Case T‑68/11

Erich Kastenholz

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community design — Invalidity proceedings — Community design representing watch dials — Earlier unregistered designs — Ground for invalidity — Novelty — Articles 4, 5 and 25(1)(b) of Regulation (EC) No 6/2002 — Individual character — Different overall impression — Articles 4, 6 and 25(1)(b) of Regulation No 6/2002 — Earlier copyright — Article 25(1)(f) of Regulation No 6/2002)

Summary — Judgment of the General Court (Sixth Chamber), 6 June 2013

1.      Judicial proceedings — Measures of inquiry — Expert’s report — Discretion of the General Court

(Rules of Procedure of the General Court, Art. 65)

2.      Community trade mark — Appeals procedure — Action before the EU judicature — Modification of the terms of the dispute as brought before the Board of Appeal — Not permissible

(Rules of Procedure of the General Court, Art. 135(4))

3.      Community designs — Conditions for protection — Overlap of the conditions of novelty and individual character

(Council Regulation No 6/2002, Arts 5 and 6)

4.      Community designs — Grounds for invalidity — No individual character — Design not producing on an informed user a different overall impression from that produced by the earlier design — Informed user — Definition

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

1.      The Rules of Procedure confer on the General Court a discretionary power to decide whether or not to order a measure such as the commissioning of an expert’s report. Under Article 65 of those rules, the Court may order the commissioning of an expert’s report, either of its own motion or on application by a party. Where a request for an expert’s report, made in the application, indicates precisely the reasons why such a measure should be ordered, it is for the Court to assess the relevance of that request in relation to the subject-matter of the dispute and to the need to order such a measure.

(see para. 19)

2.      As set out in Article 135(4) of the Rules of Procedure, the parties’ pleadings may not change the subject-matter of the proceedings before the OHIM Board of Appeal. It is for the Court to review the legality of decisions taken by the Boards of Appeal. Consequently, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal. Likewise, the applicant does not have the power to alter before the Court the terms of the dispute as delimited in the respective claims and allegations submitted by him and by the other party.

(see para. 25)

3.      According to Article 5(2) of Regulation No 6/2002 on Community designs, two designs are to be deemed to be identical if their features differ only in immaterial details, that is to say, details that are not immediately perceptible and that would not therefore produce differences, even slight, between those designs. A contrario, for the purpose of assessing the novelty of a design, it is necessary to assess whether there are any, even slight, non-immaterial differences between the designs at issue.

The wording of Article 6 goes beyond that of Article 5 of Regulation No 6/2002. Consequently, the differences observed between the designs at issue in the context of Article 5 may, especially if they are slight, not be sufficient to produce on an informed user a different overall impression within the meaning of Article 6 of Regulation No 6/2002. In that case, the contested design may be regarded as being new within the meaning of Article 5 of Regulation No 6/2002, but will not be regarded as having individual character within the meaning of Article 6 of the regulation.

By contrast, to the extent that the requirement laid down in Article 6 of Regulation No 6/2002 goes beyond that laid down in Article 5 of the regulation, a different overall impression on the informed user within the meaning of Article 6 can be based only on the existence of objective differences between the designs at issue. Those differences must therefore be sufficient to satisfy the requirement of novelty in Article 5 of Regulation No 6/2002. Consequently, the requirements of novelty and individual character overlap to some extent.

(see paras 37-39)

4.      The informed user within the meaning of Regulation No 6/2002 on Community designs is a person who is particularly observant and who has some awareness of the previous state of the 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 contested design. 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 the 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.

(see paras 57-59)