JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

10 November 2021 ( *1 )

(Community design – Invalidity proceedings – Registered Community design representing a label – Earlier design – Proof of disclosure – Article 7(1) of Regulation (EC) No 6/2002 – Evidence submitted after the expiry of the prescribed time limit – Board of Appeal’s discretion – Article 63(2) of Regulation No 6/2002 – Ground for invalidity – No individual character – Article 6 and Article 25(1)(b) of Regulation No 6/2002)

In Case T‑443/20,

Sanford LP, established in Atlanta, Georgia (United States), represented by J. Zecher, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Avery Zweckform GmbH, established in Oberlaindern/Valley (Germany), represented by H. Förster, lawyer,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 15 May 2020 (Case R 2413/2018-3), relating to invalidity proceedings between Avery Zweckform and Sandford,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann (Rapporteur), President, U. Öberg and R. Mastroianni, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 13 July 2020,

having regard to the response of EUIPO lodged at the Court Registry on 29 October 2020,

having regard to the response of the intervener lodged at the Court Registry on 19 October 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 )

…

Forms of order sought

9 The applicant claims that the Court should: – annul the contested decision; – reject the application for a declaration of invalidity of the contested design; – order EUIPO to pay the costs, including the costs of the proceedings before the Board of Appeal.

10 EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs.

Law

11 The applicant relies, in essence, on three pleas in law, alleging, first, infringement of Article 63(2) of Regulation No 6/2002, in that certain evidence was submitted late to the Board of Appeal, second, infringement of Article 7(1) of that regulation, in that the earlier design was wrongly considered to have been disclosed, and, third, infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, in that the designs at issue were wrongly considered to produce the same overall impression on the informed user and the contested design was therefore wrongly considered to lack individual character.

The first plea in law, alleging infringement of Article 63(2) of Regulation No 6/2002, in that certain evidence was submitted late to the Board of Appeal

12 The applicant submits that the Board of Appeal infringed Article 63(2) of Regulation No 6/2002 by declaring admissible certain evidence relating to the R5015 label rolls produced by the intervener for the first time at the stage of the appeal against the Cancellation Division’s decision.

13 EUIPO and the intervener dispute that line of argument.

14 Under Article 63(2) of Regulation No 6/2002, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

15 It is apparent from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 6/2002 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgment of 14 March 2018, Crocs v EUIPO – Gifi Diffusion (Footwear), T‑651/16, not published, EU:T:2018:137, paragraph 31).

16 In stating that EUIPO ‘may’, in such a case, decide to disregard evidence submitted late, Article 63(2) of Regulation No 6/2002 grants it a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (judgment of 14 March 2018, Footwear, T‑651/16, not published, EU:T:2018:137, paragraph 32).

17 As regards the exercise of that discretion by EUIPO for the purposes of the possible consideration of evidence submitted out of time, such consideration by EUIPO, where it is called upon to adjudicate in invalidity proceedings, is particularly likely to be justified where it considers, first, that the material submitted out of time is, on the face of it, likely to be relevant to the outcome of the application for a declaration of invalidity brought before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account. Such considerations are particularly likely to justify EUIPO’s taking into account of evidence which, although not submitted within the prescribed time limit, is submitted at a later stage of the proceedings by way of complement to the evidence submitted within that time limit (judgment of 14 March 2018, Footwear, T‑651/16, not published, EU:T:2018:137, paragraph 34).

18 In the present case, it is apparent from the information in the file, and in particular from paragraph 14 of the contested decision, that the intervener submitted Annexes 32 to 34 for the first time to the Board of Appeal, in order to demonstrate that the earlier design had been disclosed. In particular, Annex 32 contains an affidavit of 18 February 2019 by A, director of a company operating in the field of label printing, stating that that company had been producing R5015 label rolls for the intervener since 2003, and that affidavit was accompanied by invoices and representations of those rolls. Annexes 33 and 34 contain two affidavits, the first dated 11 February 2019, by B, a member of the board of directors of a company which produced flexible dies for the intervener from 1999 to 2003, and the second dated 19 February 2019 by C, a mechanical engineer for the intervener, containing, inter alia, representations of the 8853 label rolls used by the intervener and confirming A.’s statements.

19 The Board of Appeal considered it necessary to take into account the additional evidence submitted to it by the intervener. It found that the evidence was relevant and that it supported the evidence submitted to the Cancellation Division. In particular, the Board of Appeal noted that Annex 32 had been submitted in support of the disclosure of the R5015 label in Annex 8 which had been submitted in the application for a declaration of invalidity. It also stated that that evidence had been notified to the applicant, which had submitted observations on it, that there was no time limit for filing an application for a declaration of invalidity and that the consideration of that evidence could contribute to ensuring that a registered Community design, the validity of which could subsequently successfully be challenged by means of other invalidity proceedings, does not stay on the register. Lastly, it added that that evidence had been submitted in order to challenge the Cancellation Division’s decision that the evidence of disclosure was insufficient. The Board of Appeal therefore declared that the evidence was admissible.

20 It should be noted that, as the applicant itself acknowledges, the intervener submitted documents to the Cancellation Division, including an affidavit by C, in support of its application for a declaration of invalidity. However, the Cancellation Division found that the representations and documents provided did not substantiate the statements made by C. The Cancellation Division also found that the evidence submitted with the application for a declaration of invalidity was insufficient to establish disclosure, on the ground of a lack of clear identification of the earlier designs relied on and a lack of evidence concerning the sources and relevant dates of disclosure. It therefore concluded that disclosure of the earlier design could not be established.

21 Consequently, the annexes and representations submitted to the Board of Appeal are in addition to those already submitted to the Cancellation Division. Moreover, those annexes, which were subsequent to the Cancellation Division’s decision and, therefore, could not have been submitted previously, in particular enabled the intervener to respond to the Cancellation Division’s findings referred to in paragraph 20 above. Furthermore, even though, as the applicant submits, some representations of the label rolls produced in Annexes 32 and 34 differ from the contested design, the fact remains that they belonged to the same series of labels as the contested design (namely R5012-R5020). Those annexes were, therefore, relevant to the outcome of the dispute and could validly complement the evidence already submitted.

22 Furthermore, those annexes were submitted in the context of the statement of grounds of appeal of 25 February 2019. The Board of Appeal was therefore able to exercise its discretion objectively and by stating reasons as to whether to take those views into account (see, to that effect, 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 22).

23 Lastly, the applicant is wrong to claim that the admissibility of those annexes infringed its right to be heard, since it was able to submit its observations in that regard in its pleadings before the Board of Appeal of 2 May and 6 September 2019, as the applicant itself acknowledges.

24 It follows that, by accepting in a reasoned manner that account should be taken of the additional annexes submitted to it, the Board of Appeal made appropriate use of the discretion conferred on it by Article 63(2) of Regulation No 6/2002 and the first plea in law must therefore be rejected.

The second plea in law, alleging infringement of Article 7(1) of Regulation No 6/2002, in that the earlier design was wrongly considered to have been disclosed

…

52 The second plea in law must therefore be rejected.

The third plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, in that the designs at issue were wrongly considered to produce the same overall impression on the informed user and that the contested design was therefore wrongly considered to lack individual character

53 By its third plea in law, the applicant submits that the Board of Appeal made an error of assessment in deciding that the contested design lacked individual character, in breach of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, on the ground, inter alia, that the differences between the designs at issue were wrongly ignored.

54 EUIPO and the intervener dispute that line of argument. …

The informed user

…

63 In the present case, as the Board of Appeal found, the informed user, without being a designer or a technical expert, knows the various designs of printer label rolls from the product range available on the market, possesses a certain level of knowledge with regard to the features which those label rolls normally include and, as a result of his or her interest, shows a relatively high level of attention when using them, which is not disputed by the parties.

The designer’s degree of freedom

…

67 The degree of freedom of the designer of the contested design was therefore considered to be average, which is not disputed by the parties.

Overall impression

68 It must be noted that 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 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).

69 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 characteristics disclosed in the contested design and must relate solely to the characteristics protected, without taking account of the characteristics, and particularly technical characteristics, excluded from the protection. The comparison must relate to the designs, in principle, as registered and the invalidity applicant cannot be required to produce a graphic representation of the design relied on, comparable to the representation in the application for registration of the design at issue (see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 84 and the case-law cited).

70 In the present case, as the Board of Appeal found, the designs at issue both have the features of the carrier roll, the yellowish strip, the white plain rectangular labels and the oval holes between each label. As regards the differences, they are limited to the size of the label, which is longer and narrower in the contested design than in the earlier R5015 design, the corresponding difference relating to the height of the roll and the number, position and size of the black print marks.

71 Although those differences cannot be regarded as immaterial, as the Board of Appeal stated, it was right to find that they were nevertheless insufficient to produce a different overall impression in the mind of the informed user.

72 The arguments relied on by the applicant in support of its claim that the contested design does not produce on the informed user the same overall impression as that produced by the earlier design cannot call into question that conclusion. …

79 Thirdly, the applicant claims that the word and figurative elements were wrongly ignored. It refers in that regard to the word marks presented in a special font on the contested design (dymo) and on the earlier R5015 design (avery), and the figurative element in the shape of a triangle next to the word element ‘avery’, and maintains that those elements are decorative elements.

80 However, it must be stated that the word and figurative elements on the designs at issue are marks or distinctive signs affixed to the product to indicate its origin. Those elements do not have an ornamental or decorative function and do not constitute features of the product giving the goods concerned their appearance, for the purposes of Article 3(a) and (b) of Regulation No 6/2002. Those word and figurative elements are therefore irrelevant in the comparison of the overall impressions for the purposes of establishing the individual character of the contested design.

81 Furthermore and in any event, it must be noted that the comparison of the overall impression of the designs at issue must take as a basis the characteristics disclosed in the contested design and must relate solely to the characteristics protected, without taking account of the characteristics, and particularly technical characteristics, 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).

82 Therefore, even though those word and figurative elements could be regarded as relevant, it will be clear to the informed user that their purpose is to indicate the origin of the goods, with the result that, in the overall impression, that user will not attach importance to them and those elements will therefore, in the present case, be insufficient to alter the overall impression that he or she will have of the contested design. …

99 It follows from all of the foregoing that the Board of Appeal did not make an error of assessment in finding that the designs at issue produced the same overall impression on the informed user, or in concluding therefore that the contested design lacked individual character, for the purposes of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, in view of the earlier design.

100 Consequently, the third plea in law raised by the applicant must be rejected as unfounded and, therefore, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim requesting that the Court reject the application for a declaration of invalidity of the contested design, since that head of claim depends on the action for annulment being upheld, so that it is made only in the event that the first head of claim succeeds (see, to that effect, judgment of 27 February 2019, Aytekin v EUIPO – Dienne Salotti (Dienne), T‑107/18, not published, EU:T:2019:114, paragraph 84 and the case-law cited). …

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

1. Dismisses the action;

2. Orders Sanford LP to pay the costs.

Spielmann Öberg Mastroianni Delivered in open court in Luxembourg on 10 November 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.