …

Costs

…

74 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. Furthermore, as regards the costs relating to the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of that decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).

On those grounds, THE GENERAL COURT (Fifth Chamber) hereby:

1. Dismisses the action;

2. Orders Bibita Group to pay the costs.

Spielmann Spineanu-Matei Mastroianni Delivered in open court in Luxembourg on 21 April 2021. [Signatures]

( *1 ) Language of the case: English.

( 1 ) Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.