Judgments nº T-306/16 of Tribunal General de la Unión Europea, July 05, 2017

• Resolution Date: July 05, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-306/16

(Community design - Invalidity proceedings - Registered Community design representing a door handle - Earlier design - Ground for invalidity - No individual character - Degree of freedom of the designer - No different overall impression - Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002 - Evidence submitted in support of the opposition after the expiry of the prescribed period - Production of evidence for the first time before the Board of Appeal - Discretion of the Board of Appeal - Article 63 of Regulation No 6/2002) In Case T-306/16,

Gamet S.A., established in Toruń (Poland), represented by A. Rolbiecka, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

defendant,

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

Firma produkcyjno-handlowa ‘Metal-Bud II’ Robert Gubała, established in Świątniki Górne (Poland), represented by M. Mikosza, lawyer,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 17 March 2016 (Case R 2040/2014-3), relating to invalidity proceedings between Firma produkcyjno-handlowa ‘Metal-Bud II’ Robert Gubała and Gamet,

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 13 June 2016,

having regard to the response of EUIPO lodged at the Court Registry on 28 July 2016,

having regard to the response of the intervener lodged at the Court Registry on 24 August 2016,

having regard to the fact that no application for a hearing was submitted by the parties within the period of three weeks from notification of closure of the written procedure, and having therefore decided to rule on the action without an oral procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 24 March 2013, the applicant, Gamet S.A., obtained from the European Union Intellectual Property Office (EUIPO), on the basis of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) registration under number 2208066-0001 of a Community design represented as follows:

2 The contested design is intended to be applied to ‘handles, knobs and hinges’ in Class 08-06 of the Locarno Agreement establishing an International Classification for Industrial Designs of 8 October 1968, as amended.

3 On 19 August 2013, the intervener, Firma produkcyjno-handlowa ‘Metal-Bud II’ Robert Gubała, filed an application for a declaration that the contested Community design was invalid, pursuant to Article 52 of Regulation No 6/2002.

4 The ground relied on in support of the application for a declaration of invalidity was that referred to in Article 25(1)(b) of Regulation No 6/2002. In the application for a declaration of invalidity, the intervener contended that the contested design was not new and that it lacked individual character for the purposes of Article 4 of Regulation No 6/2002, read in conjunction with Articles 5 and 6 thereof.

5 In support of its application for a declaration of invalidity, the intervener relied, inter alia, on a design earlier than the contested design, represented by the ‘DORA’ door handle (‘the DORA handle’). To demonstrate the existence of that design and the fact that it had been made available to the public, it produced, inter alia, extracts from catalogues and websites containing the following illustrations, which compare the DORA handle with the contested design:

Front view

Natural angle of view

Side view 1

Side view 2

Top view

6 By decision of 11 June 2014, the Invalidity Division rejected the application for a declaration of invalidity, holding that the earlier designs had been disclosed prior to the date of application for registration of the contested design but that the latter satisfied the requirements as to novelty and individual character laid down in Articles 4 to 6 of Regulation No 6/2002.

7 On 5 August 2014, the intervener appealed under Articles 55 to 60 of Regulation No 6/2002 against the decision of the Invalidity Division.

8 By decision of 17 March 2016 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the appeal and annulled the decision of the Invalidity Division. In the first place, it held admissible certain items of evidence produced by the intervener, on the one hand, before the Invalidity Division and, on the other hand, for the first time before it. In the second place, after first stating that it would assess the merits of the appeal on the basis of the earlier design represented by the DORA handle, it found that that design had been made available to the public before the date of application for registration of the contested design. Next, it considered whether the contested design fulfilled the requirements of novelty and individual character laid down in Articles 4 to 6 of Regulation No 6/2002. In that regard, it found that because of the presence of a groove around the grip of the handle represented by the contested design, that design fulfilled the requirement of novelty. As regards individual character, after defining the informed user of door handles and after finding that the degree of freedom of the designer in designing door handles was almost unlimited, it concluded that the designs at issue produced, on account of minimal differences between them, an identical overall impression on the informed user. Lastly, it concluded from those findings that the contested design had no individual character and that it must therefore be declared invalid.

Forms of order sought

9 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO and the intervener to pay the costs.

10 EUIPO and the intervener contend that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

11 In support of its action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 63(1) and (2) of Regulation No 6/2002 and, second, infringement of Articles 4 and 6 of that regulation.

The first plea in law, alleging infringement of Article 63(1) and (2) of Regulation No 6/2002

12 The first plea in law can be divided in two parts.

The first part, alleging infringement of Article 63(2) of Regulation No 6/2002

13 In the first place, the applicant maintains that the Board of Appeal infringed Article 63(2) of Regulation No 6/2002 by declaring admissible certain items of evidence produced by the intervener for the first time on appeal. It submits that the intervener produced, for the first time before the Board of Appeal, statements by representatives of three undertakings established in the Czech Republic, Poland and Slovakia showing photographs of various door handles, including the DORA handle. According to the applicant, those photographs are the first showing that handle from different angles, so that the photographs did not supplement the evidence produced before the Invalidity Division but constituted entirely new evidence, which is inadmissible on appeal.

14 It should be borne in mind that Article 63(2) of Regulation No 6/2002 provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

15 It follows 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 out of time (see, by analogy, judgments of 13 March 2007, OHIM v Kaul, C-29/05 P, EU:C:2007:162, paragraph 42; of 3 October 2013, Rintisch v OHIM, C-122/12 P, EU:C:2013:628, paragraph 23 and the case-law cited, and of 28 January 2016, Davó Lledó v OHIM - Administradora y Franquicias América and Inversiones Ged (DoggiS), T-335/14, EU:T:2016:39, paragraph 28).

16 In stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, that provision grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see, by analogy, judgments of 3 October 2013, Rintisch v OHIM, C-122/12 P, EU:C:2013:628, paragraph 24 and the case-law cited, and of 28 January 2016, DoggiS, T-335/14, EU:T:2016:39, paragraph 29).

17 Moreover, as regards the exercise of that discretion by EUIPO for the purposes of deciding whether or not to take into account evidence submitted out of time, where EUIPO is called upon to give judgment in invalidity proceedings, taking such facts or evidence into account is likely to be justified, in particular, where EUIPO considers, first, that the material produced late is, on the face of it, likely to be relevant to the outcome of the application for a declaration of invalidity before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not preclude such matters being taken into account (see, by analogy, judgments of 13 March 2007, OHIM v Kaul, C-29/05 P, EU:C:2007:162, paragraph 44; of 3 October 2013, Rintisch v OHIM, C-122/12 P, EU:C:2013:628, paragraph 39, and of 28 January 2016, DoggiS, T-335/14, EU:T:2016:39, paragraph 30).

18 It follows that it is for the General Court to assess whether the Board of Appeal in fact exercised the broad discretion conferred on it for the purpose of deciding, in a reasoned manner and taking due account of all the relevant circumstances, whether it was necessary to take account of evidence adduced for the first time before it in order to deliver its decision...