Judgments nº T-352/19 of Tribunal General de la Unión Europea, March 12, 2020

• Resolution Date: March 12, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-352/19

(Community design - Invalidity proceedings - Registered Community design representing packaging for foodstuffs - Earlier design - Ground for invalidity - No individual character - No different overall impression - Article 6(1)(b) and Article 25(1)(b) of Regulation (EC) No 6/2002) In Case T-352/19,

Gamma-A SIA, established in Riga (Latvia), represented by M. Liguts, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,

defendant,

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

Zivju pārstrādes uzņēmumu serviss SIA, established in Riga, represented by J. Alfejeva, lawyer,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 25 March 2019 (Case R 2516/2017-3), relating to invalidity proceedings between Piejūra SIA and Gamma-A,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann, President, U. Öberg and O. Spineanu-Matei (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 10 June 2019,

having regard to the response of EUIPO lodged at the Court Registry on 5 August 2019,

having regard to the response of the intervener lodged at the Court Registry on 12 August 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the 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 10 April 2012, the applicant, Gamma-A SIA, requested and 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 2022772-0001 of a Community design represented in the following three views:

2 The products into which the contested design is intended to be incorporated are in Class 9-3 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Packaging for foodstuffs’. The application for registration as a Community design was published in Community Designs Bulletin No 2012/072 of 13 April 2012.

3 On 3 March 2017, the intervener, Zivju pārstrādes uzņēmumu serviss SIA, formerly Piejūra SIA, filed with EUIPO an application for a declaration of invalidity in respect of the contested design under Article 52 of Regulation No 6/2002.

4 The ground relied upon in support of the application for a declaration of invalidity was that set out in Article 25(1)(b) of Regulation No 6/2002. The intervener claimed, inter alia, in its application for a declaration of invalidity, that the contested design lacked novelty and individual character for the purposes of Articles 5 and 6 of that regulation. In support of its application, the intervener stated that the contested design was identical to, or produced the same overall impression on the informed user as, the design intended to be incorporated in a food container with a transparent removable lid, known as CANPEEL®, developed by the company O.Kleiner AG. In order to prove that the earlier design had been disclosed, the intervener submitted a statement by O.Kleiner that the design had been exhibited at the ‘Interpack’ fair in Dusseldorf (Germany) in 2008, a copy of the company’s newsletter for December 2008 reporting that the earlier design had won several packaging awards in 2008, and correspondence referring to the fact that, in 2011, a Latvian preserved fish company had received several CANPEEL® boxes from O.Kleiner in order to try them. The image which appeared in the newsletter mentioned above is reproduced below:

5 By decision of 21 November 2017, the Invalidity Division rejected the application for a declaration of invalidity. In essence, first, as regards the contested design’s alleged lack of novelty for the purposes of Article 5 of Regulation No 6/2002, it found that the designs at issue were not identical on account of the differences relating to the ring-pulls for opening the lids and the foodstuffs contained in the packaging in which they were intended to be incorporated. Second, as regards the lack of individual character for the purposes of Article 6 of Regulation No 6/2002, alleged by the intervener, the Invalidity Division stated that the contested design did have such character in so far as, since the contents of the packaging in which the contested design was intended to be incorporated are visible and therefore form part of the design, the differences in this design are sufficient for the designs at issue to produce on the informed user different overall impressions.

6 On 23 November 2017, the intervener filed a notice of appeal with EUIPO, under Articles 55 to 60 of Regulation No 6/2002, against the Invalidity Division’s decision, claiming once again that the contested design lacked novelty and individual character for the purposes of Article 25(1)(b) of Regulation No 6/2002, in conjunction with Articles 5 and 6 thereof, in so far as it produced on the informed user the same overall impression as the earlier design.

7 By decision of 25 March 2019 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the intervener’s appeal. On the basis of Article 25(1)(b) of Regulation No 6/2002 in conjunction with just Article 6 thereof, it took the view, in essence, that the contested design produced on the informed user the same overall impression as that produced by the earlier design, in so far as the designs at issue have the same characteristics as regards their appearance. It added that only the features of appearance of the packaging in which the contested design is intended to be incorporated should be taken into account, and not the features of appearance of the foodstuffs contained within it as well, irrespective of whether, due to the fact that the packaging or its lid are transparent, the foodstuffs are visible. Accordingly, the Board of Appeal annulled the Invalidity Division’s decision and declared the contested design invalid for lack of individual character.

Forms of order sought

8 The applicant claims that the Court should:

- annul the contested decision and, accordingly, declare the contested design valid;

- order EUIPO and the intervener to pay the costs.

9 EUIPO and the intervener contend, in essence, that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

Admissibility of the head of claim seeking from the Court a declaration that the contested design is valid

10 EUIPO claims that the first head of claim in the application, in so far as it seeks from the Court a declaration that the contested design is valid, is inadmissible since the declaration of validity sought falls outside the scope of an application for annulment, the objective of which cannot be to obtain confirmatory or declaratory rulings. If that head of claim were to be interpreted as referring to the consequence of the annulment of the contested decision and the rejection of the intervener’s application for a declaration of invalidity, it would, in any event, be redundant.

11 In that regard, it should be noted that, by its first head of claim, the applicant seeks, inter alia, to obtain a declaratory ruling to the effect that the contested design is valid. However, the General Court has jurisdiction, under Article 61(3) of Regulation No 6/2002, only to annul or to alter decisions of the Boards of Appeal. Therefore, the Court does not have jurisdiction to declare the contested design valid (see, by analogy judgment of 1 July 2014, You-View.tv v OHIM - YouView TV (YouView+), T-480/13, not published, EU:T:2014:591, paragraph 15 and the case-law cited).

12 As a result, in so far as it seeks from the Court a declaration that the contested design is valid, the applicant’s first head of claim is inadmissible.

Substance

13 In support of its action, the applicant relies on a single ground of appeal, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, in conjunction with Article 6 of that regulation. In essence it criticises the Board of Appeal for having found that the contested design produced on the informed user the same overall impression as the earlier design, with the result that it lacked individual character.

14 EUIPO and the intervener dispute the applicant’s arguments.

15 It should be borne in mind that Article 25(1) of Regulation No 6/2002 provides that a Community design may be declared invalid only in the cases referred to under subparagraphs (a) to (g) of that paragraph and, specifically, as regards the case referred to in subparagraph (b), if it does not fulfil the conditions set out in Articles 4 to 9 of that regulation.

16 Among the requirements for protection of a design by a Community design laid down in Articles 4 to 9 of Regulation No 6/2002 is the requirement that the design has individual character, as set out in Article 6 of that regulation. Article 6(1)(b) of Regulation No 6/2002 provides that a registered Community design is 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. Article 6(2) of Regulation No 6/2002 states, in addition, that in assessing the individual character of a design, the degree of freedom of the designer in developing that design is to be taken into consideration.

17 In accordance with case-law, the individual character of a design results from an overall impression of difference or lack...