Judgments nº T-9/07 of The General Court, March 18, 2010

• Resolution Date: March 18, 2010
• Issuing Organization: The General Court
• Decision Number: T-9/07

In Case T‑9/07,

Grupo Promer Mon Graphic SA, established in Sabadell (Spain), represented by R. Almaraz Palmero, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

PepsiCo Inc., established in New York (United States), represented by E. Armijo Chávarri and A. Castán Pérez-Gómez, lawyers,

ACTION brought against the decision of the Third Board of Appeal of OHIM of 27 October 2006 (Case R 1001/2005-3) relating to invalidity proceedings between Grupo Promer Mon Graphic SA and PepsiCo Inc.,

THE GENERAL COURT (Fifth Chamber),

composed of M. Vilaras, President, M. Prek and V.M. Ciucă (Rapporteur), Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Court Registry on 9 January 2007,

having regard to the response of OHIM lodged at the Court Registry on 27 April 2007,

having regard to the response of the intervener lodged at the Court Registry on 30 April 2007,

further to the hearing on 8 July 2009,

gives the following

Judgment

Legal framework

1. Regulation (EC) No 6/2002

1 The rules relating to Community designs are laid down in Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

2 Article 3(a) of Regulation No 6/2002 provides:

‘For the purposes of this Regulation:

(a) “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.’

3 Article 10 of Regulation No 6/2002 provides:

‘1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.’

4 Article 25 of the version of Regulation No 6/2002 applicable to the facts of the case provides:

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

(a) if the design does not correspond to the definition under Article 3(a);

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

(c) if, by virtue of a court decision, the right holder is not entitled to the Community design under Article 14;

(d) if the Community design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if a priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date by a registered Community design or an application for such a design, or by a registered design right of a Member State, or by an application for such a right;

(e) if a distinctive sign is used in a subsequent design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use;

(f) if the design constitutes an unauthorised use of a work protected under the copyright law of a Member State;

(g) if the design constitutes an improper use of any of the items listed in Article 6ter of the “Paris Convention” for the Protection of Industrial Property hereafter referred to as the “Paris Convention”, or of badges, emblems and escutcheons other than those covered by the said Article 6ter and which are of particular public interest in a Member State.

…

3. The grounds provided for in paragraph (1)(d), (e) and (f) may be invoked solely by the applicant for or holder of the earlier right.

…’

5 Article 36 of Regulation No 6/2002 provides:

‘…

2. The application shall further contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied.

…

6. The information contained in the elements mentioned in paragraph 2 and in paragraph 3(a) and (d) shall not affect the scope of protection of the design as such.’

6 Under Article 43 of Regulation No 6/2002, ‘the date of priority shall count as the date of the filing of the application for a registered Community design for the purpose of Articles … 25(1)(d) …’.

7 Article 52(1) of Regulation No 6/2002 provides that ‘[s]ubject to Article 25(2), (3), (4) and (5), any natural or legal person, as well as a public authority empowered to do so, may submit to [OHIM] an application for a declaration of invalidity of a registered Community design’.

8 Under Article 61(1) of Regulation No 6/2002, ‘[a]ctions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals’.

9 The first sentence of Article 62 of Regulation No 6/2002 provides that ‘[d]ecisions of [OHIM] shall state the reasons on which they are based’.

2. Directive 98/71/EC

10 Article 1(a) of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 28) provides:

‘For the purpose of this Directive:

‘(a) “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’.

11 Under Article 9 of Directive 98/71:

‘1. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.’

Background to the dispute

12 On 9 September 2003, the intervener, PepsiCo Inc., filed an application for registration of a Community design at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Regulation No 6/2002. When the registration was applied for, priority was claimed for Spanish design No 157156, which had been filed on 23 July 2003 and whose application for registration was published on 16 November 2003.

13 The Community design was registered under number 74463-0001 for the following goods: ‘promotional item[s] for games’. It is represented as follows:

14 On 4 February 2004, the applicant, Grupo Promer Mon Graphic SA, filed an application for a declaration of invalidity against design No 74463-0001 (‘the contested design’) pursuant to Article 52 of Regulation No 6/2002.

15 The application for a declaration of invalidity was based on registered Community design No 53186-0001 (‘the prior design’), which has a filing date of 17 July 2003 and in respect of which priority is claimed for Spanish design No 157098, which was filed on 8 July 2003 and whose application for registration was published on 1 November 2003. The prior design is registered for ‘metal plate[s] for games’. It is represented as follows:

16 The grounds relied on in support of the application for a declaration of invalidity alleged the lack of novelty and individual character of the contested design for the purposes of Article 25(1)(b) of Regulation No 6/2002, and the existence of a prior right for the purposes of Article 25(1)(d) thereof.

17 On 20 June 2005, the Invalidity Division of OHIM declared that the contested design was invalid on the basis of Article 25(1)(d) of Regulation No 6/2002.

18 On 18 August 2005, the intervener filed a notice of appeal with OHIM, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Invalidity Division.

19 By decision of 27 October 2006 (‘the contested decision’), the Third Board of Appeal of OHIM annulled the decision of the Invalidity Division and dismissed the application for a declaration of invalidity. After rejecting the applicant’s argument concerning the intervener’s bad faith, the Board of Appeal held, in essence, that the contested design was not in conflict with the applicant’s prior right and that the conditions set out in Article 25(1)(d) of Regulation No 6/2002 had not therefore been fulfilled. In that connection, the Board of Appeal held that the goods covered by the designs at issue concerned a particular category of promotional items, namely ‘tazos’ or ‘rappers’, and that, therefore, the freedom of the designer of those promotional items was severely restricted. Accordingly, the Board of Appeal concluded that the difference in the profile of the designs at issue was sufficient to conclude that they produced a different overall impression on the informed user.

Procedure and forms of order sought

20 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM and the intervener to pay the costs of the proceedings before the Court and the Third Board of Appeal.

21 OHIM and the intervener contend that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

1. Documents submitted for the first time before the Court

22 OHIM and the intervener contest the admissibility of documents Nos 6 to 9 appended to the application, which were not submitted at an earlier stage in the proceedings. Document No 6 consists of extracts, from the OHIM website, of two registered Community designs published on 9 March 2004 and representing hexagonal gameboard pieces. Document No 7 is a partial copy of a private agreement between the applicant and another company. Document No 8 is an extract from a website containing information on ‘pogs’ and ‘tazos’. Document No 9 shows the applicant’s range of products known as ‘BEYBLADE TM SPINNERS’.

23 In reply to a question put by the Court, the applicant confirmed that documents Nos 6 to 9 had been submitted for the first time before it, but explained that it had produced those documents in the light of the grounds and the operative part of the contested decision.

24 Those documents, produced...