Judgments nº T-828/14 of The General Court, February 16, 2017

• Resolution Date: February 16, 2017
• Issuing Organization: The General Court
• Decision Number: T-828/14

(Community design - Invalidity proceedings - Registered Community designs representing thermosiphons for radiators - Earlier designs - Plea of unlawfulness - Article 1(d) of Regulation (EC) No 216/96 - Article 41(1) of the Charter of Fundamental Rights - Principle of impartiality - Composition of the Board of Appeal - Ground for invalidity - No individual character - Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002 - Enforcement by EUIPO of a judgment setting aside a decision of one of its Boards of Appeal - Saturation of the state of the art - Date of assessment)

In Joined Cases T-828/14 and T-829/14,

Antrax It Srl, established in Resana (Italy), represented by L. Gazzola, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented initially by M. P. Bullock, and subsequently by L. Rampini and S. Di Natale, acting as Agent,

defendant,

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

Vasco Group NV, formerly Vasco Group BVBA, established in Dilsen (Belgium), represented by J. Haber, lawyer,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 10 October 2014 (Cases R 1272/2013-3 and R 1273/2013-3), relating to invalidity proceedings between Vasco Group BVBA and Antrax It,

THE GENERAL COURT (Second Chamber),

composed of S. Gervasoni, acting President of the Chamber, L. Madise and Z. Csehi (Rapporteur), Judges,

Registrar: A. Lamote, Administrator,

having regard to the applications lodged at the Court Registry on 29 December 2014,

having regard to the responses of EUIPO lodged at the Court Registry on 18 March 2015,

having regard to the response of the intervener lodged at the Court Registry on 7 April 2015,

having regard to the replies lodged at the Court Registry on 8 June 2015,

having regard to the decision of 5 August 2016 joining Cases T-828/14 and T-829/14 for the purposes of the oral procedure and of the decision which closes the proceedings,

further to the hearing on 4 October 2016,

gives the following

Judgment

Background to the dispute

1 The applicant, Antrax It Srl, is the holder of two Community designs, No 000593959-0001 and No 000593959-0002, which were filed on 25 September 2006 at 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), and published in the Community Designs Bulletin on 21 November 2006.

2 The contested designs are represented as follows:

- design No 000593959-0001 (Case T-828/14):

- design No 000593959-0002 (Case T-829/14):

3 According to the actual wording of the applications for registration, all the contested designs were intended to be applied to thermosiphons (‘modelli di termosifoni’), which were intended to be applied to ‘radiators for heating’ in Class 23.03 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended.

4 On 16 April 2008, the predecessor to Vasco Group NV, the intervener, filed before EUIPO applications for a declaration of invalidity of the contested designs, pursuant to Article 52 of Regulation No 6/2002. In support of its applications, the intervener relied on German designs bearing the numbers 4 and 5 respectively included in multiple registration No 40110481.8, which was published on 10 September 2002 and extended to France, Italy and the Benelux countries as an international design bearing the reference No DM/060899.

5 The earlier designs are represented as follows:

- earlier design No 5 (opposed to registration No 000593959-0001, corresponding to Case T-828/14):

- earlier design no 4 (opposed to registration No 000593959-0002, corresponding to Case T-829/14):

6 The ground relied on in support of those applications for a declaration of invalidity was that referred to in Article 25(1)(b) of Council Regulation No 6/2002, to the effect that the contested designs did not fulfil the requirements of Articles 4 to 9 thereof.

7 By decisions of 30 September 2009, the Cancellation Division declared the contested designs invalid on the ground of lack of novelty within the meaning of Article 5 of Regulation No 6/2002.

8 On 27 November 2009, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the Cancellation Division’s decisions.

9 By decisions of 2 November 2010 (Cases R 1451/2009-3 and R 1452/2009-3), the Third Board of Appeal of EUIPO annulled the Cancellation Division’s decisions, in view of a failure to provide an adequate statement of reasons in respect of the ground for invalidity relating to the lack of novelty, and declared the contested designs invalid on the ground of lack of individual character within the meaning of Article 6 of Regulation No 6/2002.

10 On 11 February 2011, the applicant brought appeals against those decisions before the General Court.

11 By judgment of 13 November 2012, Antrax It v OHIM (Radiators for heating) (T-83/11 and T-84/11, ‘the judgment of 13 November 2012’, EU:T:2012:592), the General Court annulled the decisions of 2 November 2010 on the ground that the argument put forward by the applicant concerning the state of saturation of the reference sector had not been examined by the Board of Appeal. The General Court emphasised that any saturation of the state of the art resulting from the alleged existence of other thermosiphon or radiator designs having the same overall features as the designs at issue was relevant for the assessment of the individual character of the designs at issue, in that it might be liable to make an informed user more sensitive to the differences in the internal proportions of those different designs. Consequently, the General Court annulled the decisions of 2 November 2010 for failure to state reasons on the point of saturation of the state of the art.

12 Following the judgment of 13 November 2012 (T-83/11 and T-84/11, EU:T:2012:592), the cases were referred back to EUIPO and were given the new references R 1272/2013-3 and R 1273/2013-3 respectively. They were assigned to the Third Board of Appeal of EUIPO.

13 On 13 February 2014, the Rapporteur of the Third Board of Appeal in the two cases referred to in paragraph 12 above called on the parties to submit, within one month, their observations and evidence as to the existence or non-existence of saturation in the reference sector and the resulting overall impression of the designs in question for an informed user.

14 On 12 March 2014, the applicant submitted observations and evidence. The same day, the intervener submitted observations.

15 By decisions of 10 October 2014 (‘the contested decisions’), the Third Board of Appeal dismissed the actions and declared the contested designs invalid.

16 The Board of Appeal considered that, pursuant to Article 61(6) of Regulation No 6/2002, it had to rule on the question of saturation of the reference sector or market, as the General Court, in its judgment of 13 November 2012 (T-83/11 and T-84/11, EU:T:2012:592), had considered that the question of saturation of the state of the art, which was capable of influencing the informed user’s perception of the differences in the internal proportions of the designs at issue, had not been properly examined in the decisions annulled previously. The Board of Appeal took the view that it had to determine, on the basis of evidence and arguments presented by the parties, whether there was a situation of saturation in the reference sector arising from the existence of a multitude of other designs having the same overall features as the designs at issue (paragraphs 14, 17 to 19 and 25 of the contested decisions). The Board of Appeal held that, in the case before it, the sector to be so assessed was specifically that of thermosiphons and not heating equipment (paragraph 29 of the contested decisions).

17 The Board of Appeal considered in that regard that it was necessary for the party alleging saturation of the state of the art to present a clear, precise, coherent and current set of evidence (paragraphs 36, 41 and 50 of the contested decisions). Elle found, in essence, that the evidence adduced by the applicant in order to demonstrate the state of saturation of the reference sector was not exhaustive, poor in quality and ought to have been more coherent and more precise. It further observed that the catalogues annexed to the applicant’s observations of 12 March 2014 did not bear a date or, in some cases, dated from 2004 and 2006 (paragraphs 41 to 46 of the contested decisions).

18 As regards the comparison of the conflicting designs, the Board of Appeal found, in essence, that their similarities in shape and arrangement of the thermosiphons and the radiant tubes outweighed the minimal differences in depth or internal proportions, respective distance between tubes and number of tubes, which required an attentive examination (paragraphs 52 to 62 of the contested decisions). The Board of Appeal went on to conclude that the contested designs lacked specific individual character within the meaning of Article 6 of Regulation No 6/2002, as the overall impression produced by them on an informed user was no different from that produced by the shape and aspect of the earlier designs (paragraph 64 of the contested decisions).

Forms of order sought

19 The applicant claims that the Court should:

- annul the contested decisions;

- consequently, declare the contested designs to be valid without referring the cases back to EUIPO;

- ‘declare the conflict between Article 1(d) of Regulation (EC) No 216/96 and Article 41 of the Charter of Fundamental Rights of the European Union’;

- order EUIPO and the intervener jointly and severally to pay the costs and order the intervener to pay the costs of the proceedings before EUIPO.

20 EUIPO contends that the Court should:

- dismiss the actions;

- order the applicant to...