GC, 4th chamber, October 3, 2014, No T-39/13

THE GENERAL COURT (Fourth Chamber)

1 On 1 September 2003, the applicant — Cezar Przedsiębiorstwo Produkcyjne Dariusz Bogdan Niewiński — submitted an application for registration of a Community design to 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 in respect of which registration was sought is intended to be applied to ‘skirting boards’ in Class 25-02 of the Locarno Agreement Instituting an International Classification for Industrial Designs of 8 October 1968, as amended, and is represented as follows:

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3 The design was registered as No 70 438-0002 on the same day that the application for registration was submitted. It was published in Community Designs Bulletin No 2003/35 of 9 December 2003.

4 On 11 September 2007, the intervener — Poli-Eco Tworzywa Sztuczne sp. z o.o. — filed an application with OHIM for a declaration of invalidity with regard to the design in question. The ground relied on in support of that application was that set out in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4, 5 and 6 of that regulation.

5 The intervener argued that the contested design was not new, because identical designs had been placed on the market in 1999 by the Turkish company Nil Plastik and the German companies Bolta and Döllken. In support of its application, the intervener produced, inter alia, selected pages from Döllken’s ‘Programm 1999’ catalogue (‘the Döllken catalogue’), displaying the following representations:

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6 By decision of 31 May 2010, the Cancellation Division of OHIM upheld the application for a declaration of invalidity, on the ground that the contested design was not new. It based its assessment on one of the representations from the Döllken catalogue, reproduced below (‘Design D1’ or ‘the earlier design’):

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7 The Cancellation Division found, in essence, that there was no visible difference between the contested design and Design D1, because the former was part of a complex product and its only visible feature during normal use was its front surface.

 8 On 4 August 2010, the applicant filed a notice of appeal with OHIM, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the Cancellation Division’s decision.

 9 By decision of 8 November 2012 (‘the contested decision’), the Third Board of Appeal of OHIM dismissed the appeal. It held, in essence, that the contested design fell to be declared invalid owing to its lack of novelty and individual character. More specifically, the Board of Appeal found that the contested design was part of a complex product as defined in Article 3(c) of Regulation No 6/2002 and that the only visible part of that design during normal use was the flat surface of its base part. Since the flat surface of the contested design was the same as the flat surface of Design D1, the Board of Appeal concluded that the two designs were identical and that, consequently, the contested design was not new. Likewise, the overall impression produced by each of the designs at issue on an informed user of the contested design — in the present case, a craftsman habitually purchasing skirting boards — was identical. As a result, the Board of Appeal concluded that the contested design had no individual character.

Forms of order sought

10 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

11 OHIM and the intervener contend that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

12 In support of its action, the applicant raises three pleas in law, alleging respectively: (i) infringement of Article 25(1)(b) of Regulation No 6/2002; (ii) infringement of Article 63(1) of that regulation; and (iii) infringement of Article 62 of that regulation.

13 By its first plea, the applicant submits, in essence, that the Board of Appeal was wrong to conclude that the contested design had no novelty or individual character.

14 OHIM and the intervener contend that the Board of Appeal was justified in concluding that the contested design had no novelty or individual character.

15 Under Article 25(1)(b) of Regulation No 6/2002:

‘A Community design may be declared invalid only in the following cases:

(a) …;

(b) if it does not fulfil the requirements of Articles 4 to 9;

…’

16 Article 4 of Regulation No 6/2002 provides:

‘1. A design shall be protected by a Community design to the extent that it is new and has individual character.

2. 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. “Normal use” within the meaning of paragraph (2)(a) shall mean use by the end user, excluding maintenance, servicing or repair work.’

17 A ‘complex product’ is defined in Article 3(c) of Regulation No 6/2002 as a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.

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

19 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 of the application for registration or, if a priority is claimed, the date of priority.

20 It is in the light of the above provisions that the present action must be examined.

21 As a preliminary point, it should be noted that — as the Board of Appeal pointed out — the contested design consists of a flat part and two side parts which open at an angle slightly larger than 90 degrees and have outwardly facing protrusions at their ‘free ends’ and that the application for registration describes that design as being intended for application to skirting boards.

22 Before comparing the designs at issue in order to assess the novelty and individual character of the contested design, it is necessary to determine whether that design constitutes a component part of a complex product and, if so, which parts of that design are visible during normal use. It is also necessary to examine Design D1, on which the Board of Appeal based its assessment, given that the applicant disputes the Board of Appeal’s analysis of that design and, consequently, the finding that the designs in question are identical.

Categorisation of the contested design as a component part of a complex product

23 The Board of Appeal found that the contested design constituted a component part of a complex product consisting of: (i) a skirting board with a recess designed to accommodate electric cables or telephone lines and (ii) the contested design, that is to say, an insert intended to cover that recess, adapted to the skirting board and capable of being disassembled and re-assembled. Similarly, it found that that design was a component part of a complex product when incorporated in other types of skirting board, since its flat part was mounted on the wall and the skirting board was attached to its protruding side elements by means of another set of protruding elements located on the back surface of the skirting board. The Board of Appeal therefore concluded that, on any view, the contested design constitutes a component part of a complex product.

24 The applicant submits that the contested design is a multifunctional product capable of being used in a number of ways and that its use cannot be restricted to use as a component part of a complex product. The applicant mentions, in essence, two potential uses of the contested design: (i) to cover a recess in a skirting board and (ii) to be incorporated in a floor or wall. In its view, neither a wall nor a floor can be regarded as a product. The applicant also submits that Article 3(c) of Regulation No 6/2002 must be narrowly construed and that, consequently, a design must not be regarded as constituting a component part of a complex product unless that is the only reasonable way in which to use it.

25 OHIM contends that the different ways of using the contested design invoked by the applicant confirm that it is part of a complex product.

26 It should be borne in mind from the outset that it is essential to determine whether the contested design constitutes a component part of a complex product because, under Article 4(2)(a) and (b) of Regulation No 6/2002, in the case of component parts of complex products, the only features that need be taken into account in a comparison of the designs in question are those that are visible during normal use.

27 As for the present case, it should be noted that, as can be seen from the case-file (particularly the documents appended to the application), the contested design constitutes a component part of a complex product where it is intended to cover a recess in a skirting board and, incidentally, a recess in a wall or floor.

28 In that regard, it should be noted that, while maintaining that the contested design is a multifunctional product, the applicant essentially mentions only the ways in which that design can be used as an insert in a skirting board, wall or floor. Admittedly, it also mentions the possibility of using the contested design as a stand-alone product — that is to say, as a channel — and makes reference to Annex A7 to the application in that connection. However, when questioned on that point at the hearing, the applicant conceded that the latter use was no more than a possibility. Although potential uses of a design should not be ruled out, it should none the less be pointed out that a purely hypothetical use of the contested design — such as that mentioned in Annex A7 to the application — cannot be taken into account, since it is clear from the case-file that, in the present case, the contested design will essentially be applied to a component part for use as an insert to cover a recess.

29 Accordingly, the contested design constitutes a component part of a complex product.

The visible features of the component part during normal use

30 Under Article 4(2)(b) of Regulation No 6/2002, the visible features of a design which constitutes a component part of a complex product must fulfil in themselves the requirements as to novelty and individual character. Article 4(3) of that regulation states that ‘normal use’ means use by the end user, excluding maintenance, servicing or repair work.

31 It is therefore necessary to ascertain which features are visible during normal use of the product.

32 The Board of Appeal found, in paragraph 25 of the contested decision, that for the end user of the contested design (namely, a user of rooms where skirting boards were mounted), only the flat front surface of the design remained visible when it was in use as an insert to cover a recess in a skirting board. By contrast, the Board of Appeal held that when the design was used in the manner illustrated in the Döllken catalogue, no part of it remained visible, because it was hidden behind the skirting board.

33 The applicant disputes the Board of Appeal’s findings and submits that all parts of the contested design remain visible when that design is used normally, that is to say, when the contested design is manufactured of transparent material, when the insert is removed during installation of cables in the skirting board and when the ends of the skirting board are not covered.

34 OHIM contends that the Board of Appeal’s finding that, during normal use, the only visible part of the contested design is its flat surface is correct. Concerning the applicant’s arguments, OHIM submits that the removal of an insert from a skirting board during the repair of cables or the placing of cables in a recess does not constitute normal use. Furthermore, it argues, it is illogical to imagine that the ends of a skirting board can be left uncovered.

35 The applicant additionally argues that, contrary to the finding made by the Board of Appeal, the contested design cannot be used with a skirting board such as that depicted in the Döllken catalogue, that is to say, it cannot be attached to a wall and covered by a skirting board that is attached to the protruding elements of the design with the help of another set of protruding elements which are part of the skirting board itself. That operation would be impossible, especially given that the protrusions of the contested design are too long to fit into the back part of a skirting board.

36 In that regard, it must be pointed out that, under Article 4(2)(a) of Regulation No 6/2002, a design which constitutes a component part of a complex product is not to be considered to be new or to have individual character unless that component part, once it has been incorporated into the complex product, remains visible during normal use of the latter. It follows that it would be impossible to protect the use of the design as an attachment to the back part of a skirting board and, in consequence, that use cannot be taken into account in the present case. The only use of the contested design which can be taken into account for the purposes of the present analysis is its use as an insert to cover a recess. The Board of Appeal’s conclusion that no part of the component part to which the design is applied remains visible when that design is attached to the back of a skirting board is, therefore, irrelevant in the present case (although that fact has no effect on the lawfulness of the contested decision). Accordingly, the applicant cannot construct a sound argument on the basis of the fact that the protrusions of the contested design are too long for such a use.

37 Consequently, the visibility of the contested design’s features must be assessed solely in the context of its use as an insert to cover a recess in a skirting board or wall.

38 As the Board of Appeal found, only the flat surface of the contested design remains visible when that design is used to cover a recess in a skirting board or wall. That finding is also borne out by the documents appended to the application as Annexes A8 to A13.

39 It is also necessary to examine, at this stage, the applicant’s argument that, as the wall or floor in which the product to which the contested design is applied would be incorporated is not a product as defined in Article 3 of Regulation No 6/2002, the criterion of visibility should not be applied to the contested design.

40 In that regard, it must be emphasised that visibility is an essential criterion for the protection of Community designs: recital 12 in the preamble to Regulation No 6/2002 states that protection should not be extended to those component parts which are not visible during normal use of a product; nor should it be extended to any features of such a part which are not visible when the part is mounted. It follows that it is not necessary, for the purposes of the present analysis, to determine whether the recesses which the contested design is supposed to cover are located in a ‘product’ in the strict sense of Article 3 of Regulation No 6/2002; rather, it is necessary to determine which features are visible during normal use, as the Board of Appeal has done in the present case.

41 The other arguments put forward by the applicant cannot undermine that conclusion on the part of the Board of Appeal.

42 First, the installation of electric cables or telephone lines in a recess of a skirting board covered by an insert to which the contested design is applied is one of the exceptions allowed under Article 4(3) of Regulation No 6/2002, which states that maintenance, servicing or repair work cannot be regarded as constituting normal use. Since the installation or the replacement of cables in a recess are, by their nature, temporary operations, they correspond precisely to maintenance or servicing operations for the purposes of that provision. In addition, the Board of Appeal was right to find, in paragraph 26 of the contested decision, that, during normal use, skirting boards are removed only when the room is refurbished or when cables or telephone lines are repaired or replaced. Consequently, it held — rightly — that normal use does not include the regular disassembly and inspection of the insert.

43 Secondly, as regards the possibility of not covering the ends of a skirting board, thereby allowing users to view the cross-section of both the skirting board and the insert, it should be noted that — as OHIM points out — it would be illogical to leave uncovered the ends of a product that has essentially been designed to hide cables. Moreover, it is clear from Annex A13 to the application (pp. 61 to 64) that the skirting boards in which the component part to which the contested design is applied is incorporated include elements to hide their ends. Furthermore, it is also stated, in Annex A14 to the application (p. 66), that easy and quick do-it-yourself installation is possible through the use of end caps and adaptors: a clear indication, in the circumstances, that the ends of the skirting boards are supposed to be covered.

44 Thirdly, as regards the scenario in which the design is manufactured of transparent material, it should be noted that the illustrations of the insert in use, appended to the application as Annexes A8, A9 and A12, do not support a finding that a transparent surface would allow users to view the insert’s protrusions when that insert is attached to a skirting board, wall or floor. Similarly, the Board of Appeal was right to find, in paragraph 29 of the contested decision, that both of the designs at issue, as presented, could be applied to products made of various materials and not just to those made entirely of transparent materials. In addition, OHIM contends — rightly — that that feature is not included in the graphic representation of the contested design.

45 Accordingly, the Board of Appeal’s conclusion that the only visible feature of the contested design during normal use would be its front surface is not vitiated by any error.

Assessment of the earlier design

46 The applicant submits that Design D1 consists of a simple line with a short simple hook at each end. It maintains that, since no three-dimensional product is represented by that drawing, any image of a flat surface remains unclear and vague. The Board of Appeal’s finding in paragraph 30 of the contested decision that Design D1 represents a product with a flat surface is thus incorrect. Moreover, OHIM’s document ‘Examination of Applications for Registered Community Designs’ states that features of an earlier design that are not sufficiently represented in an image which may have been disclosed previously cannot be taken into consideration as part of the assessment of the individual character of the contested design.

47 OHIM contends that the representation of the earlier design, and particularly the illustration in the Döllken catalogue, permits an ‘understanding of the product itself’ and thus makes it possible to carry out a useful comparison of Design D1 and the contested design. The fact that that representation is limited to a profile view does not rule out a comparison with the contested design, because the shape and the features of the earlier design would be perfectly identifiable in the present case even if the representation of that design were two-dimensional and did not include a perspective view.

48 In that regard, it should first of all be noted that, so far as the assessment of a design’s novelty and individual character for the purposes of Articles 5 and 6 of Regulation No 6/2002 is concerned, the regulation does not require the graphic representation of a design in respect of which registration has been sought or that of a design which has already been made available to the public to include a perspective view, so long as that graphic representation allows the shape and the features of the design to be identified. In the present case, the Board of Appeal was entitled to conclude that the representation of the design displayed in the Döllken catalogue allowed the shape and the features of that earlier design to be identified, along with the way in which it was to be used.

49 Next, it is necessary to address the issue of whether the earlier design is visible during normal use. In the present case, the Board of Appeal held, in paragraph 30 of the contested decision, that the only visible feature of that design, as with the contested design, is the flat front surface. However, according to the Döllken catalogue (which includes Design D1) the earlier design is to be attached to the back part of a skirting board. It follows that the earlier design is not visible during normal use of the complex product of which it is a part.

50 In that regard, it should be noted that the Board of Appeal observed in paragraph 21 of the contested decision, when determining the use of the contested design, that the examples of skirting boards submitted in support of the application for a declaration of invalidity consisted of a flat base part with protruding elements mounted on the wall and a skirting board attached to those elements by means of another set of protruding elements closely fitted together and located on its back surface. From this, the Board of Appeal inferred in paragraph 25 of the contested decision that, when used in such a way, the element represented by both the contested design and the earlier design was not visible.

51 Since a design constituting a component part of a complex product which is not visible during normal use of that complex product cannot be protected under Article 4(2)(a) of Regulation No 6/2002, it must be held, by analogy, that the novelty and individual character of a Community design cannot be assessed by comparing that design with an earlier design which, as a component part of a complex product, is not visible during normal use of that product.

52 Therefore, the criterion of visibility as set out in recital 12 to Regulation No 6/2002 and recalled in paragraph 40 above applies to the earlier design. OHIM also acknowledged at the hearing that the same criteria had to be applied to both the designs at issue.

53 It follows that the Board of Appeal made an error of assessment when comparing the designs in question since it held that, during normal use, the front part of the product to which the earlier design is applied and which is part of a complex product remains visible. In that way, it failed to identify correctly the visible elements of the earlier design. As was stated in paragraph 51 above, however, an application for a declaration of invalidity cannot be based on an earlier design which, as a component part of a complex product, is not visible during normal use of that product. As a result, the analysis of the contested design’s novelty and individual character carried out by the Board of Appeal is flawed, which is a sufficient ground for upholding the present plea in law.

54 It follows that the present plea must be upheld, without it being necessary to examine the other arguments and pleas in law raised by the applicant.

Costs

55 Under Article 87(2) 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.

56 Since the applicant has applied for costs and OHIM has been unsuccessful, the latter must be ordered to bear its own costs and to pay the costs incurred by the applicant.

57 The intervener must be ordered to bear its own costs, in accordance with the third subparagraph of Article 87(4) of the Rules of Procedure.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1. Annuls the decision of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 8 November 2012 (Case R 1512/2010‑3);

2. Orders OHIM to bear its own costs and to pay the costs incurred by Cezar Przedsiębiorstwo Produkcyjne Dariusz Bogdan Niewiński;

3. Orders Poli-Eco Tworzywa Sztuczne sp. z o.o. to bear its own costs.