JUDGMENT OF THE GENERAL COURT (Third Chamber, Extended Composition)
8 May 2024 (*)
(Community design – Invalidity proceedings – Registered Community design representing a shoe – Earlier Community designs – Grounds for invalidity – Individual character – Article 25(1)(b) and Article 6(1) of Regulation (EC) No 6/2002)
In Case T‑758/22,
Puma SE, established in Herzogenaurach (Germany), represented by M. Schunke and P. Trieb, lawyers,
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 being
Fujian Daocheng Electronic Commerce Co. Ltd, established in Quanzhou (China),
THE GENERAL COURT (Third Chamber, Extended Composition),
composed of F. Schalin (Rapporteur), President, P. Škvařilová-Pelzl, I. Nõmm, G. Steinfatt and D. Kukovec, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 18 October 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Puma SE, seeks the annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 September 2022 (Case R 1876/2021-3) (‘the contested decision’).
Background to the dispute
2 On 1 April 2021, the applicant filed with EUIPO an application for a declaration of invalidity of the Community design registered following an application filed by Fujian Daocheng Electronic Commerce Co. Ltd on 23 December 2020 and represented in the following views:
3 The product in which the contested design is intended to be incorporated was in Class 02.04 of the Locarno Agreement of 8 October 1968 Establishing an International Classification for Industrial Designs, as amended, and corresponded to the following description: ‘Footwear’.
4 The ground relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), read in conjunction with Article 6(1) of that regulation.
5 The application for a declaration of invalidity was based on a lack of individual character of the contested design, in respect, inter alia, of the following earlier designs and products:
– earlier design No 1286116-0005 (‘D 1’):
– earlier design No 1286116-0006 (‘D 2’):
– earlier design No 1286116-0003 (‘D 3’):
– earlier design No 1286116-0002 (‘D 4’):
– earlier design No 1286116-0001 (‘D 5’):
– the product ‘NRGY v2’ of the mark PUMA in the ‘Run/Train/Fit A/W 2016’ catalogue (‘D 6’):
– the product ‘Mega NRGY Knit’ in the ‘Run/Train/Fit A/W 2017’ catalogue (‘D 7’):
6 On 10 September 2021, the Invalidity Division rejected the application for a declaration of invalidity of the contested design on the ground that that design had individual character.
7 On 8 November 2021, the applicant brought an appeal before EUIPO against the decision of the Invalidity Division.
8 By the contested decision, the Board of Appeal dismissed the appeal. First, the Board of Appeal found, in essence, that the earlier designs D 1 to D 7 had been disclosed to the public within the meaning of Article 7(1) of Regulation No 6/2002. Secondly, as regards the definition of the informed user within the meaning of Article 6 of Regulation No 6/2002, the Board of Appeal found that the informed user was a person who habitually purchased shoes and paid a relatively high level of attention. Thirdly, concerning the degree of design freedom, the Board of Appeal observed that the designer had a high degree of freedom in designing footwear and, more specifically, in designing the structure, shape, material, colour, patterns and decorative elements. Fourthly, with regard to the overall impression, it found that the contested design and the earlier designs D 1 to D 7 produced a different overall impression on the informed user. The Board of Appeal therefore concluded that there had been no need to declare the contested design invalid pursuant to Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6(1) of that regulation.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decision and declare the contested design invalid;
– order EUIPO to pay the costs, including those incurred before the Board of Appeal.
10 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
Law
Second part of the applicant’s first head of claim
11 By the second part of the first head of claim, the applicant requests the Court to declare the contested design invalid.
12 In that respect, it must held that, by that request, the applicant made a request for alteration, pursuant to Article 61(3) of Regulation No 6/2002, asking the Court to adopt the decision which the Board of Appeal should have taken (see, to that effect, judgment of 7 February 2018, Şölen Çikolata Gıda Sanayi ve Ticaret v EUIPO – Zaharieva (Packaging for ice-cream cornets), T‑794/16, not published, EU:T:2018:70, paragraph 84 and the case-law cited).
Substance
13 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(1) of that regulation, in so far as, in essence, the Board of Appeal failed to have regard to the scope of protection of the earlier designs and erred in finding that the contested design was individual.
14 Pursuant to Article 25(1)(b) of Regulation No 6/2002, a Community design may be declared invalid if it does not fulfil the requirements of Articles 4 to 9 of that regulation and, in particular, the requirements relating to novelty and individual character.
15 According to Article 6(1)(b) of Regulation No 6/2002, a registered Community design is to be 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.
16 The assessment of the individual character of a Community design is carried out, in essence, in four stages. That examination consists in deciding upon, first, the sector to which the products in which the design is intended to be incorporated or to which it is intended to be applied belong; secondly, the informed user of those products in accordance with their purpose and, with reference to that informed user, the degree of awareness of the prior art and the level of attention to the similarities and the differences in the comparison of the designs; thirdly, the designer’s degree of freedom in developing his or her design, the influence of which on individual character is in inverse proportion; and, fourthly, taking that degree of freedom into account, the outcome of the comparison, direct if possible, of the overall impressions produced on the informed user by the contested design and by any earlier design which has been made available to the public, taken individually (see judgment of 13 June 2019, Visi/one v EUIPO – EasyFix (Display holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 66 and the case-law cited).
17 It is in the light of those principles that it is appropriate to assess whether, in the present case, the Board of Appeal was right in finding that the contested design had individual character.
Disclosure of the earlier designs, informed user and designer’s degree of freedom
18 First of all, as regards disclosure of the earlier designs, the Board of Appeal found, in essence, in paragraph 25 of the contested decision, that, first, it was apparent from print-outs from EUIPO’s ‘eSearch’ database, as regards the earlier designs D 1 to D 5, and, secondly, from catalogue extracts, as regards the earlier designs D 6 and D 7, that they had been sufficiently disclosed to be taken into consideration in the assessment of the contested design’s validity.
19 Next, the Board of Appeal found, in paragraph 27 of the contested decision, that the contested design was intended to be applied to shoes and that, consequently, on account of his or her interest in shoes, the informed user would display a relatively high level of attention when using them.
20 Lastly, in paragraph 30 of the contested decision, the Board of Appeal found that the designer’s degree of freedom was high to the extent that it was restricted only in so far as shoes needed to follow the ergonomics of feet, provide firmness, postural steadiness and to be comfortable and safe for the user. Nevertheless, the designer is free to choose, inter alia, the shape, material, colour, patterns and decorative elements.
21 The Board of Appeal’s findings, which appear to be correct in the light of the evidence in the case file and which, moreover, are not disputed by the parties, must be upheld.
Relevant elements of the designs at issue
22 The applicant submits that the earlier designs D 1 to D 5 are registered with the indication ‘soles for footwear’ and that the graphic representation of the rest of the shoe, which appears in broken lines in those earlier designs, is there only in order to indicate to the observer how the sole will be attached to the rest of the shoe. Consequently, the comparison of the contested design with the earlier designs D 1 to D 5 could be made only on the basis of the soles of the shoes, which form the essential element of the shoe, because, if that were not the case, the protection of those elements would be ineffective.
23 EUIPO disputes the applicant’s arguments.
24 In the present case, the applicant disputes the fact that, in the comparison of the overall impressions of the designs at issue, the upper of the contested design, and also the elements in broken lines in the earlier designs D 1 to D 5 had been taken into consideration. It is appropriate to examine in turn those two complaints for the purpose of determining the relevant elements to be taken into account in the comparison of the overall impressions of the designs at issue.
– Relevant elements to be taken into account in the contested design
25 It should be recalled that, pursuant to Article 6 of Regulation No 6/2002, the comparison of the overall impression produced by the designs at issue must be made in the light of the overall appearance of each of those designs (judgment of 28 October 2021, Ferrari, C‑123/20, EU:C:2021:889, paragraph 46).
26 However, pursuant to Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, the comparison of the overall impressions produced by the designs at issue must take as a basis the features disclosed in the contested design and must relate solely to the protected features of that design, without taking account of the features, in particular technical features, excluded from the protection (see, to that effect, judgment of 10 November 2021, Eternit v EUIPO – Eternit Österreich (Building panels), T‑193/20, EU:T:2021:782, paragraph 72 and the case-law cited).
27 In that respect, the fact that the earlier design would disclose additional elements which are not present in the contested design is irrelevant for the comparison of the designs at issue (see, to that effect, judgments of 21 June 2018, Haverkamp IP v EUIPO – Sissel (Pebble beach surface pattern), T‑228/16, not published, EU:T:2018:369, paragraph 38, and of 10 November 2021, Building panels, T‑193/20, EU:T:2021:782, paragraph 82 and the case-law cited).
28 Accordingly, to carry out the comparison between the designs at issue, the elements which are actually protected by the contested design and which are thus relevant in that regard must be determined (judgment of 21 June 2018, Pebble beach surface pattern, T‑228/16, not published, EU:T:2018:369, paragraph 37).
29 In the present case, it must be held that the contested design has been registered with the indication ‘footwear’ and that the design displays different views of a complete shoe model, as follows from paragraph 2 above.
30 Therefore, in the light of the case-law cited in paragraphs 25 to 28 above, in respect of the comparison between the contested design and the earlier designs, all of the elements actually protected by the contested design, which represents a complete shoe consisting of both a sole and an upper of a shoe must be taken into account.
31 The comparison between the designs at issue may not therefore be restricted to comparing only the appearance of the sole of the contested design with the sole present in the earlier designs D 1 to D 5, which is the only protected part of those earlier designs.
32 The applicant claims that such a solution results in calling into question the protection as a design of only a part of a product. However, it is appropriate to note that the examination of the ground for invalidity referred to in Article 25(1)(b) of Regulation No 6/2002, contrary to that referred to in Article 25(1)(e) of that regulation or contrary to infringement proceedings, is not part of the rationale of protection of an earlier right. The ground for invalidity referred to in Article 25(1)(b) of Regulation No 6/2002 consists solely in determining whether the contested design satisfies the conditions for registration set out in Articles 4 to 9 of that regulation.
33 However, taking the protected features of the earlier design as a basis, as the applicant would wish, instead of those of the contested design, would amount to excluding from the comparison the elements of the contested design which are protected. This would result in not ascertaining whether that design satisfies, in its entirety, the requirements for protection, which would thus be contrary to Article 4 of Regulation No 6/2002.
34 In addition, as regards the applicant’s argument that the sole is the essential element of a shoe, it should be recalled that, according to the case-law, it is possible that, in the comparison of the designs, the overall impression produced by each of them may be dominated by certain features of the products or parts of the products concerned. In order to determine whether a given feature dominates a product, or part of a product, it is necessary to evaluate the degree of influence that the different features of the product or of the part at issue exercise on the appearance of that product or of that part (see, to that effect, judgment of 25 October 2013, Merlin and Others v OHIM – Dusyma (Games), T‑231/10, not published, EU:T:2013:560, paragraph 36).
35 It must be pointed out, as EUIPO observed, that the applicant has not stated why the sole should be regarded as the essential element of a shoe, which could in itself be the basis for the comparison. Moreover, assuming that, from a purely technical point of view this were the case, that finding is not relevant in the protection of a design since, contrary to patents, only the appearance is protected.
36 In the present case, there is no reason to take the view that, from a purely visual point of view, the sole constitutes, for the informed user, a feature which is predominant in relation to the rest of the shoe. At the very most, the sole will be as significant as the upper in the overall visual impression of the shoe.
37 Accordingly, in the light of the case-law cited in paragraph 34 above, it cannot be held that the overall impression between the designs at issue will be dominated by the appearance of the soles.
– Relevant elements to be taken into account in the earlier designs D 1 to D 5
38 Although EUIPO’s Guidelines on the Examination of applications for registered Community designs lack binding force, they are a reference source on EUIPO’s practice in respect of designs (see, by analogy, judgment of 8 June 2022, Muschaweck v EUIPO – Conze (UM), T‑293/21, EU:T:2022:345, paragraph 38). In that respect, Section 5.4 of those guidelines, in the version applicable on 31 March 2023, provides as follows:
‘Visual disclaimers indicate that protection is not being sought, and registration has not been granted, for certain features of the design shown in the representation. Thus, they indicate what is not intended to be protected. This can be achieved[, inter alia,] by excluding with broken lines, blurring or colour shading the features of the design for which protection is not sought …’
39 In the present case, the earlier designs D 1 to D 5 are registered with the product indication ‘soles for footwear’ and reproduce, as is apparent from paragraph 5 above, the appearance of a sole of a shoe with the appearance of an upper of a shoe in broken lines. It must be held that no protection has been claimed in respect of the upper referred to in broken lines.
40 As is clear from the case-law cited in paragraph 26 above, the comparison of the overall impressions produced by the designs at issue must take as a basis the features disclosed and protected in the contested design, which include the appearance of a sole and of an upper of a shoe.
41 Therefore, it is appropriate to establish whether the appearance of the shoe upper of the earlier designs D 1 to D 5 may also be taken into consideration in the comparison of the overall impressions produced by the designs at issue, notwithstanding the fact that they are not features in respect of which protection has been claimed.
42 In that regard, it is apparent from recital 14 of Regulation No 6/2002 that the assessment as to whether a design has individual character under Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 thereof, should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus (judgment of 16 June 2021, Davide Groppi v EUIPO – Viabizzuno (Table lamp), T‑187/20, EU:T:2021:363, paragraph 25).
43 In the context of the examination of the ground for invalidity referred to in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 thereof, the sole function of the earlier design is to reveal the state of the prior art, that is to say the corpus of previous designs relating to the product in question that were disclosed on the date of filing of the contested design. However, the fact that a prior design belongs to that corpus of previous designs is the result of the mere disclosure of that design (see judgment of 16 June 2021, Table lamp, T‑187/20, EU:T:2021:363, paragraph 26 and the case-law cited).
44 Accordingly, in order to determine whether the elements of an earlier design may be taken into account, it is not necessary to focus on the subject of the protection of that design, but solely on the question whether those elements have been disclosed.
45 In that regard, Article 7(1) of Regulation No 6/2002 states that a design is to be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Article 6(1)(b) of Regulation No 6/2002, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union.
46 Moreover, in order for the making available to the public of a design to entail the making available of all of its elements, it is essential that those elements appear clearly and precisely when the design is made available (see, to that effect, judgment of 28 October 2021, Ferrari, C‑123/20, EU:C:2021:889, paragraphs 38 and 39).
47 In the present case, the applicant did not dispute that the disclaimed elements of the earlier designs D 1 to D 5, namely the appearance of a shoe upper in broken lines, had also been disclosed at the same time as the protected part of those designs. Furthermore, it must be noted that the disclaimed elements of the earlier designs D 1 to D 5 appear sufficiently clear and precise to perceive, without any interpretative effort, the appearance of a shoe upper and of various parts such as, inter alia, the heel counter, the laces or also the arch.
48 Consequently, the Board of Appeal was right in finding, in paragraph 32 of the contested decision, that the disclaimed features of the earlier designs D 1 to D 5 could be taken into account in order to assess the individual character of the contested design.
Overall impression
49 The applicant submits, first, that the contested design and the earlier designs have the same features in the sole and, secondly, that the features of the midsole of the contested design are identical to those of the earlier design D 7.
50 In the alternative, the applicant asserts that a comparison of all the designs at issue is possible only with the earlier designs D 6 to D 7, which give the same overall impression as the contested design. In that regard, the applicant disputes the consideration, in paragraph 42 of the contested decision, of the stripe with a wide horizontal base which tapers to a thinner line on the side, which is found in the earlier design D 6, since it concerns an EU trade mark. Likewise, the applicant disputes the consideration, in paragraph 43 of the contested decision, of the arrangement of the laces in the designs at issue in so far as they are movable parts.
51 Furthermore, the applicant claims that, contrary to what the Board of Appeal found, the earlier designs D 6 and D 7, in the same way as the contested design, also have a loop to hold the laces on the tongue.
52 Lastly, the applicant also disputes the Board of Appeal’s assessment that the upper of the contested design is thicker and more curved than the thinner upper of the earlier designs D 6 and D 7. According to the applicant, those differences are not apparent from the illustrations and could not lead to a different overall impression.
53 EUIPO disputes the applicant’s arguments.
54 According to settled case-law, the individual character of a design results from an overall impression of difference or lack of ‘déjà vu’, from the point of view of an informed user, in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions (see judgment of 16 February 2017, Antrax It v EUIPO – Vasco Group (Thermosiphons for radiators for heating), T‑828/14 and T‑829/14, EU:T:2017:87, paragraph 53 and the case-law cited).
55 Moreover, it follows from the case-law that the comparison of the overall impressions produced by the designs must be synthetic and may not be limited to an analytic comparison of a list of similarities and differences (judgment of 29 October 2015, Roca Sanitario v OHIM – Villeroy & Boch (Single control handle faucet), T‑334/14, not published, EU:T:2015:817, paragraph 58).
56 In addition, since the word and figurative elements on the designs at issue are marks or distinctive signs affixed to the product to indicate its origin, they do not have an ornamental or decorative function and do not constitute features of the product giving the goods concerned their appearance, for the purposes of Article 3(a) and (b) of Regulation No 6/2002. Those elements are irrelevant in the comparison of the overall impressions for the purpose of establishing the individual character of the contested design (see, to that effect, judgment of 10 November 2021, Sanford v EUIPO – Avery Zweckform (Labels), T‑443/20, EU:T:2021:767, paragraph 80).
57 As a preliminary point, it should be noted that – as is apparent from paragraphs 31 and 48 above – (i) the disclaimed features present in the earlier designs D 1 to D 5 must be taken into account, since those features have been disclosed and appear clearly and precisely and (ii) the comparison of the designs at issue may not be restricted, contrary to what the applicant claims, to comparing the soles of the designs.
58 Furthermore, as follows from paragraph 37 above, it is not necessary, in respect of the overall impression of the designs at issue, to attach more significance to any part of the shoe in particular.
– The comparison between the contested design and the earlier designs D 1 and D 2
59 The Board of Appeal found, in paragraph 34 of the contested decision, that the designs at issue coincided only in the presence of five pairs of eyelets for the laces and a textured sole of decreasing thickness and that their differences were sufficient to produce different overall impressions on the informed user.
60 In that regard, the Board of Appeal found, in paragraph 35 of the contested decision, that the contested design differed from the earlier designs D 1 and D 2, inter alia, in the presence of an upper which features a low-cut collar, a raised Achilles tab, a prominent tongue, a pull tab, a loop to hold the laces on the tongue and a decoration in a colour gradient, from the darkest at the tip to the lightest at the heel, with several oblong elements on the sides. In addition, the contested design has crossed laces resulting in a more sporty look than that of the earlier designs D 1 and D 2.
61 The Board of Appeal also observed, in paragraphs 35 and 36 of the contested decision, that, contrary to the contested design, the earlier designs D 1 and D 2 displayed two distinct patches at the heel counter and on the toe box and that the sole was composed of only one layer which did not overhang at the heel and which did not seem to taper at the toe box.
62 The foregoing findings of the Board of Appeal must be upheld.
63 It is true that the designs at issue may share certain visual features, in particular, as regards the texture of the sole of the earlier design D 1. However, the contested design differs mainly from the earlier designs D 1 and D 2 in the decoration of the upper, in a low-cut collar, in the presence of an undersole, in a thick sole at the heel, which decreases towards the tip and, lastly, in a midsole which overhangs at the heel, composed of two layers with a prominent line between the two. Those main differences are sufficient to confer a different overall impression on the designs at issue which will not escape the attention of an informed user demonstrating a high level of attention.
64 The applicant’s arguments are not capable of calling the foregoing considerations into question.
65 The applicant relied solely on the comparison between the soles in the designs at issue, submitting that they shared the same features including, inter alia, a sole which tapered slightly from the heel area to the tip of the shoe and moved slightly upwards, a surface which has a structure comparable to that of polystyrene, different plain white individual modules next to each other, a structure that extended uniformly across the entire side view of the sole and a sole on top of an undersole.
66 However, the differences identified in paragraph 63 above are more noticeable than the shared features identified by the applicant and are sufficient to create different overall impressions between the designs at issue. That finding is based, in particular, on the fact that, contrary to the applicant’s assessments, the Board of Appeal’s assessments are not founded solely on the comparison of the soles and that the uppers of the designs at issue have significant differences which make it possible to produce different overall impressions on the informed user.
67 In addition, as regards the applicant’s argument that the Board of Appeal was wrong in taking into account the arrangement of the laces in the overall impression produced by the designs at issue, it must be held that such an argument, even if proved, is not capable of calling into question the foregoing considerations, since the different arrangement of the laces between those designs has only little effect on the resulting overall impression.
– The comparison between the contested design and the earlier designs D 3 to D 5
68 The Board of Appeal found, in paragraph 39 of the contested decision, that the contested design differed from the earlier designs at issue, inter alia, in a decoration in a colour gradient, from the darkest at the tip to the lightest at the heel, with several oblong elements on the sides, a pull tab, a loop to hold the laces on the tongue and flat laces laced in a crisscross pattern. Furthermore, the contested design has a raised Achilles tab and the toe box is wider and thicker than in the earlier designs D 3 to D 5.
69 The Board of Appeal also noted, in the same paragraph, that, contrary to the contested design, the earlier designs displayed two distinct patches at the heel counter and on the toe box and that the laces were tied in a straight configuration.
70 As regards, more specifically, the sole, the Board of Appeal found, in paragraph 40 of the contested decision, that the contested design had a sole with two distinct layers and a prominent overhang at the heel and that it joined smoothly with the upper. By contrast, the soles of the earlier designs D 3 to D 5 are composed of one layer and their overhang at the heel is less than in the contested design. In addition, according to the Board of Appeal, the undersole of the contested design covers the whole base of the sole and has pointed treads, whereas the undersole of the earlier design D 4 covers only a part, and the undersole of the earlier design D 3 has fewer treads. The earlier design D 5 does not have an undersole with treads.
71 Consequently, the Board of Appeal found, in paragraph 41 of the contested decision, that the overall impression produced by the contested design on the informed user was different to those produced by the earlier designs D 3 to D 5.
72 The foregoing findings of the Board of Appeal must be upheld.
73 It is true that the designs at issue may share certain visual features. However, the contested design differs mainly from the earlier designs D 3 to D 5 in the decoration of the upper, in a low-cut collar, in a thick sole at the heel, which decreases towards the tip and, lastly, in a midsole composed of two layers with a prominent line between the two. Those main differences are sufficient to confer a different overall impression on the designs at issue which will not escape the attention of an informed user demonstrating a high level of attention.
74 The applicant’s arguments are not capable of calling the foregoing considerations into question.
75 The shared features of the designs at issue which are put forward by the applicant, as set out mutatis mutandis in paragraph 65 above, are not capable of offsetting the different overall impression of those designs. That finding is based, in particular, on the fact that the Board of Appeal’s assessments of the action are not founded solely on the comparison of the soles and that the uppers of the designs at issue display significant differences which make it possible to produce different overall impressions on the informed user.
76 In addition, as has already been stated in paragraph 67 above, the consideration of the arrangement of the laces in those designs is not capable of calling into question the finding of a different overall impression given by the contested design compared with the earlier designs D 3 to D 5.
– The comparison between the contested design and the earlier designs D 6 and D 7
77 In paragraph 42 of the contested decision, the Board of Appeal observed that the designs at issue differed in the upper. In particular, it noted that the earlier design D 6 revealed a stripe with a wide horizontal base which tapered to a thinner line on its side and that the earlier design D 7 revealed a contrasting triangle on its side formed by the front part of the upper and surrounded by a number of parallel lines. By contrast, the contested design has a colour gradient, from the darkest at the tip to the lightest at the heel, with several oblong elements on the sides and a verbal element on the tongue.
78 As regards the configuration of the upper, the Board of Appeal found, in paragraph 43 of the contested decision, that the contested design had five pairs of eyelets, crisscrossed flat laces and a loop to hold the laces on the tongue of the shoe. By contrast, it noted that the earlier designs D 6 and D 7 had only three pairs of eyelets and different lace hoops, in so far as a thick band was present down the front of the tongue in the earlier design D 6 and there was no loop in the earlier design D 7, and that they also featured a pull tab at the top of the tongue. Furthermore, the upper of the contested design is thicker and more curved than the thinner and sharper upper of the earlier designs D 6 and D 7.
79 Lastly, as regards, the bottom of the sole, the Board of Appeal found, in paragraph 44 of the contested decision, that the contested design had a specific pattern, consisting of rectangular contrasting spots, whereas the earlier designs D 6 and D 7 displayed a number of bands and lines and a sparse pattern of triangular contrasting spots, respectively. The Board of Appeal therefore found that, as a result of those patterns, the contested design had prominent treads in its undersole, whereas the earlier design D 7 appeared to have smaller and smoother treads and the earlier design D 6 had no treads at all.
80 Consequently, the Board of Appeal concluded, in paragraph 45 of the contested decision, that the contested design produced a different overall impression on the informed user.
81 The foregoing findings of the Board of Appeal must be upheld.
82 It is true that the designs at issue may share certain visual features, in particular, as regards the texture of the sole of the earlier design D 6. However, the contested design differs mainly from the earlier design D 6, in the presence of an undersole, in the decoration of the upper, in a low-cut collar, in the absence of a prominent tongue and, lastly, in a midsole which overhangs at the heel, composed of two layers with a prominent line between the two. As regards the earlier design D 7, the contested design differs mainly in the decoration of the upper, in a low tongue, in the presence of eyelets and, lastly, in a lower-cut collar. Those main differences are sufficient to confer a different overall impression on the designs at issue which will not escape the attention of an informed user demonstrating a high level of attention.
83 The applicant’s arguments are not capable of calling the foregoing considerations into question.
84 The shared features of the designs at issue which are put forward by the applicant, as set out mutatis mutandis in paragraph 65 above, are not capable of offsetting the different overall impression produced by those designs. In that regard, the applicant also maintained that the undersole of the contested design had the same features as the undersole of the earlier design D 7, since they both displayed small white patterns on the front and back part of the sole. However, although it is true that an impression of déjà vu may follow from the comparison of the bottom of the shoe, it must be held that that impression is offset by the differences existing between the designs at issue as referred to in paragraph 82 above.
85 Moreover, contrary to what the applicant claims, it must be pointed out that the Board of Appeal did not make an error of assessment by taking into account the ‘stripe with a wide horizontal base which [tapered] to a thinner line’, corresponding to an EU trade mark, since that figurative sign contributes greatly, in particular, on account of its size and, more specifically, of its ornamentation, to the appearance of the earlier design D 6 (see, to that effect, judgment of 10 November 2021, Labels, T‑443/20, EU:T:2021:767, paragraph 80).
86 The applicant also disputed the fact that the Board of Appeal had found that the earlier designs D 6 and D 7 had no loop to hold the laces on the tongue. As regards the earlier design D 6, contrary to what the applicant claims, the Board of Appeal noted, in paragraph 43 of the contested decision, that, as regards the lace hoop, the contested design did have a thick band down the front of the tongue. As regards the earlier design D 7, the Board of Appeal stated that that design did not appear to have a loop. Even if it should be noted, as the applicant submits, that such a loop is present on the earlier design D 7, that loop largely differs from that present on the contested design. Therefore, failure to take it into consideration is not capable of calling into question the finding of a different overall impression produced by the contested design in the eyes of the informed user.
87 Lastly, contrary to what the applicant claims, the Board of Appeal did not make an error of assessment in finding, in paragraph 43 of the contested decision, that the contested design had a thicker and more curved upper than the upper of the earlier designs D 6 and D 7. Their upper appears longer and flatter than that of the contested design. Furthermore, those features are sufficiently apparent from the designs at issue and contribute to their different overall impression.
88 The Board of Appeal was therefore right in finding that the contested design produced a different overall impression from that produced by the earlier designs D 1 to D 7.
89 It follows from the foregoing that none of the earlier designs relied on by the applicant produces the same overall impression as that produced by the contested design and that the contested decision is not vitiated by any ground for annulment or alteration.
90 Accordingly, the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
91 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
92 Since a hearing was convened and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber, Extended Composition)
hereby:
1. Dismisses the action;
2. Orders Puma SE to pay the costs.
Schalin | Škvařilová-Pelzl | Nõmm |
Delivered in open court in Luxembourg on 8 May 2024.
V. Di Bucci | | S. Papasavvas |