Case T‑494/12

Biscuits Poult SAS

v

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

(Community trade mark — Invalidity proceedings — Registered Community design representing a broken biscuit — Ground for invalidity — Lack of individual character — Articles 4, 6 and Article 25(1)(b) of Regulation (EC) No 6/2002)

Summary — Judgment of the General Court (Third Chamber), 9 September 2014

1.      Community designs — Conditions for protection — Visibility of aspects of the product represented by the design

(Council Regulation No 6/2002, Arts 3(a) and (b), and 4(1))

2.      Community designs — Conditions for protection — Design constituting a component part of a complex product — Component part having to remain visible during normal use of the product in order to be regarded as new and individual in character

(Council Regulation No 6/2002, Arts 3(a) and (c), and 4(2) and (3))

3.      Community designs — Ground for invalidity — No individual character — Design not producing on a well-informed user a different overall impression from that produced by the earlier design — Representation of a broken biscuit

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

1.      Article 3(a) of Regulation No 6/2002 defines ‘design’ as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’. It follows that the protection of a design for the purposes of Article 4(1) of Regulation No 6/2002 consists in the protection of the appearance of a product, that is to say, according to Article 3(b) thereof, any industrial or handicraft item, or of a part of such an item. It is also apparent from recitals 7, 12 and 14 in the preamble to Regulation No 6/2002, which refer to protection of industrial design, to restricting protection to visible elements and to the impression produced on an informed user viewing the product’s appearance, that that regulation confers protection only on the visible parts of the products or parts of products, which may as a result be registered as designs. Therefore, the non-visible characteristics of the product, which do not relate to its appearance, cannot be taken into account in determining whether the design can be protected.

(see paras 18-20, 29)

2.      Article 4(2) and (3) of Regulation No 6/2002 have neither the object nor the effect of multiplying the characteristics of a product which may constitute a design under Article 3(a) of that regulation, but rather to lay down a special rule specifically concerning designs applied to or incorporated in a product which constitutes a component part of a complex product within the meaning of Article 3(c) of Regulation No 6/2002. Under that rule, this type of design is protected only if, firstly, the component part, once it has been incorporated into the complex product, remains visible during normal use of that product and, secondly, the visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

Given the particular nature of components of a complex product within the meaning of Article 3(c) of Regulation No 6/2002, which may be produced and marketed separately from the complex product, it is reasonable for the legislature to provide for the possibility of having them registered as designs, subject to their being visible after incorporation into the complex product and only in respect of the visible parts of the components in question at the time of normal use of the complex product and in so far as those parts are new and have individual character.

(see paras 21-23)

3.      See the text of the decision.

(see paras 25, 28, 33, 34)