Source: EURLEX
Language: en
Format: md

Case T‑100/19

L. Oliva Torras, SA

v

European Union Intellectual Property Office

Judgment of the General Court (Ninth Chamber), 10 June 2020

(Community design — Invalidity proceedings — Registered Community design representing a coupling to hitch refrigeration or air conditioning equipment to a motor vehicle — Single head of claim seeking alteration — Implicit application for annulment — Admissibility — Ground of invalidity — Failure to comply with the requirements for protection — Articles 4 to 9 and Article 25(1)(b) of Regulation (EC) No 6/2002 — Extent of the examination carried out by the Board of Appeal — Position adopted by the Board of Appeal on the failure to comply with a requirement for protection during the procedure — Divergent conclusion in the contested decision — Obligation to state reasons — Article 62 and second sentence of Article 63(1) of Regulation (EC) No 6/2002)

1. Community designs — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Alteration of a decision of the Office — Assessment in the light of the powers conferred on the Board of Appeal

   (Council Regulation No 6/2002, Arts 60(1) and 61(3))

   (see paragraph 29)
2. Community designs — Surrender and invalidity — Invalidity proceedings — Examination of the application — Competence of the Office to examine all the requirements laid down in Articles 4 to 9 of Regulation No 6/2002 — Scope

   (Council Regulation No 6/2002, Arts 4 to 9, 25(1)(b); Commission Regulation No 2245/2002, Art. 28(1)(b)(v))

   (see paragraphs 49, 51, 54-69, 74)
3. Community designs — Procedural provisions — Examination of the facts of the Office’s own motion — Action for invalidity — Examination restricted to the facts, evidence and arguments provided — Well-known facts taken into account — Examination of a legal question of the Office’s own motion — Conditions

   (Council Regulation No 6/2002, Art. 63(1), second sentence)

   (see paragraph 70)
4. Community designs — Procedural provisions — Statement of reasons for decisions — Position adopted by the Board of Appeal on the failure to comply with a requirement for protection during the procedure — Divergent conclusion in the decision on the appeal — Effect

   (Council Regulation No 6/2002, Arts 4(2) and (3), (5), (6), (25)(1)(b), 62 and 63(1))

   (see paragraphs 110-116, 120, 121, 124, 129)
5. Community designs — Appeals procedure — Action before the EU judicature — Pleas in law — Infringement of essential procedural requirements — Infringement of the duty to state reasons

   (Council Regulation No 6/2002, Art. 61(2))

   (see paragraph 134)

Résumé

In the judgment in L. Oliva Torras v EUIPO — Mecánica del Frío (Vehicle couplings) (T‑100/19), delivered on 10 June 2020, the Court defined the extent of the examination to be carried out by the European Union Intellectual Property Office (EUIPO) in the context of an application for a declaration of invalidity of a Community design based on Article 25(1)(b) of Regulation No 6/2002 (
[1](#t-ECR_62019TJ0100_RES_EN_01-E0001)
) and ruled on the extent of EUIPO’s obligation to state reasons in that regard. By its judgment, the Court annulled the decision of the Board of Appeal of EUIPO (‘the contested decision’) relating to invalidity proceedings between L. Oliva Torras (‘the applicant’) and Mecánica del Frío (‘the intervener’) with regard to the registered Community design representing a coupling to hitch refrigeration or air conditioning equipment to a motor vehicle.

In the first place, the Court noted that Article 25(1)(b) of Regulation No 6/2002 confers on the adjudicating bodies of EUIPO, in the context of the examination of an application for a declaration of invalidity, the competence to monitor compliance with the essential requirements for protection of the Community design, which are laid down in Articles 4 to 9 of that regulation. In that regard, the Court pointed out that those requirements are cumulative, so that the failure to comply with only one of them could lead to the design at issue being declared invalid. Furthermore, those provisions entail the implementation of different legal criteria. Consequently, the Court ruled that the wording of Article 25(1)(b) of that regulation, read in the light of its context and objectives, must be interpreted as meaning that it does not necessarily imply an examination of compliance with all the requirements set out in Articles 4 to 9 of that regulation, but may imply, on the basis of the facts, evidence and observations submitted by the parties, an examination solely of compliance with only one or some of those requirements.

In the second place, the Court pointed out that it was in the light of the matters of fact and of law put forward in support of the applicant’s application for a declaration of invalidity that the Board of Appeal had to determine which of the requirements laid down in Articles 4 to 9 of Regulation No 6/2002, the failure to comply with which had been relied on in the case at hand and which the Board of Appeal had to examine, taking into account, where appropriate, well-known facts and matters of law that had not been raised by the parties, but which were necessary for the application of the relevant provisions. Thus, the Court held that the Board of Appeal had been wrong to take the view that, as the applicant’s application for a declaration of invalidity was based on Article 25(1)(b) of Regulation No 6/2002, the applicant had intended to rely on the failure by the contested design to comply with all the requirements set out in Articles 5, 6, 8 and 9 of that regulation.

In the third place, the Court upheld the applicant’s claim that the Board of Appeal had failed to decide on whether the contested design referred to a component part of a complex product which, once incorporated into that product, remained visible during the normal use of the product within the meaning of Article 4(2) and (3) of Regulation No 6/2002, (
[2](#t-ECR_62019TJ0100_RES_EN_01-E0002)
) even though that issue had been addressed in the communication of 16 May 2018 (
[3](#t-ECR_62019TJ0100_RES_EN_01-E0003)
) and in the subsequent observations of the parties.

The Court noted, first of all, that the conclusions of the Board of Appeal with regard to the application of that article did not clearly follow from the reasoning of the contested decision, either for the parties or for the EU judicature. In particular, the Court stated that the grounds relied on by EUIPO for the first time before the EU judicature and alleging that the applicant had not requested the application of Article 4(2) and (3) of Regulation No 6/2002 could not remedy the lack of reasoning in the contested decision.

Next, the Court pointed out that, first, the question of whether Article 4(2) and (3) of Regulation No 6/2002 was applicable in the case at hand was likely, in principle, to be of decisive importance in the context of the contested decision in the light of the potential impact of that question on the grounds and operative part thereof. Second, according to the Court, it was apparent from the communication of 16 May 2018 that the Board of Appeal had taken the view, at that stage of the procedure, that the claims made by the parties and the evidence provided in support of those claims proved that the requirements laid down in Article 4(2) and (3) of Regulation No 6/2002 were not fulfilled.

In that regard, the Court concluded that, although the Board of Appeal could not be considered to be bound by its communication of 16 May 2018, it was nevertheless for the Board of Appeal to properly state the reasons why it considered that it should depart from the conclusions of that communication, as that communication and the subsequent observations of the parties formed part of the context in which the Board of Appeal had adopted the contested decision. The Court pointed out, in particular, that it was not for it to act in lieu of the Board of Appeal in carrying out the examination of the arguments, facts and evidence submitted by the applicant, an examination which the Board of Appeal had to carry out for the purposes of determining whether the application of Article 4(2) and (3) of Regulation No 6/2002 was at issue in the dispute before it.

In the light of all the foregoing, the Court annulled the contested decision. However, it rejected, on the basis of the ‘Edwin’ case-law, the applicant’s request for alteration.

---

(
[1](#c-ECR_62019TJ0100_RES_EN_01-E0001)
) Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs ([OJ 2002 L 3, p. 1](./../../../legal-content/EN/AUTO/?uri=OJ:L:2002:003:TOC)) provides that a Community design may be declared invalid only if it does not fulfil the requirements laid down in Articles 4 to 9 of that regulation

(
[2](#c-ECR_62019TJ0100_RES_EN_01-E0002)
) Article 4(2) of Regulation No 6/2002 states that ‘a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:  
(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and  
(b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character’.

(
[3](#c-ECR_62019TJ0100_RES_EN_01-E0003)
) Communication addressed to the parties by the Board of Appeal stating that the contested design should be declared invalid, as the requirements set out in Article 4 of Regulation No 6/2002 were not complied with.

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