Eternit v European Union Intellectual Property Office.

• Jurisdiction: European Union
• ECLI: ECLI:EU:T:2021:782
• Docket Number: T-193/20
• Date: 10 November 2021
• Celex Number: 62020TJ0193
• Court: General Court (European Union)

JUDGMENT OF THE GENERAL COURT (Tenth Chamber)

10 November 2021 (*)

(Community design – Invalidity proceedings – Community design representing a building panel – Earlier design representing a panel for a noise-reduction wall – Ground for invalidity – No individual character – Sector concerned – Informed user – Degree of freedom of the designer – No different overall impression – Relevance of goods actually marketed – Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002)

In Case T‑193/20,

Eternit, established in Kapelle-op-den-Bos (Belgium), represented by J. Muyldermans and P. Maeyaert, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,

defendant,

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

Eternit Österreich GmbH, established in Vöcklabruck (Austria), represented by M. Prohaska-Marchried, lawyer,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 5 February 2020 (Case R 1661/2018-3), relating to invalidity proceedings between Eternit Österreich and Eternit,

THE GENERAL COURT (Tenth Chamber),

composed of A. Kornezov (Rapporteur), President, E. Buttigieg and G. Hesse, Judges,

Registrar: J. Pichon, Administrator,

having regard to the application lodged at the Court Registry on 10 April 2020,

having regard to the response of EUIPO lodged at the Court Registry on 17 August 2020,

having regard to the response of the intervener lodged at the Court Registry on 21 August 2020,

further to the hearing on 21 April 2021,

gives the following

Judgment

Background to the dispute

1 The applicant, Eternit, is the holder of the Community design filed with the European Union Intellectual Property Office (EUIPO) on 15 September 2014, pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) and registered under number 2538140-0001.

2 The contested design is represented as follows:

1.1	1.2
1.3	1.4
1.5

3 The products to which the contested design is intended to be applied are in Class 25.01 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Panels [building]’.

4 On 12 December 2016, the intervener, Eternit Österreich GmbH, filed an application for a declaration of invalidity of the contested design pursuant to Article 52 of Regulation No 6/2002.

5 The ground relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4 to 8 of that regulation.

6 The intervener claimed, inter alia, in its application for a declaration of invalidity, that (i) the design at issue was not new within the meaning of Article 5 of Regulation No 6/2002, (ii) it did not have individual character within the meaning of Article 6 of that regulation and (iii) the features of its appearance were solely dictated by their technical function within the meaning of Article 8(1) of that regulation.

7 On 28 June 2018, the Cancellation Division adopted a decision by which, first, it found that the intervener failed to prove that the contested design was subject to the exclusion from protection laid down in Article 8(1) of Regulation No 6/2002 and, secondly, it declared the contested design invalid on the ground that it had no individual character within the meaning of Article 6 of Regulation No 6/2002 in relation to a design disclosed on 4 March 2013, that is to say before the filing date of the application for registration of the contested design, in a brochure entitled Lärmschutz, in respect of ‘noise reduction wall’ type panels, available on the website ‘http://www.rieder.at’, and which was reproduced as follows:

8 On 23 August 2018, the applicant lodged an appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Cancellation Division.

9 By decision of 5 February 2020 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal, finding that the contested design lacked individual character within the meaning of Article 6 of Regulation No 6/2002, on the ground that, for the informed user, it was similar overall to the earlier design.

Forms of order sought

10 The applicant claims that the Court should:

– annul the contested decision;

– order EUIPO and the intervener to pay the costs.

11 EUIPO and the intervener contend that the Court should:

– dismiss the application;

– order the applicant to pay the costs.

Law

12 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation. That plea consists of three parts, alleging errors of assessment made by the Board of Appeal, first, in the definitions of the sector concerned and the informed user, secondly, in determining the designer’s degree of freedom in that sector and, thirdly, in the finding relating to the overall impressions produced by the designs at issue.

13 It should be noted at the outset that, in paragraph 15 of the contested decision, the Board of Appeal stated that the earlier design had been made available to the public before the filing date of the application for registration of the contested design, within the meaning of Article 7(1) of Regulation No 6/2002. That finding is not disputed by the parties. Therefore, the question whether the contested design is devoid of individual character within the meaning of Article 6 of Regulation No 6/2002 must be assessed in the light of the earlier design.

The first part concerning the definitions of the sector concerned and the informed user

14 In paragraph 18 of the contested decision, the Board of Appeal noted that the designs at issue were panels used in the construction sector. Thus, regardless of whether those types of panels should be characterised as ‘noise reduction wall[s]’, as the applicant had claimed in respect of the earlier design, or as ‘fibrous façade panels for buildings’, as is, according to the applicant, more specifically the case of the contested design, they show the same exterior part of a product, namely a building panel. Furthermore, the Board of Appeal considered that, in accordance with Article 10(1) of Regulation No 6/2002, the protection conferred by a Community design extended to ‘any design’ which did not produce a different overall impression on the informed user and, accordingly, a design’s protection did not depend on the nature of the product in which that design was incorporated or to which it was applied. It based that reasoning on the judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles (C‑361/15 P and C‑405/15 P, EU:C:2017:720).

15 In paragraphs 19 to 21 of the contested decision, the Board of Appeal found that the informed user referred to in Article 6 of Regulation No 6/2002 was, in the present case, the professional in the construction sector, such as a constructor, a real estate developer or an architect. That professional has a certain knowledge of various building panels, and displays a relatively high level of attention. The Board of Appeal noted in that regard that the categorisation as ‘fibrous façade panels for buildings’ recommended by the applicant for the sector concerned by the contested design does not substantially influence the definition of the informed user.

16 The applicant takes the view that the Board of Appeal erred in law by failing to define the sector concerned and the informed user more precisely. In its view, the sector concerned by the contested design should be limited to the sector of ‘façade panels for buildings’, which has very specific characteristics, rather than to that of building panels in general. The informed user is therefore the user of ‘façade panels for buildings’ who will generally make a direct comparison of the designs in question by reading magazines and websites or by inspecting the products or samples in retail outlets.

17 The applicant considers, moreover, that the findings in the judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles (C‑361/15 P and C‑405/15 P, EU:C:2017:720), apply only to the expression ‘sector concerned’ in Article 7(1) of Regulation No 6/2002, with the result that they should be understood as indicating that it is not necessary for the informed user of the product in which the contested design is incorporated or to which it is applied to know the earlier design when that design is incorporated into a product of an industrial sector which is different from that concerned by the contested design or is applied to such a product. If all the designs, including those belonging to different sectors, were to be taken into consideration in order to examine the individual character of the contested design, that consideration would be relevant only in the context of the fourth and final stage of the analysis, namely the stage relating to the comparison of the overall impressions of the designs at issue. By contrast, the first three stages of the analysis, relating to the identification of the sector concerned, the informed user and the degree of freedom which the designer enjoys in that sector should be carried out only in relation to the contested design. Furthermore, that judgment allows, or even requires, account to be taken of the products actually marketed in which the contested design is incorporated or to which it must be applied.

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

Applicable principles

19 As a preliminary point, it is necessary to specify, in the light of the different arguments of the parties in that regard, the analytical framework for assessing the individual...