Joined Cases T‑22/13 and T‑23/13

(publication by extracts)

Senz Technologies BV

v

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

(Community design — Invalidity proceedings — Registered Community design representing umbrellas — Grounds for invalidity — Disclosure of earlier design — American patent as earlier design — Circles specialised in the sector concerned — Informed user — Degree of attention of an informed user — Fashion accessories — Degree of freedom of the designer — Individual character — Different overall impression — Invalidity proceedings)

Summary — Judgment of the General Court (Fifth Chamber), 21 May 2015

1.      Community designs — Grounds for invalidity — No individual character — Disclosure to the public — Exception — Facts not reasonably capable of being known to specialist circles of the sector concerned — Events taking place outside the EU — Criteria for assessment

(Council Regulation No 6/2002, Art. 7(1))

2.      Community designs — Grounds for invalidity — No individual character — Disclosure to the public — Earlier design not produced — Effect — Conditions

(Council Regulation No 6/2002, Art. 7(1))

1.      It is clear from Article 7(1) of Regulation No 6/2002 on Community designs, that a design is deemed to have been made available once the party relying thereon has proven the events constituting disclosure. In order to refute that presumption, the party challenging the disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those facts from becoming known in the normal course of business to the circles specialised in the sector concerned.

Moreover, the presumption provided for in Article 7(1) of Regulation No 6/2002 applies wherever the events constituting disclosure took place, since it can be seen from the wording of the first sentence of that article that it is not necessary, in order for a design to be deemed to have been made available to the public for the purpose of applying Articles 5 and 6 of that regulation, for the events constituting disclosure to have taken place within the European Union.

The question whether events taking place outside the European Union could reasonably have become known to the persons forming part of the circles specialised in the sector concerned is a question of fact; the answer to that question is dependent on the assessment of the particular circumstances of each individual case.

In order to carry out that assessment, it must be examined whether, on the basis of the facts, which must be adduced by the party challenging the disclosure, it is appropriate to consider that it was not actually possible for those circles to be aware of the events constituting disclosure, whilst bearing in mind what can reasonably be required of those circles in terms of being aware of prior art. Those facts may concern, for example, the composition of the specialised circles, their qualifications, customs and behaviour, the scope of their activities, their presence at events where designs are presented, the characteristics of the design at issue, such as their interdependency with other products or sectors, and the characteristics of the products into which the design at issue has been integrated, including the degree of technicality of the product concerned. In any event, a design cannot be deemed to be known in the normal course of business if the circles specialised in the sector concerned can become aware of it only by chance.

(see paras 26-29)

2.      Article 7(1) of Regulation No 6/2002 on Community designs does not impose any requirement that the earlier design relied on by the opposing party must have been used for the manufacture or marketing of a product.

However, the fact that a design has never been incorporated into a product is significant only where the applicant has established that the circles specialised in the sector concerned do not generally consult patent registers or that the circles specialised in the sector concerned do not generally attach any weight to patents. In such scenarios, the argument that there are no umbrellas covered by the earlier patent on the market may make faintly plausible the fact that the earlier patent may have been known to the circles specialised in the sector concerned through other forms of information.

(see paras 36, 37)