Cases T‑566/11 and T‑567/11

Viejo Valle, SA

v

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

(Community design — Invalidity proceedings — Registered Community design representing a cup and saucer with grooves and a soup dish with grooves — Ground for invalidity — Unauthorised use of a work protected under the copyright law of a Member State — Article 25(1)(f) of Regulation (EC) No 6/2002)

Summary — Judgment of the General Court (Second Chamber), 23 October 2013

1.      Community design — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Limits

(Rules of Procedure of the General Court, Art. 135(4); Council Regulation No 6/2002, Art. 61)

2.      Community design — Ground for invalidity — Unauthorised use of a work protected by the copyright legislation of a Member State — Law of the intervening Member State defining the procedures for acquiring and proving copyright

(Council Regulation No 6/2002, Art. 25(3); Commission Regulation No 2245/2002, Art. 28(1)(b)(iii))

1.      Having regard to the wording of Article 61 of Regulation No 6/2002, the Court’s review of the legality of a decision of the Board of Appeal must relate to the issues of law raised before the Board of Appeal. Therefore, it is not the Court’s function to examine new pleas introduced before it or to review the facts in the light of evidence adduced for the first time before it. To allow the examination of those new pleas or such evidence would be contrary to Article 135(4) of the Rules of Procedure of the Court, according to which the parties’ submissions may not alter the subject-matter of the proceedings before the Board of Appeal.

However, the possibility of referring to national judgments does not preclude the possibility of referring to national judgments for the first time before the Court, if it is not alleged that the Board of Appeal failed to take the factual aspects of a specific national judgment into account but rather that it infringed a provision of Regulation No 6/2002 and national case-law is cited in support of that plea.

(see paras 37, 63)

2.      Article 25(3) of Regulation No 6/2002 and Article 28(1)(b)(iii) of Regulation No 2245/2002 require that the applicant for a declaration of invalidity of a Community design on the basis of a copyright protected under the law of a Member State be the holder of that copyright and that it provide the Office for Harmonisation in the Internal Market (Trade Marks and Designs) with particulars establishing that fact.

The question of whether the applicant for a declaration of invalidity is the holder of the copyright, within the meaning of that provision, and the question of proving that right before the Office, cannot be answered without having regard to the law of the Member State, in the present case French law, which is relied on in support of the application for a declaration of invalidity. The law of the relevant Member State serves in particular, in that context, to define the procedures for acquiring and proving copyright of the work relied on in support of the application for a declaration of invalidity.

(see paras 51, 52)