Joined Cases T‑83/11 and T‑84/11

Antrax It Srl

v

Office for Harmonisation in the Internal Market

(Trade Marks and Designs) (OHIM)

(Community design — Invalidity proceedings — Registered Community designs representing thermosiphons for radiators for heating — Earlier design — Ground for invalidity — Lack of individual character — No different overall impression — Articles 6 and 25(1)(b) of Regulation (EC) No 6/2002 — Saturation of the state of the art — Duty to state reasons)

Summary — Judgment of the General Court (Second Chamber), 13 November 2012

1.      Community designs — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the facts in the light of evidence produced for the first time before it — Exclusion

(Council Regulation No 6/2002, Art. 61)

2.      Community designs — Grounds for invalidity — Lack of individual character — Informed user — Concept

(Council Regulation No 6/2002, Arts 6(1) and 25(1)(b))

3.      Community designs — Grounds for invalidity — Lack of individual character — Design which does not produce a different overall impression on an informed user from that produced by an earlier design — Criteria for assessment — Designer’s freedom

(Council Regulation No 6/2002, Arts 6(2) and 25(1)(b))

4.      Community designs — Grounds for invalidity — Lack of individual character — Design which does not produce a different overall impression on an informed user from that produced by an earlier design — Saturation of the state of the art — Relevance

5.      Community designs — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits

(Council Regulation No 6/2002, Art. 61)

1.      See the text of the decision.

(see para. 28)

2.      The term ‘informed user’, within the meaning of Article 6 of Regulation No 6/2002 of 12 December 2001 on Community designs, does not refer to either a manufacturer or a seller of the product in which the design concerned is intended to be incorporated or to which it is intended to be applied. The informed user is a person who is particularly observant and has some awareness of the state of the prior art, that is to say, the previous designs relating to the product in question that had been disclosed on the date of filing of the design concerned.

Furthermore, the status of ‘user’ implies that the person concerned uses the product in which the design is incorporated in accordance with the purpose for which that product is intended.

The qualifier ‘informed’ suggests, in addition, that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.

However, that factor does not imply that the informed user is able to distinguish, beyond the experience which he has gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product’s technical function from those which are arbitrary.

(see paras 36-39)

3.      The designer’s degree of freedom in developing a design is established, inter alia, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product to which the design is applied. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned.

Therefore, the greater the designer’s freedom in developing a design, the less likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression on an informed user. Conversely, the more the designer’s freedom in developing a design is restricted, the more likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs being compared which do not have significant differences produce the same overall impression on an informed user.

(see paras 44, 45)

4.      A saturation of the state of the art, deriving from the existence of other designs which have the same overall features as the designs at issue, is relevant in assessing individual character, in so far as it may be capable of making the informed user more attentive to the differences in the internal proportions of those different designs.

(see para. 89)

5.      The power of the General Court to alter decisions does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position, and exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take.

(see para. 92)