GC, 3rd chamber, January 28, 2015, No T-41/14 T

THE GENERAL COURT (Third Chamber),

Judgment

 Background to the dispute

1 On 20 March 2010, Clapbanner Ltd filed an application for registration of a Community design with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

2 The design for which registration was sought (‘the contested design’) is represented as follows:

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3 On the day the application for registration was filed, the contested design was registered under No 1 684 325-0001 and published in Community Designs Bulletin No 173/2010 of 5 August 2010. It is intended to be applied to ‘advertising articles’ in Class 20-03 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended.

4 On 20 April 2011, the applicant, Argo Development and Manufacturing Ltd, applied to OHIM for a declaration that the contested design was invalid, based on Articles 4 to 6 of Regulation No 6/2002.

5 In support of its application for a declaration of invalidity, the applicant relied on the Community designs registered on 26 September 2007 under Nos 796 446-0001 to 796 446-0004 in respect of ‘advertising articles’ in Class 20-03 of the Locarno Agreement, as amended. Those designs are set out below:

– design No 796 446-0001:

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– design No 796 446-0002:

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– design No 769 446-0003:

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– design No 796 446-0004:

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6 By decision of 20 March 2012, the Invalidity Division granted the application for a declaration of invalidity and declared the contested design invalid on the basis of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation. In that decision, the Invalidity Division found that the contested design was new. On the other hand, it took the view that the design lacked individual character.

7 On 18 May 2012, Clapbanner filed a notice of appeal under Articles 55 to 60 of Regulation No 6/2002 against the decision of the Invalidity Division.

8 By decision of 22 October 2013 (‘the contested decision’), the Third Board of Appeal of OHIM upheld that appeal. In the first place, it found that the contested design was new within the meaning of Article 5 of Regulation No 6/2002, on the ground that it was not identical to the earlier designs and that the differences as regards the handles of the articles represented in the earlier designs could not be considered to be ‘immaterial details’ within the meaning of that provision. In the second place, the Board of Appeal found that the contested design had individual character within the meaning of Article 6 of Regulation No 6/2002. First, it observed that the parties agree that the contested design relates to signboards that are typically made of lightweight cardboard and may be folded like an accordion, and are used at group events, such as sporting events, by a person clutching it at the shorter sides with his hands and holding it high above his head. Second, it stated that the informed users are both the persons who use those signboards at group events and the bodies which buy those signboards and then distribute them to the persons participating in those events. Third, it stated that the attention of an informed user would immediately be attracted by the appearance of the handles on the signboards at issue, in particular, on the ground that the designer has some creative freedom in respect thereof. By contrast, it stated that the designer’s degree of freedom as regards the signboards’ other features is very limited. Fourth, the Board of Appeal took the view that the aspect of the handles will play an essential role from the informed user’s perspective and that, in the contested design, the aspect of the handles is different from the aspect of the handles in the earlier designs. Fifth, the Board of Appeal inferred from this that the overall impression produced by the contested design on the informed user is different from the overall impression produced by the four earlier designs.

 Forms of order sought

9 The applicant claims that the Court should:

– annul the contested decision;

– grant the application for a declaration of invalidity and declare the contested design invalid;

– order OHIM to pay the costs.

10 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

 Law

11 Article 25(1)(b) of Regulation No 6/2002 provides that a Community design may be declared invalid only if it does not fulfil the requirements in Articles 4 to 9 of that regulation.

12 In support of the action, the applicant puts forward four pleas in law. First, it claims that a part of the handles in the contested design does not remain visible during normal use of the product within the meaning of Article 4 of Regulation No 6/2002. Second, it claims that the contested design lacks novelty within the meaning of Article 5 of that regulation. Third, it claims that that design lacks individual character within the meaning of Article 6 of the regulation. Fourth, it claims that that design was registered in bad faith.

 The first plea in law, alleging infringement of Article 4 of Regulation No 6/2002

13 The applicant claims, in essence, that a part of the handles in the contested design does not remain visible during normal use of the product within the meaning of Article 4 of Regulation No 6/2002.

14 In this connection, it should be recalled that, under Article 4(2) of Regulation No 6/2002, a design applied to or incorporated in a product which constitutes a component part of a complex product is only to be considered to be new and to have individual character if the component part, once it has been incorporated into the complex product, remains visible during normal use and to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character. In addition, under Article 4(3) of Regulation No 6/2002, ‘normal use’ means use by the end user, excluding maintenance, servicing or repair work.

15 Furthermore, it should be pointed out that Article 4(2) of Regulation No 6/2002 lays down a particular rule applying specifically to a design applied to or incorporated in a product which constitutes a component part of a complex product within the meaning of Article 3(c) of Regulation No 6/2002 (judgment of 9 September 2014 in Biscuits Poult v OHIM — Banketbakkerij Merba (Biscuit), T‑494/12, EU:T:2014:757, paragraph 21).

16 In the contested decision, the Board of Appeal did not find that the contested design constituted a complex product or that the handles constituted a component part of the product. Indeed, the applicant itself states, in the application, that the handles incorporated in the contested design do not constitute component parts of a complex product.

17 The applicant has therefore no basis for claiming that a part of the handles in the contested design does not remain visible during normal use of a complex product within the meaning of Article 4 of Regulation No 6/2002.

18 The first plea in law put forward by the applicant must therefore be dismissed.

 The second plea in law, alleging infringement of Article 5 of Regulation No 6/2002 in so far as the Board of Appeal found that the contested design was new

19 Under Article 5(1)(b) of Regulation No 6/2002, a design is to be considered to be new if no identical design has been made available to the public, in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority. Under Article 5(2) of Regulation No 6/2002, designs are to be deemed to be identical if their features differ only in immaterial details.

20 The applicant claims that any features of the contested design that may not be considered to be strictly identical to the corresponding features of the earlier designs constitute minor immaterial details. More specifically, the applicant claims that the contested design differs from the earlier designs only in immaterial details, namely its handles.

21 In the present case, it should be observed that the contested design and the earlier designs are not identical as regards the handles of the products represented therein.

22 As the Board of Appeal correctly pointed out in the contested decision, the handles represented in the contested design consist of a perforated area that can be pressed out. In comparison, the handles represented in the earlier designs are cut out (designs Nos 796 446-0001 and 796 446-0002) or added on to the cardboard signboard (designs Nos 796 446-0003 and 796 446-0004).

23 Those differences cannot be considered to be immaterial details since they are perceptible when the earlier designs and the contested design are placed side by side.

24 Accordingly, the Board of Appeal was fully entitled to conclude, in the contested decision, that the contested design was new within the meaning of Article 5 of Regulation No 6/2002.

25 The second plea in law put forward by the applicant must therefore be dismissed.

 The third plea in law, alleging infringement of Article 6 of Regulation No 6/2002 in so far as the Board of Appeal found that the contested design had individual character

26 Under Article 6(1)(b) of Regulation No 6/2002, a registered Community 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 Regulation No 6/2002 states that, in assessing individual character, the degree of freedom of the designer in developing the design is to be taken into consideration.

27 Furthermore, it is apparent from Article 6(1)(b) of Regulation No 6/2002 and settled case-law that the assessment of whether a design has individual character is determined by the overall impression that it produces on the informed user (see judgment of 25 October 2013 in Merlin and Others v OHIM — Dusyma (Game), T‑231/10, EU:T:2013:560, paragraph 28 and the case-law cited).

28 For the purposes of examining the individual character of the contested design, it must be assessed whether the Board of Appeal erred when it (i) defined the nature of the product to which the contested design applies, (ii) defined the informed user of the design, (iii) assessed the designer’s degree of freedom in the development of the design and (iv) compared the overall impressions produced on the informed user by the designs at issue.

 The nature of the product to which the contested design applies

29 It is apparent from recital 14 in the preamble to Regulation No 6/2002 that, when assessing whether a design has individual character, account should be taken of 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 (judgment of 22 June 2010 in Shenzhen Taiden v OHIM Bosch Security Systems (Communications equipment), T‑153/08, ECR, EU:T:2010:248, paragraph 43).

30 In the present case, the contested design, like the earlier designs, represents a cardboard signboard that is used at group events, such as sports events, demonstrations or concerts, and that may, inter alia, bear messages of support, slogans or advertising messages.

31 Moreover, as the Board of Appeal pointed out in paragraph 22 of the contested decision, the parties agree that the contested design, like the earlier designs, represents a signboard that is typically made of lightweight cardboard and is used by a person clutching it at the shorter sides with his hands and holding it high above his head.

32 In addition, it is apparent from the documents submitted, including by the applicant, during the proceedings before OHIM, that the contested design, like the earlier designs, also represents a cardboard signboard, which can be folded like an accordion and which, in a folded position, makes a noise when the end user claps it, inter alia, against his hand.

33 It is thus common ground, and it is moreover confirmed by the examination of the file relating to the proceedings before OHIM, forwarded to the Court in accordance with Article 133(3) of its Rules of Procedure, that the contested design applies to a rectangular cardboard signboard divided into pleats, which can be folded like an accordion, and that the signboard can be used in an unfolded position in order to convey a message or, in a folded position, to produce a sound effect.

 The informed user

34 According to the case-law, the concept of the ‘informed user’ must be understood as 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 at issue, 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 in PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, ECR, EU:C:2011:679, paragraph 53).

35 In the present case, the Board of Appeal found that the informed users are both the persons who use those signboards at group events and the bodies which buy those signboards and then distribute them to the persons participating in those group events.

36 That assessment, which the applicant does not dispute, is untainted by error and should, therefore, be confirmed.

 The designer’s degree of freedom

37 The designer’s degree of freedom in creating a design is determined, 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 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 (judgments of 18 March 2010 in Grupo Promer Mon Graphic v OHIM — PepsiCo (Representation of a circular promotional item), T‑9/07, ECR, EU:T:2010:96, paragraph 67, and 9 September 2011 in Kwang Yang Motor v OHIM — Honda Giken Kogyo (Internal combustion engine), T‑11/08, EU:T:2011:447, paragraph 32).

38 In the present case, the applicant disputes the Board of Appeal’s assessment that the designer has a very limited degree of freedom as regards the shape of the signboards represented in the designs at issue and as regards the division of those signboards into accordion-like foldable pleats. It claims that the Board of Appeal erred in concluding that the only feature that had to be taken into consideration in the present case was the handles of the signboards.

39 In this connection, first, it should be recalled that it is common ground that the contested design applies to a rectangular cardboard signboard, divided into pleats, which can be folded like an accordion. It is also common ground that such a signboard is used, when unfolded, to convey a message and, when folded, to make noise when the end user claps it, inter alia, against his hand (see paragraphs 30 to 33 above).

40 Second, as regards the shape of the contested design, it must be observed that the applicant has not shown that there is ‘ample opportunity to create a different design’ for an advertising article consisting of a cardboard signboard designed to be waved at group events and to make noise when the user claps it, inter alia, against his hand.

41 Moreover, as the Board of Appeal observed at paragraph 26 of the contested decision, the rectangle is the most obvious shape for an advertising signboard, since it offers more writing space and enables the user to hold it comfortably without obstructing his vision.

42 In addition, the rectangular shape, which enables the drawing of foldable cardboard pleats of an identical size, is the appropriate shape if those pleats are to produce noise when they enter into contact with each other.

43 Accordingly, in the contested decision, the Board of Appeal was justified in taking the view that the rectangular shape was not an aspect of the design in relation to which the designer had much freedom of choice.

44 Thirdly, as regards the division of the signboard into cardboard pleats that can be folded like an accordion, the applicant asserts, without demonstrating, that other methods of folding are conceivable in order to enable a signboard to fulfil its function.

45 Moreover, it should be observed, as did the Board of Appeal, that folding the signboard like an accordion is a method that enables the cardboard signboard to be folded and unfolded in a quick and practical manner.

46 In addition, folding the signboard like an accordion is the only method of folding capable of producing the sound effect sought by the designer of a product such as the one represented in the contested design. Thus, only the snap of numerous cardboard pleats against each other, in particular, when in contact with the user’s hand, enables a sufficient sound to be made for the sound to be propagated.

47 Accordingly, the Board of Appeal was correct in finding that the designer’s degree of freedom was almost non-existent as regards the division of the cardboard signboard into accordion-like foldable pleats.

48 Therefore, the Board of Appeal did not make an error of assessment in finding, in paragraph 26 of the contested decision, that the rectangular shape of the cardboard signboard and its division into accordion-like foldable pleats constituted two features in relation to which the designer had a very limited degree of freedom. The Board of Appeal was also fully entitled to take the view that the handles were the only part of the signboards in relation to which the designer had some creative freedom.

 The comparison of the overall impressions

49 The applicant claims that the overall impression produced by the contested design does not differ from that produced by the earlier designs. It submits that, in assessing the overall impression produced by the contested design, the signboard as a whole as represented should be taken into consideration and not the signboard’s handles alone. Moreover, it is important to take into consideration the manner in which the product is used. Lastly, the applicant submits that when the signboard is used, the differences in the shape of the handles will not be noticed by the informed user.

50 In this connection, in the first place, it should be pointed out that, having regard to the conclusions drawn as to the designer’s degree of freedom, the Board of Appeal was justified in taking the view that the aspect of the handles plays an essential role in the overall impression produced by the designs at issue on the informed user (see, to that effect, judgment in Representation of a circular promotional item, paragraph 37 above, EU:T:2010:96, paragraph 72).

51 In the second place, and as the applicant states, the overall impression produced by a design on the informed user must necessarily be determined also in the light of the manner in which the product in question is used (judgments in Communications equipment, paragraph 29 above, EU:T:2010:248, paragraph 66, and of 14 June 2011 in Sphere Time v OHIM — Punch (Watch attached to a lanyard), T‑68/10, ECR, EU:T:2011:269, paragraph 78).

52 However, it should be recalled that the signboards represented in the designs at issue can be used in an unfolded position or in a folded position.

53 As regards the use of the signboards in an unfolded position, the applicant’s argument that the minor differences that characterise the handles will not be visible cannot be accepted.

54 First, the aspect of the handles will be visible when the signboard represented in the contested design is first used, inasmuch as, in contrast to the use of the signboards represented in the earlier designs, the use of the signboard represented in the contested design in an unfolded position will first require pressure to be applied to the perforated area in order to form the handles.

55 Second, the documents submitted during the proceedings before OHIM by the applicant itself show that users can hold the signboards at issue in different ways. Users will thus not necessarily hold the signboards at issue with all of their fingers but may only use some of them, which will result in the aspect of the handles being exposed.

56 As regards the use of the signboards represented in the designs at issue in a folded position, it should be noted that, in order to produce a noise, the user will be required to hold the end of the folded signboard in one hand and to clap the other end of the folded signboard against, for example, the palm of his other hand. Thus, when used in this way, the products represented in the earlier designs will reveal a slot in the middle of the pleats at the edges of the signboard (designs Nos 796 446-0001 and 796 446-0002) or handles added on to the middle of those pleats (designs Nos 796 446-0003 and 796 446-0004). By contrast, when used in a folded position in order to make noise, the product represented in the contested design will not reveal any handle if the user has not pressed on the perforation, or, if the user has already done so, will reveal a simple semi-circular opening.

57 Therefore, the applicant’s argument that the aspect of the handles will not be visible when the products represented in the designs at issue are used must be rejected.

58 In the third place, the applicant states that the handles that appear in the contested design are positioned in the same place as the handles found in the earlier designs and that those handles have the same dimensions. It adds that the minor differences as to the way in which the handles have been depicted in the designs at issue cannot have an impact on the overall impression produced on the informed user.

59 As regards the earlier designs Nos 796 446-0003 and 796 446-0004, the applicant’s argument that the handles are in the same place in the designs at issue is manifestly not well founded in so far as, inter alia, the handle in the contested design is represented as a line of perforations to be pressed out, whereas the handle is attached in the earlier designs. Moreover, as the Board of Appeal indicated in paragraph 29 of the contested decision, the aspect of the handles in the earlier designs Nos 796 446-0003 and 796 446-0004 is completely different from that of the handles represented in the contested design.

60 Accordingly, taking into consideration the very limited degree of freedom of the designer as regards the rectangular shape of the cardboard signboard and its division into accordion-like foldable pleats, and having regard to the differences noted in the paragraph above as regards the handles depicted in the designs, the contested design produces, on the informed user, an overall impression different from that of the earlier designs Nos 796 446-0003 and 796 446-0004.

61 As regards the earlier designs Nos 796 446-0001 and 796 446-0002, it must be observed that the handle is cut out in those designs whereas it is represented as a line of perforations to be pressed out in the contested design. Moreover, the handle that appears in those earlier designs has an oblong shape, whereas it has a semi-circular shape in the contested design. Lastly, the applicant’s argument that the handles are in the same place in the designs at issue must be rejected in so far as, as the Board of Appeal observed in paragraph 29 of the contested decision, the handle depicted in the contested design occupies the penultimate foldable pleat at the edge of the signboard, whereas it occupies two foldable pleats in the earlier designs. It should be added that, for that reason and by contrast with the product represented in the contested design, the products represented in the earlier designs will reveal a slot in the middle of the pleats at the edge of the signboard when they are used in a folded position. Lastly, even if that difference in positioning might go unnoticed by the informed user, as contemplated by the Board of Appeal, that circumstance would not modify the overall impression produced by the designs at issue on the informed user.

62 Accordingly, following an overall assessment and taking into consideration the designer’s very limited degree of freedom as regards the rectangular shape of the cardboard signboard and its division into accordion-like foldable pleats, it must be held that the aspect of the handles in the contested design is sufficiently different from that of the handles in the earlier designs Nos 796 446-0001 and 796 446-0002 to produce a different overall impression on the informed user.

63 In the light of the foregoing, it must be held that the Board of Appeal did not make an error of assessment in finding that the contested design produced, on the informed user, an overall impression different from that of the earlier designs.

64 The third plea in law must therefore be dismissed.

 The fourth plea in law, alleging registration of the contested design in bad faith

65 The applicant claims that the contested design was registered in bad faith and that, consequently, the measures taken by the holder of the contested design must be annulled under the principle of fraus omnia corrompit.

66 However, it must be pointed out that Article 25(1) of Regulation No 6/2002 lists the grounds on which a Community design may be declared invalid. That list must be regarded as exhaustive, since Article 25 provides that a Community design may be declared invalid only on one of the grounds specified therein. It must be noted that there is no reference there to the bad faith of the holder of a contested design (judgment in Representation of a circular promotional item, paragraph 37 above, EU:T:2010:96, paragraph 30).

67 Moreover, it must be observed that bad faith on the part of the holder of the design was not invoked in the application for a declaration of invalidity and was raised at a later stage in the course of the administrative proceedings in order to explain why the contested design was not new and did not have individual character.

68 However, it is apparent from paragraphs 19 to 64 above that the contested design is new and that it has individual character.

69 The fourth plea in law must therefore be dismissed.

70 Consequently, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s second head of claim.

 Costs

71 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1. Dismisses the action;

2. Orders Argo Development and Manufacturing Ltd to pay the costs.