Case T‑654/22
(Published in extract form)
M&T 1997, a.s.
v
European Union Intellectual Property Office
Judgment of the General Court (Seventh Chamber) of 10 April 2024
(Community design – Invalidity proceedings – Registered Community design representing door and window handles – Earlier design – Ground for invalidity – Individual character – Article 25(1)(b) and Article 6 of Regulation (EC) No 6/2002)
1. Community designs – Grounds for invalidity – No individual character – Design not giving the informed user a different overall impression from that produced by the earlier design – Criteria for assessment – Freedom of the designer
(Council Regulation No 6/2002, Arts 6(1) and (2) and 25(1)(b))
(see paragraphs 19, 34, 51)
2. Community designs – Grounds for invalidity – No individual character – Design not giving the informed user a different overall impression from that produced by the earlier design – Informed user – Concept
(Council Regulation No 6/2002, Arts 6(1) and 25(1)(b))
(see paragraphs 25, 26)
3. Community designs – Grounds for invalidity – No individual character – Design not giving the informed user a different overall impression from that produced by the earlier design – Global assessment of all the elements of the earlier design
(Council Regulation No 6/2002, Arts 6(1) and 25(1)(b))
(see paragraphs 47, 48)
4. Community designs – Grounds for invalidity – No individual character – Design not giving the informed user a different overall impression from that produced by the earlier design – Determination of the overall impression having regard to the manner of use of the product – Impact of visible features of the product on the ease with which it can be used
(Council Regulation No 6/2002, Arts 6(1) and 25(1)(b))
(see paragraphs 49, 50)
5. Community designs – Grounds for invalidity – No individual character – Design not giving the informed user a different overall impression from that produced by the earlier design – Representation of door and window handles
(Council Regulation No 6/2002, Arts 6(1) and 25(1)(b))
(see paragraphs 55-60)
Résumé
In the context of the annulment of a decision of the Board of Appeal of the European Union Intellectual Property Office (EUIPO), (1) the General Court, in this judgment, highlights the principle that the overall impression produced on the informed user by a design must be determined having regard to the manner of use of the product in question and the impact of the visible features of the product on the ease with which it can be used.
On 17 November 2012, the predecessor in law of M&T 1997, a.s., the applicant, filed an application with EUIPO for registration of the Community design representing door and window handles. (2) On 23 October 2020, VDS Czmyr Kowalik sp.k. filed an application for a declaration of invalidity based on that design’s lack of individual character. (3)
The Cancellation Division upheld that application on the ground that the contested design did not have individual character.
Subsequently, the Board of Appeal dismissed on the same ground the appeal brought against that decision since the design did not produce a different overall impression on the informed user from that of the earlier design.
Findings of the Court
At the outset, the Court recalls that the overall impression produced by a design on the informed user must be determined in the light of the manner in which the product in question is normally used, taking into account the fact that the informed user’s attention is focused rather on the most visible and most important elements when using the product. Thus, the importance of the visible features of the product is assessed on the basis of their impact not only on its appearance, but also on the ease with which it can be used. Furthermore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs which do not have significant differences produce the same overall impression on an informed user and, accordingly, the contested design does not display individual character. Conversely, if the designer has a low degree of freedom, that reinforces the conclusion that the sufficiently marked differences between the designs produce a dissimilar overall impression on the informed user and the contested design therefore displays individual character.
As regards the designs at issue, the Court observed that when the informed user approaches the door handle in order to use it normally, that user sees it from above. Accordingly, the most visible elements of the handle are those corresponding to the outward-facing parts, namely the front, side and top parts of the handle. The differences at the back, namely the curvature of the edges and the shape of the neck, will also be visible to the informed user and will not be overlooked by him or her, especially since the rounded curvature of the edges of the contested design is accompanied by a thinner and smoother appearance which the informed user will easily notice. Furthermore, the rounded and thinner shapes of the edges of the contested design constitute differences from the earlier design which will be perceived by the informed user as influencing the manipulation of the handle and are, therefore, important elements in relation to the overall impression produced by the contested design. Those aspects have an impact on the ease of use of the handle, since they correspond to the parts of it which come into direct contact with the hand of the informed user.
In the light of those elements, and of the high level of attention of the informed user in the present case, the Court considers that the differences in the angles of the grip and the neck are neither marginal nor minor variations of one and the same design. A more rounded shape generally results in a softening of the lines of the neck and grip, which has a significant effect both on the overall appearance and on the ease of use of the door handle, so that it is an element which attracts the informed user’s attention. Consequently, although the designer’s freedom is high, the Court concludes that those differences are sufficiently significant to produce a different overall impression of the designs at issue.