JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
24 January 2024 (*)
(Community design – Invalidity proceedings – Registered Community design representing building materials – Ground for invalidity – Failure to comply with the requirements for protection – Article 25(1)(b) of Regulation (EC) No 6/2002 – No individual character – Article 6 of Regulation No 6/2002)
In Case T‑201/22,
TA Towers ApS, established in Odense (Denmark), represented by L. Andersen, lawyer,
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, intervener before the General Court, being
Wobben Properties GmbH, established in Aurich (Germany), represented by R.F. Böhm and A. Ebert-Weidenfeller, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, U. Öberg (Rapporteur) and P. Zilgalvis, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 15 June 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, TA Towers ApS, seeks the annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 February 2022 (Case R 2491/2020-3) (‘the contested decision’).
Background to the dispute
2 The applicant is the holder of the Community design filed with the European Union Intellectual Property Office (EUIPO) on 28 March 2019, pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) and registered under number 6 352 332-0002.
3 The contested design is represented as follows:
4 The contested design is intended to be applied to goods in Class 25.01 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended, which correspond to the following description: ‘building materials’.
5 On 3 September 2019, the intervener, Wobben Properties GmbH, filed an application for a declaration of invalidity of the contested design pursuant to Article 52 of Regulation No 6/2002.
6 The ground relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4 and 8 of that regulation.
7 The intervener claimed, inter alia, in its application for a declaration of invalidity, that (i) the contested design lacked novelty within the meaning of Article 5 of Regulation No 6/2002, (ii) it did not have individual character within the meaning of Article 6 of that regulation and (iii) the features of its appearance were solely dictated by their technical function within the meaning of Article 8(1) of that regulation. In that regard, it relied, inter alia, on the following evidence:
– international patent application WO 2010/055535 A1 for a ‘tubular tower and construction procedure’, published on 20 May 2010 with the following views:
– German patent application DE 10 2017 106 201 A1 for a ‘flange segment for a wind turbine steel tower ring segment and method’, published on 27 November 2018 with the following views:
– a selection of screenshots from Flickr and YouTube showing, inter alia, photos dated 16 March 2017 and 31 March 2017 and a still of a video dated 29 September 2016:
8 By decision of 20 November 2020, the Cancellation Division granted the application for a declaration of invalidity on the ground that the contested design lacked individual character under Article 6 of Regulation No 6/2002 in relation to a prior design made available on 20 May 2010 in international patent application WO 2010/055535 A1 referred to in the first indent of paragraph 7 above.
9 On 30 December 2020, the applicant lodged an appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Cancellation Division.
10 By the contested decision, the Third Board of Appeal of EUIPO upheld the decision of the Cancellation Division, finding that the contested design, taken as a whole, was similar to the prior design for an informed user.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– annul the decision of the Cancellation Division of 20 November 2020 in Case ICD 108 310;
– order EUIPO and the intervener to pay the costs of the proceedings before the Cancellation Division, the Board of Appeal and the Court.
12 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The first head of claim, seeking the annulment of the contested decision
13 The applicant relies, in essence, on three pleas in law, alleging, respectively, infringement of Article 6(1), Article 8(1) and Article 62 of Regulation No 6/2002.
The first plea, alleging infringement of Article 6(1) of Regulation No 6/2002
14 The first plea consists of three parts, alleging errors of assessment made by the Board of Appeal, first, in the definition of the sector concerned, secondly, in the definition of the informed user and, thirdly, in the finding relating to the overall impressions produced by the contested designs.
15 As a preliminary point, under Article 6(1) 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 or, if a priority is claimed, the date of priority. Article 6(2) of that regulation states that, in assessing individual character of a design, the degree of freedom of the designer in developing the design is to be taken into consideration.
16 According to settled case-law, the assessment of the individual character of the contested design is carried out, in essence, in four stages. That assessment 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 prior design which has been made available to the public, taken individually (see judgment of 10 November 2021, Eternit v EUIPO – Eternit Österreich (Building panels), T‑193/20, EU:T:2021:782, paragraph 21 and the case-law cited).
17 While the first stage of the analysis, namely the determination of the sector of the products in which the design is intended to be incorporated or to which it is intended to be applied, is not made expressly clear by the wording of Article 6(1) of Regulation No 6/2002, that stage is in actual fact a necessary precondition for defining the informed user and the freedom of the designer, those latter concepts being expressly referred to in Article 6(1) and (2) of Regulation No 6/2002. In that regard, the identification of the product covered by the contested design enables the informed user and the degree of freedom of the designer in developing the design to be determined (judgment of 10 November 2021, Building panels, T‑193/20, EU:T:2021:782, paragraph 22).
– The sector concerned
18 In paragraph 29 of the contested decision, the Board of Appeal noted that the contested designs showed segments for towers.
19 The applicant claims that the Board of Appeal erred in determining the relevant sector by failing to analyse how the contested design would be perceived in that sector. In the applicant’s submission, one consequence of the lack of that analysis is that the contested decision is based on an incorrect assumption that the contested design is meant for assembly with identical elements, and that the contested designs are similar in that regard.
20 EUIPO contends that the Board of Appeal clearly identified the product in which the contested design is intended to be incorporated or to which it is intended to be applied. Furthermore, according to EUIPO, the comparison of the overall impressions produced by the contested designs is based on the representations of the designs as submitted by the parties, irrespective of the final products to which they must be applied.
21 The intervener contends that both the contested design and the prior design feature segments for towers. According to the intervener, it is clear that the contested design was created to be assembled with identical elements. The fact that other assemblies are possible does not alter the fact that regular use of the design will result in a product in the shape of a conical cylinder.
22 In order to determine the product in which the contested design is intended to be incorporated or to which it is intended to be applied, account must be taken of the indication of the products in which the contested design is intended to be incorporated or to which it is intended to be applied, as set out in the application for registration. In accordance with Article 36(2) of Regulation No 6/2002, the application for registration must contain an indication of those products.
23 Account should also be taken, where appropriate, of the design itself, in so far as it specifies the nature of the product, its intended purpose or its function. Taking into account the design itself may enable the product to be placed within a broader category of goods indicated at the time of registration and, therefore, to determine the informed user and the degree of freedom of the designer in developing his or her design (judgment of 10 November 2021, Building panels, T‑193/20, EU:T:2021:782, paragraph 37).
24 In the present case, it is apparent from the description accompanying the application for registration of the contested design that the goods covered by it were described as building materials in the form of a segment for wind turbine towers. In its response to the statement of the grounds relied on before the Board of Appeal, the applicant designated those goods as ‘building materials for a windmill tower’.
25 In those circumstances, the Board of Appeal was entitled to find, without committing any error, that the contested design shows segments for towers.
26 The applicant submits that, after establishing the product concerned, the Board of Appeal should have referred to the sector to which the product in question belongs.
27 It is true that the Board of Appeal did not make a direct reference to the sector concerned. Nevertheless, as EUIPO correctly pointed out, it can be inferred from the findings set out in paragraph 29 of the contested decision that the Board of Appeal took into account the sector of segments for towers.
28 Furthermore, the fact that the contested design shows one building element which, according to the applicant, may be linked to elements of other sizes or dimensions, with the result that it does not form a conical cylinder, whereas the prior design shows an entire tower consisting of various elements to form a conical tower, has no bearing on the assessment of the sector concerned. Although the determination of the sector of the products in which the contested design is intended to be incorporated or to which it is intended to be applied is a relevant consideration for determining the informed user and his or her level of attention, for determining the designer’s degree of freedom in developing the design and, possibly, when comparing the overall impressions produced on that informed user, it cannot, however, imply that the products concerned by the contested designs are similar or belong to the same sector (judgment of 16 June 2021, Davide Groppi v EUIPO – Viabizzuno (Table lamp), T‑187/20, EU:T:2021:363, paragraph 34).
29 The first part of the first plea must therefore be rejected.
– The informed user
30 In paragraph 32 of the contested decision, the Board of Appeal considered that the informed user of segments for towers, referred to in Article 6 of Regulation No 6/2002, was, in the present case, a professional in the construction industry who is familiar with those segments and is aware of their characteristic features. That professional displays a relatively high degree of attention when using the products concerned on account of his or her interest in them.
31 The applicant does not dispute that definition of the informed user.
32 However, the applicant submits that the informed user displays a high level of attention.
33 The applicant submits, in particular, that the number of professional customers in the relevant sector is small, that they are highly specialised and that the informed user is fully aware of the details of the designs available on the market for segments for towers.
34 At the hearing, EUIPO argued that the informed user is not an expert and does not display a higher degree of attention than that found by the Board of Appeal.
35 EUIPO and the intervener emphasise that the relevant sector for determining the informed user is that of segments for towers in general and dispute the finding that the relevant sector is limited and highly specialised.
36 According to the case-law, 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 is an expert with 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 or her personal experience or his or her 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).
37 Moreover, the concept of the informed user, created precisely for the purposes of analysing whether a design has individual character under Article 6 of Regulation No 6/2002, can only be defined in general terms, as a reference to a person with standard characteristics, and not on a case-by-case basis in relation to a particular design (judgment of 10 November 2021, Building panels, T‑193/20, EU:T:2021:782, paragraph 48).
38 As regards, more specifically, the informed user’s level of attention, the qualifier ‘informed’ suggests 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 that user’s interest in the products concerned, shows, in essence, a relatively high level of attention when he or she uses them (judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59).
39 In the present case, in accordance with the case-law cited in paragraphs 36 to 38 above, and since the sector concerned is that of segments for towers, the Board of Appeal was entitled to take the view that the informed user was a professional in the construction sector who had some knowledge of the different segments for towers and displayed a relatively high level of attention. Contrary to what is claimed by the applicant, it cannot be held that the informed user is fully aware of the details of all the designs available on the market in those segments, even if the number of customers in that sector was small and those customers were highly specialised.
40 In the light of the foregoing, the second part of the first plea must be rejected.
– The designer’s degree of freedom
41 In paragraph 36 of the contested decision, the Board of Appeal considered that the designer’s freedom to develop segments for towers was restricted to a certain extent by technical requirements. Accordingly, those segments should be of a certain size, weight and dimension in order to form the tower and be made of materials resistant to difficult environmental conditions or other constraints. Nevertheless, according to the Board of Appeal, the designer has a certain degree of freedom in terms of the size, number, shape and arrangement of bends.
42 That assessment, which is not disputed by the parties, is free of error.
– The comparison of the overall impressions produced by the contested designs
43 The Board of Appeal found in paragraph 43 of the contested decision that the contested designs shared the features of a sheet of a rectangular elongated shape comprised of a number of bends extending in a longitudinal parallel direction and that the designs differ only in the number of bends. The contested design contains three bends, whereas the prior design contains four.
44 The applicant claims that the comparison between the contested designs is based on incorrect factual information. It highlights the following differences, which create different overall impressions:
– first, the prior design shows a tower of conical shape, consisting of elements that are trapezoidal and therefore not rectangular;
– secondly, the prior design shows a preform and therefore does not illustrate a final form; in addition, the contested design has an angle of approximately 152 degrees, whereas the prior design has an angle of approximately 90 degrees;
– thirdly, the prior design shows longitudinal 90-degree bends at the edge of the plates, so that the bended parts protrude inwards into the tower; this means that the tower segments that are placed on top of another round of segments cannot protrude over the outer surface; therefore, some other means of assembly will have to be used and those means of assembly will be visible and form a tower in accordance with the prior design as opposed to the contested design; furthermore, those bends will necessarily produce an entirely different visual impression from that of the contested design;
– fourthly, the contested design has three bends and no flaps, whereas the prior design has six bends and two flaps;
– fifthly, the contested design utilised the designer’s limited freedom as to the size, number, shape and arrangement of the bends; it is therefore, according to the applicant, inconsistent for the Board of Appeal to conclude that those elements are not sufficient to outweigh the similarities between the contested designs.
45 As regards the applicant’s first argument, EUIPO and the intervener conceded at the hearing that the prior design might not be strictly defined as rectangular. Nevertheless, they argue that that minor difference is not sufficient to produce a different overall impression. In that regard, EUIPO argued, at the hearing, that the informed user would not notice that the contested designs have different shapes, given that those building elements are very tall. The intervener adds that the shape of the contested design is not strictly rectangular either, but has the same trapezoidal shape as that of the prior design.
46 Concerning the applicant’s second argument, EUIPO argues that the prior design represents the final shape of the product. Furthermore, the fact that the angles of the sheets are different is not sufficient to produce a different overall impression. The intervener adds that it cannot be established from the image of the contested design that the angle in particular is 152 degrees.
47 As regards the applicant’s third argument, EUIPO and the intervener contend that, according to the case-law, the point of reference for the comparison is the contested design. Consequently, the additional elements contained in the prior design, namely the longitudinal 90-degree bends, should not be taken into account. At any rate, longitudinal bends essentially serve the technical purpose of joining together elements and would therefore be given a low weighting in the comparison.
48 So far as concerns the applicant’s fourth argument, EUIPO argues that the prior design has four bends, not six. In addition, EUIPO and the intervener assert that a different number of bends is not sufficient to produce a different overall impression in the mind of the informed user.
49 As to the applicant’s fifth argument, EUIPO asserts that the designer has a degree of freedom as regards the size, number, shape and arrangement of the bends. Nevertheless, the bends on the contested designs are very similar. Moreover, an informed user would know that the tower segments may contain a different number of bends and would therefore not pay particular attention to that difference.
50 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).
51 The comparison of the overall impressions produced by the contested designs must be synthetic and may not be limited to an analytic comparison of a list of similarities and differences. That comparison must take as a basis the characteristics disclosed in the contested design and must relate solely to the protected characteristics, without taking account of the characteristics excluded from the protection. The comparison must relate to the designs, in principle, as registered and the invalidity applicant cannot be required to produce a graphic representation of the design relied on, comparable to the representation in the application for registration of the contested design (see judgment of 13 June 2019, Visi/one v EUIPO – EasyFix (Display holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 84 and the case-law cited).
52 As regards the first difference between the contested designs, referred to in paragraph 44 above, it is true that the bends at the end of the sheet of the prior design are of different lengths and that it is therefore incorrect to describe the sheet as rectangular, which is not disputed by EUIPO or the intervener.
53 It follows that the Board of Appeal erred in finding, in paragraph 42 of the contested decision, that the sheet of the prior design was rectangular.
54 Although the difference between the lengths of the bends at the end of the sheet of the prior design is not large, it is, however, clearly visible in the illustration of the prior design. An examination of that illustration immediately reveals that that sheet does not have four angles of 90 degrees and that it is therefore not a rectangle. Accordingly, the argument of EUIPO and the intervener that the difference in the length of the bends in the prior design is so small that the sheet appears visually rectangular must be rejected.
55 Unlike the sheet of the prior design, the sheet of the contested design appears rectangular in the image reproduced in paragraph 3 above, as the Board of Appeal also found in paragraph 41 of the contested decision. The intervener has not provided any evidence in support of its argument that that sheet has the same trapezoidal shape as the sheet of the prior design. Therefore, it cannot be held that the shape of the sheet of the contested design is rectangular.
56 Consequently, it must be held that the shape of the sheet of the contested design differs from that of the prior design.
57 The informed user who displays a relatively high level of attention will perceive that difference between the contested designs. That user will focus on the shape of the sheets of the contested designs in so far as that shape is one of the most visible and important elements, in so far as, as EUIPO acknowledged at the hearing, that shape allows it to form an idea of what the final towers will look like once the prefabricated sheets have been assembled.
58 Consequently, the informed user will be aware of the fact that, due to the shape of the sheets, the contested design makes it possible to obtain a cylinder, whereas the prior design makes it possible to obtain an element corresponding to a truncated cone, as is apparent from the images reproduced in the first indent of paragraph 7 above. Thus, the informed user, who is a professional in the construction sector, has good reason to examine the exact shape of those plates and will notice any difference that might exist in that regard.
59 That finding is not called into question by EUIPO’s argument that the informed user would not notice that the sheets in question have different shapes, given that they are very long building elements. On the contrary, the fact that the building elements are long reinforces the informed user’s impression that the final towers, once assembled, will not have the same shape because of the different shapes of those sheets.
60 Furthermore, it is apparent from the representations of the prior design that that design has four bends, and not six as the applicant claims, whereas the contested design has only three bends. Therefore, as the Board of Appeal acknowledged in paragraph 43 of the contested decision, the contested designs also differ in the number of bends.
61 Even if the difference in the number of bends between the contested designs is not sufficient, on its own, to produce a different overall impression in the mind of the informed user, that user will nevertheless take note of that difference and will be aware that the final towers will also have slightly different shapes for that reason.
62 It follows that, since the shape of the sheets at issue and their number of bends have a significant influence on the overall impressions produced by the contested designs, the differences perceived in that regard by the informed user are sufficiently marked to avoid any impression of ‘déjà vu’ for the purposes of the case-law cited in paragraph 50 above.
63 That conclusion is not called into question by the fact that the contested designs, as the Board of Appeal stated in paragraph 47 of the contested decision, have some common features, namely a number of bends ranging from top to bottom, creating parallel panels. In that regard, the four bends of the prior design create five parallel panels which, because the prior design is wider at the bottom than it is at the top, are all trapezoidal, whereas the three bends of the contested design create four parallel panels which, because the contested design has the same width at the top as at the bottom, are all rectangular. The informed user with a high level of attention will notice those differences and will not attach crucial importance to those common features. According to the case-law, differences found in respect of certain aspects of the goods concerned which the informed user would retain may be sufficiently significant to create a different overall impression from that produced by the design relied on in the application for a declaration of invalidity, despite the existence of similarity in respect of other aspects (see, to that effect, judgment of 16 December 2010, Baena Grupo v OHIM – Neuman and Galdeano del Sel (Seated figure), T‑513/09, not published, EU:T:2010:541, paragraphs 21 to 25).
64 It follows from the foregoing that the first plea in law must be upheld.
65 Consequently, the contested decision must be annulled without there being any need to consider the other pleas relied on in support of the present action.
The second head of claim, seeking the annulment of the Cancellation Division’s decision
66 By the second head of claim, the applicant requests that the Court annul the Cancellation Division’s decision of 20 November 2020.
67 EUIPO contends that the second head of claim must be rejected as inadmissible.
68 By its application for annulment of the decision of the Cancellation Division, the applicant seeks, in essence, the alteration of the contested decision, as provided for in Article 61(3) of Regulation No 6/2002 (see, to that effect and by analogy, judgment of 13 May 2020, Divaro v EUIPO – Grendene (IPANEMA), T‑288/19, not published, EU:T:2020:201, paragraph 85).
69 It must be borne in mind that the power of the Court to alter decisions pursuant to Article 61(3) of Regulation No 6/2002 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. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the 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, by analogy, judgment of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraph 129).
70 In the present case, the application for a declaration of invalidity was not only submitted on the basis of Article 6 of Regulation No 6/2002, but also, inter alia, on the basis of Article 5 and Article 8(1) of that regulation. Similarly, that application was based not only on the prior design, but also, inter alia, on the other prior designs referred to in paragraph 7 above. The Board of Appeal did not rule on the application for a declaration of invalidity in so far as it was submitted on the basis of the other grounds and other prior designs relied on by the intervener.
71 Consequently, it must be held that the conditions for the exercise of the Court’s power to alter decisions are not satisfied, with the result that the applicant’s second head of claim must be rejected.
Costs
72 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.
73 The applicant claimed that EUIPO and the intervener should be ordered to pay the costs incurred by the applicant in respect of the proceedings before the Court and in the proceedings before the Cancellation Division and the Board of Appeal.
74 In the present case, since EUIPO and the intervener have been unsuccessful, they must each be ordered to pay half of the costs incurred by the applicant relating to the proceedings before the Court.
75 As regards the costs relating to the proceedings before the Cancellation Division and before the Board of Appeal, it should be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division (judgment of 13 June 2017, Ball Beverage Packaging Europe v EUIPO – Crown Hellas Can (Cans), T‑9/15, EU:T:2017:386, paragraph 102).
76 Accordingly, the applicant’s request that EUIPO and the intervener each be ordered to pay the costs relating to the proceedings before the Cancellation Division and the Board of Appeal can be granted only as regards the costs incurred for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 February 2022 (Case R 2491/2020‑3);
2. Dismisses the action as to the remainder;
3. Orders EUIPO and Wobben Properties GmbH to bear their own costs and each to pay half of the costs incurred by TA Towers ApS before the Court and before the Board of Appeal.
Delivered in open court in Luxembourg on 24 January 2024.
V. Di Bucci | | M. van der Woude |