Language of document : ECLI:EU:T:2019:379

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

6 June 2019 (*)

(Community design – Invalidity proceedings – International registration designating the European Union – Registered Community design representing the motor vehicle VW Caddy – Earlier Community design – Ground for invalidity – Individual character – Informed user – Different overall impression – Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002 – Burden of proof on the applicant for a declaration of invalidity – Requirements relating to the reproduction of an earlier design)

In Case T‑192/18,

Rietze GmbH & Co. KG, established in Altdorf (Germany), represented by M. Krogmann, 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, intervener before the General Court, being

Volkswagen AG, established in Wolfsburg (Germany), represented by C. Klawitter, lawyer,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 11 January 2018 (Case R 1244/2016-3), concerning invalidity proceedings between Rietze and Volkswagen,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins (Rapporteur), President, M. Kancheva and G. De Baere, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 16 March 2018,

having regard to the response of EUIPO lodged at the Registry of the General Court on 31 May 2018,

having regard to the response of the intervener lodged at the Registry of the General Court on 29 May 2018,

further to the hearing on 24 January 2019,

gives the following

Judgment

 Background to the dispute

1        The intervener, Volkswagen AG, is the holder of the international registration designating the European Union in respect of the design filed on 1 February 2010 and registered the same day under reference DM/073118-3 at the International Bureau of the World Intellectual Property Organisation (WIPO), and published in the Bulletin of the International Bureau of the WIPO of 31 October 2010 (‘the contested design’).

2        The goods 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’. The contested design is represented as follows:


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3        On 5 January 2015, the applicant, Rietze GmbH & Co. KG, which sells model cars, filed an application at the European Union Intellectual Property Office (EUIPO) for a declaration of invalidity of the effects of the contested design in the European Union, based on Article 106(f) 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 25(1)(b) of that regulation, on the grounds that the contested design lacked novelty, under Article 5 of that regulation, and individual character, under Article 6 of that regulation.

4        In support of its application for a declaration of invalidity, the applicant argued that the contested design was a design for the multipurpose vehicle VW Caddy, placed on the market by the intervener in 2011. In order to prove the disclosure of an earlier design, the applicant sent a previous design of that vehicle, namely the VW Caddy (2K) Life model, placed on the market by the intervener in 2004. The applicant based its application on, inter alia, Community design No 49895-0002, in respect of which the intervener had applied for registration on 7 July 2003, and which was registered and published on 9 December 2003 (‘the earlier design’).

5        By decision of 20 June 2016, the Invalidity Division of EUIPO declared the contested design invalid on the ground that it lacked individual character, under Article 6 of Regulation No 6/2002.

6        On 7 July 2016, the intervener lodged an appeal under Articles 55 to 60 of Regulation No 6/2002 against the decision of the Invalidity Division.

7        By decision of 11 January 2018 (Case R 1244/2016-3) (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the appeal, annulled the decision of the Invalidity Division and rejected the application for a declaration of invalidity of the contested design. The Board of Appeal held that the contested design was new within the meaning of Article 5 of Regulation No 6/2002 and had individual character within the meaning of Article 6 of that regulation.

 Forms of order sought

8        The applicant claims that the Court should:

–        annul the contested decision;

–        declare the contested design invalid;

–        order EUIPO to pay the costs.

9        EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

10      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 4(1) and Article 6 of that regulation. In essence, it criticises the Board of Appeal for holding that the contested design had individual character because the overall impression which it produced on the informed user was different from the overall impression which the earlier design produced on that user.

11      That single plea is divided into four parts. In the first place, the Board of Appeal was wrong to confine itself to merely listing the supposed differences between the designs at issue without weighting them and without distinguishing between the aesthetic and technical features. In the second place, it overestimated the level of attention of the informed user and, consequently, attached too much importance to the differences between the designs at issue. In the third place, it erred as regards the assessment of the degree of freedom of the designer. Finally, in the fourth place, it failed to take certain evidence into consideration.

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

13      As a preliminary point, it should be recalled that Council Regulation (EC) No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs (OJ 2006 L 386, p. 14), introduced into Regulation No 6/2002 Title XIa, containing Article 106a to 106f.

14      Under Article 106a of Regulation No 6/2002, any recording of an international registration designating the European Union in the International Register kept by the International Bureau of WIPO is to have the same effect as if it had been made in the register of Community designs of EUIPO, and any publication of an international registration designating the European Union in the Bulletin of the International Bureau of the WIPO is to have the same effect as if it had been published in the Community Designs Bulletin.

15      Article 106f of Regulation No 6/2002 provides that the effects of an international registration in the European Union may be declared invalid partly or in whole by EUIPO, in accordance with the procedure in Titles VI and VII of Regulation No 6/2002.

16      Article 25(1)(b) of Regulation No 6/2002 provides that a Community design may be declared invalid if it does not fulfil the requirements of Articles 4 to 9 of that regulation.

17      Under Article 4 of Regulation No 6/2002, a design is to be protected by a Community design only to the extent that it is new and has individual character.

18      Under Article 6(1)(b) of Regulation No 6/2002, individual character is to be assessed, in the case of a registered Community design, in the light of the overall impression produced on the informed user, which must be different 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. Article 6(2) of Regulation No 6/2002 states that, for the purposes of that assessment, the degree of freedom of the designer in developing the design must be taken into consideration.

19      Accordingly, 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 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).

20      When assessing whether a design has individual character in relation to any previous presence in the design corpus, account is to be taken of the nature of the product to which the design is applied or in which it is incorporated, in particular the industrial sector to which it belongs, the degree of freedom of the designer in developing the design, whether there is saturation of the state of the art, which could be capable of making the informed user more attentive to the differences in the designs compared, and also the manner in which the product at issue is used, in particular according to the manner in which it is normally handled when used (see judgment of 7 November 2013, Bounding feline, T‑666/11, not published, EU:T:2013:584, paragraph 31 and the case-law cited).

21      Finally, it should be noted that the legality of decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 6/2002, as interpreted by the Courts of the European Union, and not on the basis of national decisions, even where the latter are based on provisions analogous to those of that regulation (see judgment of 4 July 2017, Murphy v EUIPO – Nike Innovate (Electronic wristband), T‑90/16, not published, EU:T:2017:464, paragraph 72 and the case-law cited).

22      It is in the light of those considerations that the applicant’s arguments should be examined.

23      It is appropriate to rule on the second part of the single plea, concerning the level of attention of the informed user, before analysing the first part, concerning the assessment, from that user’s point of view, of the overall impression created by the designs at issue, and subsequently examining the third and fourth parts of the single plea.

 The second part of the single plea, relating to the level of attention of the informed user

24      According to the applicant, the Board of Appeal overestimated the level of attention of the informed user and, consequently, attached too much importance to the differences between the designs at issue.

25      First of all, the applicant asserts that the informed user is not able to distinguish, beyond the experience gained by using the product incorporating the contested design, the aspects of its appearance which are dictated by its technical function from those which are arbitrary. The differences between the designs at issue which were mentioned by the Board of Appeal concern technical details which cannot be perceived by a person who has a certain degree of knowledge with regard to the normal features of motor vehicles. These include, inter alia, bumpers, headlights, indicators and rear hatches.

26      The applicant then submits that the informed user attaches less importance to the differences between car models launched consecutively by one car manufacturer than to the differences between vehicle models from different manufacturers. As regards car models from one manufacturer, the informed user pays less attention to the design than to new technical features and to developments in terms of the vehicle’s safety, performance and driving comfort. Moreover, first, a buyer’s decision to purchase a VW Caddy is not based on a comparison with the previous series of vehicles, but on a comparison with the vehicles of other manufacturers. In support of that argument, the applicant refers to a decision of the Invalidity Division of 13 September 2016 in invalidity proceedings registered under reference ICD 9742. Secondly, the success of the VW Caddy is based not on its appearance, but on its reliability.

27      Finally, the applicant relies on an article, published in a German car magazine, on the absence of differences between the designs at issue. It criticises the Board of Appeal for having disregarded the content of that article, stating that the article contains a clear indication of the perception that the informed user has.

28      According to the case-law, 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 (see judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59 and the case-law cited, and judgment of 22 June 2010, Shenzhen Taiden v OHIM – Bosch Security Systems (Communications equipment), T‑153/08, EU:T:2010:248, paragraphs 46 and 47).

29      The concept of the informed user must 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, who has detailed 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, either because of his personal experience or his extensive knowledge of the sector in question (judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 53).

30      Finally, the Court has held that the very nature of the informed user means that, when possible, he will make a direct comparison between the earlier design and the contested design (see, to that effect, judgment of 18 October 2012, Neuman and Galdeano del Sel v José Manuel Baena Grupo, C‑101/11 P and C‑102/11 P, EU:C:2012:641, paragraph 54 and the case-law cited).

31      In the present case, in paragraphs 18 and 20 of the contested decision, the Board of Appeal described the informed user as a person who, without being a designer or a technical expert, knows the various designs which exist in the motor vehicle sector, possesses a certain degree of knowledge with regard to the features which motor vehicles normally include, and, as a result of his interest in the products concerned, shows a high degree of attention when he uses them. The informed user of motor vehicles is a person who is interested in those vehicles, drives and uses them and, as a reader of the relevant magazines and visitor to motor shows and car dealerships, is familiar with the models available on the market. He is aware that manufacturers regularly update the technical features and the appearance of models which are well-established on the market. He is also aware that the aim of this regular ‘facelift’ is to reflect certain fashion trends without, however, completely discarding the characteristic design features of the vehicle model in question. According to the Board of Appeal, none of the differences referred to in paragraphs 40 to 42 below will escape the attention of the informed user as described.

32      It should be noted that the applicant’s arguments do not call into question the Board of Appeal’s assessment of the informed user’s level of attention set out above.

33      It is necessary to reject, first of all, the applicant’s argument that the informed user is incapable of perceiving the differences identified by the Board of Appeal relating to bumpers, headlights, indicators and rear hatches because they concern technical details. First, the Board of Appeal did not refer to differences concerning the indicators in the designs at issue. Secondly, it is clear from the contested decision that the differences identified by the Board of Appeal regarding the bumpers, headlights and rear hatches concern their appearance and not their technical details. The informed user is therefore capable of perceiving them. The fact that the modification of some of those car parts may also have a technical effect is irrelevant in that regard.

34      Furthermore, the applicant’s argument that the informed user attaches less importance to the differences between car models launched consecutively by one car manufacturer than to the differences between vehicle models from different manufacturers cannot succeed. None of the matters of fact or law put forward by the applicant in support of that argument are capable of calling into question the Board of Appeal’s assessment concerning the informed user’s level of attention in the context of the comparison of the designs at issue. The part of the Invalidity Division’s decision of 13 September 2016 which the applicant cites in support of that argument is not relevant in that regard, since it does not concern the comparison between the level of attention which the informed user pays to models launched consecutively by one car manufacturer and the level of attention he pays to models from other manufacturers. Moreover, as regards the case-law cited in paragraphs 28 and 29 above, the applicant’s argument concerning what influences purchasing decisions and the fact that, according to the applicant, the success of the VW Caddy is based not on its appearance, but on its reliability, are of no relevance.

35      Finally, the argument that the Board of Appeal should have taken into account the point of view expressed in the German car magazine must be rejected. The possibility for press articles to be taken into consideration cannot be ruled out, but the Board of Appeal is not obliged to do so where it considers, as in the present case, that the point of view expressed is not relevant because it does not reflect the overall impression made on the informed user.

36      It follows that the second part of the single plea must be rejected as unfounded.

 The first part of the single plea, relating to the overall impression on the informed user

37      The applicant asserts that it is clear from the case-law that EUIPO must weigh the features of the designs at issue in so far as different features may have more or less of an impact on the appearance of the designs. Accordingly, first, the Board of Appeal should have analysed the similarities between the designs at issue. Such an analysis would have led to the conclusion that the designs at issue were almost identical in the basic shape of their car body, the profile, the shape and positioning of the windows, the windscreen and the bonnet, the radiator grille and the headlights. Secondly, it should have distinguished between the aesthetic characteristics and the technical characteristics since, given the predominantly technical function of the headlights and the differences relating exclusively to the colour of the bumpers and radiator grills, the informed user would attribute little importance to them when viewing each design as a whole. However, simply setting out the supposed differences between the designs at issue, as the Board of Appeal did in paragraph 24 et seq. and paragraph 33 et seq. of the contested decision, has not enabled the Board to judge whether the overall impression made on the informed user would be different.

38      It should be noted that, in paragraphs 23 to 31 of the contested decision, the Board of Appeal assessed the individual character of the contested design as compared with the earlier design. It based its assessment on the following views of the designs at issue:

Contested design

Earlier design


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