Language of document : ECLI:EU:T:2019:377

JUDGMENT OF THE GENERAL COURT (Third Chamber)

6 June 2019 (*)

(Community design – Invalidity proceedings – Registered Community design representing a motor vehicle – Earlier Community design – Ground for invalidity – No individual character – Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002)

In Case T‑209/18,

Dr. Ing. h.c. F. Porsche AG, established in Stuttgart (Germany), represented by C. Klawitter, lawyer,

applicant,

v

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

defendant,

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

Autec AG, established in Nuremberg (Germany), represented by M. Krogmann, lawyer,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 19 January 2018 (Case R 945/2016-3), relating to invalidity proceedings between Autec AG and Dr. Ing. h.c. F. Porsche AG,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, N. Półtorak and E. Perillo (Rapporteur), Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 22 March 2018,

having regard to EUIPO’s response lodged at the Court Registry on 13 July 2018,

having regard to the intervener’s response lodged at the Court Registry on 4 July 2018,

having regard to the decision of 7 August 2018 declining to include the applicant’s letter of 23 July 2018 in the case file,

having regard to the decision of 23 August 2018 declining to include the applicant’s letter of 13 August 2018 in the case file,

having regard to the decision of 20 September 2018 declining to join Cases T‑43/18, T‑191/18, T‑192/18, T‑209/18 and T‑210/18,

having regard to the appointment of another judge to complete the Chamber after one of its members was prevented from acting,

having regard to the decision of 14 January 2019 declining to join Cases T‑209/18 and T‑210/18 for the purposes of the oral stage of the procedure,

further to the hearing on 12 February 2019,

gives the following

Judgment

 Background to the dispute

1        On 20 August 2010, the applicant, Dr. Ing. h.c. F. Porsche AG, filed an application for registration of a Community design with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

2        The Community design in respect of which registration was sought (‘the contested design’ or ‘the design of the 991 series “Porsche 911”’) is represented as follows:

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3        The products to which the contested design is intended to be applied are in Class 12-08 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘motor vehicles’.

4        The contested design was published in Community Designs Bulletin No 2010/200 of 6 September 2010, with a priority date of 27 April 2010, and the views of that design were published in Community Designs Bulletin No 2012/172 of 7 September 2012.

5        On 8 July 2014, the intervener, Autec AG, filed an application with EUIPO for a declaration of invalidity in respect of the contested design. That application was made pursuant to Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 4(1) and Articles 5 and 6 of that regulation.

6        The intervener argued in substance that the design of the 991 series ‘Porsche 911’ was neither new nor had individual character, and was therefore prevented from being protected. In support of its application, the intervener claimed, in essence, that the contested design did not differ perceptibly from the other designs of the ‘Porsche 911’ placed on the market since the original 1963 version.

7        The intervener relied in that respect, in particular, on the following Community designs:

–        Community design No 735428-0001 (‘the earlier design’ or ‘the design of the 997 series “Porsche 911”’), registered for ‘motor vehicles’ and published on 23 June 2008, which is reproduced as follows:

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–        Community design No 633748-0001, (registered for ‘cars’ and published on 9 January 2007, which is reproduced as follows:

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8        The intervener also annexed to its application for a declaration of invalidity various press articles on the design of the ‘Porsche 911’.

9        By decision of 10 May 2016, the EUIPO Invalidity Division upheld the application for a declaration of invalidity and declared the contested design invalid for the reason that it lacked individual character.

10      On 23 May 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Invalidity Division.

11      By decision of 19 January 2018 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal on the ground of lack of individual character within the meaning of Article 6(1) of Regulation No 6/2002.

12      The Board of Appeal found, first, that in the case of motor cars the designer’s degree of freedom was constrained by the technical characteristics of the product at issue, such as the fact that it possesses bodywork and wheels, and by the legal requirements, in particular those relating to road safety, such as, for example, the requirement to have headlights, rear-view mirrors and rear lights.

13      The Board of Appeal then found, in contrast, that the designer’s degree of freedom when designing those features imposed by technical functions or statutory requirements was not, as such, subject to any constraint. It also noted that the user of the products at issue was an informed user of motor cars in general, that is to say, a person who drove, used and was familiar with the designs of cars available on the market.

14      In that context, the Board of Appeal took the view that the designs at issue were, ultimately, the same, by reason of their essential characteristics, such as the shape or silhouette of their bodywork, doors and windows.

15      The Board of Appeal therefore found that the existence of the design of the 997 series ‘Porsche 911’ was sufficient to prevent the design of the 991 series of that same car from having individual character and that it was therefore not necessary then to examine Community design No 633748-0001, relied upon by the intervener, nor to inquire into the novelty of the contested design.

 Forms of order sought

16      The applicant claims that the Court should:

–        annul the contested decision;

–        dismiss the application for a declaration of invalidity ‘of … design No 198387-0001’.

17      EUIPO and the intervener claim that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

18      In support of its action, the applicant relies, in substance, on a single plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002 read in conjunction with Articles 5 and 6 of that regulation.

19      In that context, it asserts, in essence, that the overall impression that the contested design produces on an informed user of this kind of car is different from that produced by the earlier design, on which the intervener relies in support of its application for a declaration of invalidity. Indeed, according to the applicant, the ‘external appearance’ of the two designs at issue distinguishes them ‘considerably’ and ‘so clearly’ that the Board of Appeal could not, without making an error of assessment, find that the contested design lacked individual character.

20      Having summarised that plea in law, the Court would recall that, under Article 25(1)(b) of Regulation No 6/2002, a Community design is declared invalid if it does not fulfil the requirements of Articles 4 to 9 of that regulation.

21      Article 4(1) of Regulation No 6/2002 specifies in that respect that a design is to be protected by a Community design to the extent that it is new and has individual character.

 The first part of the single plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002 read in conjunction with Article 6 of the same regulation

22      It is apparent from the wording of Article 6(1)(b) of Regulation No 6/2002 that the individual character of a registered Community design must be assessed initially in the light of the overall impression that it produces on the informed user concerned (see judgment of 25 October 2013, Merlin and Others v OHIM – Dusyma (Games), T‑231/10, not published, EU:T:2013:560, paragraph 28 and the case-law cited). That overall impression must also differ from that produced by any design made available to the public before the date on which the application for registration was filed or, if a priority is claimed, the date of priority.

23      Furthermore, Article 6(2) of Regulation No 6/2002 states that, in that assessment of individual character, the degree of freedom of the designer in developing the design should be taken into consideration.

24      Having summarised those statutory requirements, the Court notes that the relevant case-law states, in that regard, that the individual character of a design must be apparent from an overall impression of difference or lack of any sense of ‘déjà vu’ in relation to any earlier design, from the perspective of an informed user. Accordingly, differences that are insufficiently marked to affect that overall impression cannot be taken into account, and only differences that are sufficiently marked to create dissimilar overall impressions can be decisive (see judgment of 7 November 2013, Budziewska v OHIM – Puma (Bounding feline), T‑666/11, not published, EU:T:2013:584, paragraph 29 and the case-law cited).

25      In the light of the foregoing, it is therefore necessary to examine whether, from the standpoint of an informed user and having regard for the degree of freedom available to the designer in the present case, the overall impression produced by the contested design differs from that produced by the earlier design.

 The informed user

26      As regards interpreting the notion of the informed user, it should be found first of all that being an ‘informed user’ implies that the person concerned uses the product in which the design is incorporated in accordance with that product’s intended use. The qualifier ‘informed’ also suggests that, without necessarily being a technical expert, the user in question 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 (judgments of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59, and of 28 September 2017, Rühland v EUIPO – 8 seasons design (Lamp in the form of a star), T‑779/16, not published, EU:T:2017:674, paragraph 19).

27      The concept of the ‘informed user’ must therefore be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks at issue, and the sectoral expert, that is to say, an expert with certain technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one in relation to the products concerned, either because of his personal experience or his extensive knowledge of the sector in question (see, to that effect, judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 53).