1

By its action under Article 263 TFEU, the applicant, B&Bartoni spol. s r.o., seeks the annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 July 2021 (Case R 2843/2019‑3) (‘the contested decision’).

2

On 22 December 2017, the applicant filed with EUIPO an application for a declaration of invalidity of the Community design registered under number 1292122‑0001 following an application filed on 2 September 2011 and represented in the following views:

3

The products to which the design, in respect of which a declaration of invalidity is sought, is intended to be applied were in Class 08.05 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and corresponded to the following description: ‘Welding torches (part of -)’.

4

The ground relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), read in conjunction with Articles 4 and 5 of that regulation.

5

The application for a declaration of invalidity was based on, inter alia, a failure to meet the requirements for protection of a Community design laid down in Article 4 of Regulation No 6/2002. In that regard, the applicant had argued that the electrode, the Community design of which is contested, was a component part of a complex product, namely a torch forming part of a plasma cutting system, which was not visible during normal use of that product within the meaning of Article 4(2) of Regulation No 6/2002.

6

On 16 October 2019, the Invalidity Division upheld the application for a declaration of invalidity on that basis. Consequently, it declared the contested Community design to be invalid.

7

On 13 December 2019, the intervener, Hypertherm, Inc., filed a notice of appeal with EUIPO against the decision of the Invalidity Division.

8

By the contested decision, the Board of Appeal upheld the appeal and rejected the application for a declaration of invalidity on the ground, inter alia, that the product represented in the contested Community design could not be regarded as a component part of a complex product within the meaning of Article 4(2) of Regulation No 6/2002.

9

The applicant claims that the Court should:

10

EUIPO contends that the Court should:

11

The intervener contends that the Court should:

12

The applicant relies, in essence, on a single plea in law, alleging infringement of Article 4(2) of Regulation No 6/2002 on account of a misinterpretation of the concept of ‘component part of a complex product’. According to the applicant, the Board of Appeal erred in law in finding that the electrode at issue was not a component part of a complex product and in dismissing the application for a declaration of invalidity on that basis.

13

For the purpose of examining the single plea in the action, the Court adopted a measure of organisation of procedure as set out in Article 89 of its Rules of Procedure, by which it requested the parties, first, to indicate whether, as claimed in paragraph 50 of the application, the market for electrodes used with Hypertherm torches was a ‘captive market’ as a result of the contested Community design and, secondly, to indicate to what extent the electrode at issue could also be used in torches other than Hypertherm torches.

14

In response to the questions put by the Court in the context of the measure of organisation of procedure, the intervener provided the evidence produced as Annexes C.13 to C.18 and the factual details set out therein. Annexes C.13 to C.17 consist of extracts from catalogues and brochures, accessible online, of third-party undertakings offering electrodes compatible with Hypertherm torches or torches compatible with the Hypertherm electrode. Annex C.18 is an affidavit by the director of the intervener’s intellectual property department attesting to that compatibility.

15

At the hearing, the applicant claimed that the factual details and the evidence submitted in response to the questions put by the Court were inadmissible on the ground that they were not in EUIPO’s file.

16

In that regard, it should be borne in mind that, according to Article 85(1) and (3) of the Rules of Procedure, evidence is to be submitted in the first exchange of pleadings, and the main parties may still, exceptionally, produce evidence before the oral part of the procedure is closed, provided that the delay in the submission of such evidence is justified. Such justification for the late submission of evidence after the first exchange of pleadings cannot be required where the evidence is produced in response to a measure of organisation of procedure within the period prescribed for that response (see judgment of 7 July 2021, HM v Commission, T‑587/16 RENV, not published, EU:T:2021:415, paragraph 68 and the case-law cited).

17

In the present case, it must be held that the factual details and the evidence produced were provided in response to the questions put by the Court in the context of the measure of organisation of procedure referred to in paragraph 13 above.

18

Accordingly, the evidence produced by the intervener in response to the questions put by the Court is admissible. Similarly, in so far as factual details are set out in that evidence, the applicant’s argument that those details are inadmissible must be rejected.

19

In addition, the applicant was able to comment at the hearing on the factual details and evidence produced by the intervener, with the result that the right to be heard has been observed (see, to that effect, judgment of 14 May 1998, Council v De Nil and Impens, C‑259/96 P, EU:C:1998:224, paragraph 31).

20

Under Article 4(1) of Regulation No 6/2002, a design is to be protected by a Community design to the extent that it is new and has individual character.

21

It is apparent from the wording of Article 4(2) of Regulation No 6/2002 that a design applied to or incorporated in a product which constitutes a component part of a complex product is only to be considered to be new and to have individual character:

22

According to Article 4(3) of Regulation No 6/2002, ‘normal use’ means use by the end user, excluding maintenance, servicing or repair work.

23

In accordance with Article 3(b) of Regulation No 6/2002, a ‘product’ is defined as any industrial or handicraft item, including, inter alia, parts intended to be assembled into a complex product. Under Article 3(c) of Regulation No 6/2002, a ‘complex product’ is defined as being a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.

24

It is in the light of the abovementioned provisions that the question of whether the electrode at issue constitutes a ‘component part of a complex product’ within the meaning of Article 4(2) of Regulation No 6/2002 must be examined.

25

First of all, it should be noted, as EUIPO and the intervener make clear, that Article 4(2) of Regulation No 6/2002 is an exception to the system of protection laid down in Article 4(1) of that regulation. As an exception, that provision must be interpreted narrowly in order to minimise the exclusion of protection of designs. According to settled case-law, provisions limiting the rights granted to the holder of such designs by virtue of that regulation must be interpreted strictly, without, however, such an interpretation undermining the effectiveness of the limitation thereby established and disregarding its purpose (see judgment of 27 September 2017, Nintendo, C‑24/16 and C‑25/16, EU:C:2017:724, paragraph 74 and the case-law cited).

26

Next, in the absence of any definition of the concept of ‘component part of a complex product’ in Regulation No 6/2002, that concept must be understood in accordance with its usual meaning in everyday language (see judgment of 20 December 2017, Acacia and D’Amato, C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 64 and the case-law cited). Thus, the Court of Justice has defined the concept of ‘component part of a complex product’ as covering multiple components, intended to be assembled into a complex industrial or handicraft item, which can be replaced permitting disassembly and re-assembly of such an item, without which the complex product could not be subject to normal use (see, to that effect, judgment of 20 December 2017, Acacia and D’Amato, C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 65).

27

Furthermore, it should be noted that the question whether a product comes within the concept of ‘component part of a complex product’ must be assessed on a case-by-case basis, according to a set of relevant factors.

28

In the present case, by deciding that the electrode at issue did not come within that concept, the Board of Appeal, in essence, took account, inter alia, of the following: first, the consumable nature of the electrode, secondly, the absence of disassembly and re-assembly of the torch when the electrode is replaced, thirdly, the fact that the torch is regarded as complete without the electrode and, fourthly, the interchangeability of the electrode.

29

It is appropriate to analyse, in turn, the applicant’s arguments in relation to each of those factors before examining its other arguments.

30

The Board of Appeal found, in paragraph 26 of the contested decision, that the consumable nature of the electrode at issue in itself indicated that a particular electrode could not be regarded as a component part of a specific torch. In finding that the electrode was a consumable part, the Board of Appeal noted, in essence, first, that it did not constitute a durable part of the torch and was not firmly connected to it, unlike the trigger or the handle, which are essential parts of the torch, and, secondly, that it had a relatively short lifespan, namely two to three hours of actual arc-on time for hand-cutting and three to five hours for mechanised cutting, and therefore had to be regularly replaced by the end user.

31

In that regard, the applicant argues that the Board of Appeal erred in law in relying on a distinction between a ‘non-consumable’ part and a ‘consumable’ part, and in finding that only the first category of parts could constitute a component part of a complex product. According to the applicant, such a distinction is artificial and has no basis in EU law, since the term ‘component part’ does not suggest that such a part should present any particular nature, such as durability.

32

EUIPO and the intervener dispute the applicant’s arguments.

33

It should be noted that the Board of Appeal did not err in law in taking into account the consumable nature of the electrode when assessing whether it constituted a ‘component part of a complex product’.

34

It is true, as the applicant notes, that the criteria of durability and regular purchase or replacement of the component part do not appear in the wording of Regulation No 6/2002.

35

However, since the concept of ‘component part of a complex product’ has not been defined in that regulation, the Board of Appeal, in paragraphs 26 and 27 of the contested decision, correctly relied, among other relevant factors, on the absence of a firm and durable connection with the complex product and on the regular purchase and replacement of the electrode on account of its short lifespan. Those criteria, which denote standard characteristics of a consumable, are relevant factors which may serve to identify what constitutes a component part of a complex product.

36

It is apparent from the wording of Article 3(b) and (c) of Regulation No 6/2002 that the component parts of a complex product are components intended to be assembled into a complex industrial or handicraft item, which can be replaced permitting disassembly and re-assembly of such an item (see also judgment of 20 December 2017, Acacia and D’Amato, C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 65). The electrode at issue, as a consumable item for a torch, is intended to be easily attached to the torch, consumed and used relatively quickly, and easily replaced by the end user without that operation requiring disassembly and re-assembly of that torch (see paragraph 40 et seq. below on the absence of disassembly and re-assembly when the electrode at issue is being replaced).

37

In addition, it must be stated that, owing, in particular, to the consumable nature of the electrode at issue, the end user, who regularly purchases and replaces electrodes, is able to perceive and assess its characteristics, irrespective of whether the electrode remains visible once inserted into the torch.

38

Lastly, it should be noted that the Board of Appeal’s reasoning in this respect cannot be called into question by the applicant’s argument based on a previous decision of EUIPO (Case R 2337/2012‑3), delivered on 9 April 2014, which, according to the applicant, is similar to the present case. First, as is apparent from paragraph 29 of the contested decision, the Board of Appeal examined the decision cited by the applicant and explained why it had found that that decision differed from the present case. Secondly, it must be recalled in this regard that EUIPO is required to decide on the basis of the circumstances of each individual case and that it is not bound by previous decisions taken in other cases. Furthermore, in its review of legality, the Court is not bound by the decision-making practice of EUIPO (see judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 39 and the case-law cited).

39

In the light of the foregoing, it must be held that the Board of Appeal did not err in law in taking the view that the electrode had the characteristics of a consumable and that that fact was a relevant factor in finding that the electrode at issue could not be regarded as a component part of a complex product.

40

The Board of Appeal found, in paragraph 29 of the contested decision, that, when an electrode is being replaced or changed, the torch and the cutting system are not disassembled and re-assembled, as required under the definition in Article 3(c) of Regulation No 6/2002. Rather, in its view, the electrode is intended to be used along with the torch, to be installed in the front of the torch and then potentially to be removed again.

41

In that regard, the applicant submits that the Board of Appeal erred in law and in fact in relying on the findings that, when the electrode is being replaced, the torch and the cutting system are not disassembled and re-assembled.

42

First, according to the applicant, there is nothing in the wording of Regulation No 6/2002 that requires the complex product to be fully disassembled in order for a product to be regarded as a ‘component part’ of such a complex product. Article 3(c) of that regulation is concerned only with the possibility of a component being replaced permitting disassembly and re-assembly of the complex product – that is, without it being necessary to damage or destroy that complex product.

43

Secondly, the applicant claims that the replacement of the electrode is an operation involving disassembly and re-assembly of the torch. In its view, in order to replace the electrode, the user must remove several parts of the torch, namely the shield, the retaining cap and the nozzle, by unscrewing them from the torch and, after installing the new electrode, has to replace those components again.

44

EUIPO and the intervener dispute the applicant’s arguments.

45

It must be held that the Board of Appeal did not err in law in taking account of the fact that the torch and the cutting system are not disassembled and re-assembled when an electrode is being replaced. As is apparent from paragraphs 23 and 26 above, the question whether the replacement of a product requires disassembly and re-assembly of a complex product is a relevant factor to be taken into consideration in determining whether such a product constitutes a component part of that complex product.

46

It should be borne in mind that the reference to ‘disassembly’ and ‘re-assembly’ of the product appears in the definition of ‘complex product’ provided for in Article 3(c) of Regulation No 6/2002, namely ‘a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product’. The definition of ‘component part of a complex product’ in the judgment of 20 December 2017, Acacia and D’Amato (C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 65), uses the same wording (see paragraph 26 above). The Board of Appeal’s taking into account of ‘disassembly’ and ‘re-assembly’ is therefore based on Regulation No 6/2002 and on the case-law of the Court of Justice.

47

Thus, a product which, when being replaced, does not require the disassembly and re-assembly of the product in which it is incorporated and which is specifically intended to be replaced regularly and in a straightforward manner by end users is less likely to constitute a component part of a complex product than a product which is, as EUIPO contends, normally replaced by professionals with specific expertise to carry out that replacement.

48

In addition, the applicant’s argument that the replacement of the electrode is an operation involving disassembly and re-assembly of the torch must be rejected. The Board of Appeal correctly found, in paragraph 29 of the contested decision, that, when the electrode was being replaced, the cutting system and the torch were not disassembled and re-assembled. Even though the shield, the retaining cap and the nozzle must be unscrewed and put back again after the electrode has been replaced, as the applicant states, this remains a simple operation for the end user, as the intervener explained at the hearing. Such an operation cannot therefore be regarded as ‘disassembly’ and ‘re-assembly’ of the torch within the meaning of Regulation No 6/2002.

49

In the light of the foregoing, it must be held that the Board of Appeal did not err in law or in fact in finding that, when the electrode was being replaced, the cutting system and the torch were not disassembled and re-assembled and that that fact was a relevant factor in concluding that the electrode at issue could not be regarded as a component part of a complex product.

50

The Board of Appeal took the view, in paragraph 29 of the contested decision, that the torch could be regarded as a complete, and not as a broken, product without the electrode. In paragraph 30 of the contested decision, it found that the torch could be offered on the market without the electrode and that the electrode was commonly advertised and sold separately from the torch.

51

In that regard, the applicant submits that the Board of Appeal erred in law in finding that the complex product at issue, namely a torch or a plasma cutting system, is a complete product without the electrode and in thereby concluding that the electrode is not a component part of that complex product.

52

First, according to the applicant, in order to determine whether a product constitutes a component part of a complex product, the complex product must be viewed in the state in which it can perform its intended function. The applicant therefore takes the view that, in the present case, the complex product at issue cannot be complete without the electrode, since it cannot function, in this case to cut or gouge metal, without the electrode. Furthermore, according to the applicant, the issue of whether the complex product is broken without the component part at issue is irrelevant for the purpose of determining whether that part comes within the concept of ‘component part of a complex product’ within the meaning of Article 4(2) of Regulation No 6/2002.

53

Secondly, according to the applicant, the fact that the torch is marketed without the electrode or that the electrode is marketed without the torch is irrelevant for the purpose of determining whether the electrode at issue constitutes a component part of a complex product within the meaning of Article 4(2) of Regulation No 6/2002.

54

EUIPO and the intervener dispute the applicant’s arguments.

55

In the first place, it must be held that the completeness of the product constitutes a relevant factor for the purpose of assessing the concept of ‘component part of a complex product’ within the meaning of Article 4(2) of Regulation No 6/2002. The Board of Appeal cannot therefore be criticised for having regard to that factor in its assessment.

56

When purchasing a torch without an electrode or when the electrode is removed from the torch, the end user will not perceive that torch as being broken or incomplete. By contrast, without its component parts, a complex product will not, in principle, be perceived by the end user as a complete product capable of being subject to normal use (see, to that effect, judgment of 20 December 2017, Acacia and D’Amato, C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 65) or as a product in good condition.

57

With regard to the applicant’s argument that the complex product at issue cannot be complete without the electrode, since it cannot function without it, it is true that the torch and the plasma cutting system cannot fulfil their function, namely to cut or gouge metal, without an electrode fitted in the torch. However, this does not in itself mean that the electrode must be regarded as a component part of a complex product.

58

Contrary to what the applicant claims, the definition of ‘component part of a complex product’ in the judgment of 20 December 2017, Acacia and D’Amato (C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 65), and in particular the phrase ‘without which the complex product could not be subject to normal use’ (see paragraph 26 above), cannot be interpreted as requiring that, in the case where a product cannot fulfil the function for which it is intended without another product, that other product must be regarded in all cases as a component part of the first product. Such an interpretation would be excessively broad to the point that a large number of separate products, in particular of a consumable nature, without which complex products cannot fulfil the function for which they are intended, would wrongly be regarded as component parts of those complex products. Contrary to what the applicant maintains, that definition, set out in the context of Article 110(1) of Regulation No 6/2002, is not intended to determine exhaustively what does not come within the scope of the concept of ‘component part of a complex product’ within the meaning of Article 4(2) of that regulation.

59

In the second place, it must be held, as the intervener submits, that the Board of Appeal did not err in law in taking into account the fact that the torch could be offered on the market without the electrode and that the electrode was commonly advertised and sold separately from the torch as a relevant factor in order to determine whether the electrode at issue constituted a component part of a complex product within the meaning of Article 4(2) of Regulation No 6/2002.

60

With regard to the fact that the torch is offered on the market without the electrode, it is true that each producer remains free to market the complex product with its component parts or to sell them separately. As the applicant notes, that commercial decision should not be regarded as a decisive factor in assessing whether a product constitutes a component part of a complex product.

61

However, it should be observed that it is unusual for the purchase of a complex product not to include its actual component parts. In the present case, as is apparent from the file (Annexes C.8 to C.11), the torch in question is sold either with or without the electrodes at issue.

62

In the light of the foregoing, it must be held that the Board of Appeal did not err in law or in fact in taking the view that the complex product at issue, namely a torch or plasma cutting system, constituted a complete product without the electrode and that that fact is a relevant factor in concluding that the electrode at issue cannot be regarded as a component part of a complex product.

63

The Board of Appeal found, in paragraph 28 of the contested decision, that different electrodes were used with the same torch for different operations, such as electrodes used for drag-cutting and those used for fine-cutting or gouging, and that torches of different types suitable for different cutting systems could use the electrode at issue. It relied on the interchangeability of the electrode, among other relevant factors, in order to conclude that the electrode did not constitute a component part of a complex product.

64

In that regard, the applicant submits that, contrary to what the Board of Appeal found, the fact that different electrodes can be used by the same torch and that different torches can use the same electrode is irrelevant in determining whether the electrode is a component part of a complex product.

65

EUIPO and the intervener dispute the applicant’s arguments.

66

In the present case, it is common ground that the end user can use the electrode at issue with different torches. As the intervener made clear in response to the questions put by the Court in the context of the measure of organisation of procedure referred to in paragraph 13 above, the electrode at issue can be used with torches of companies other than the intervener.

67

It is also common ground that the intervener’s torch can be used with different electrodes. As the intervener has stated in response to the questions put by the Court, electrodes of other companies are compatible with its torches.

68

It is true, as the applicant notes, that the mere fact that a product can be substituted by another product which is not identical and be used in different complex products does not allow the conclusion that such a product is a separate product which does not constitute a component part of a complex product.

69

However, it must be held that the Board of Appeal did not err in law in taking account of the interchangeability of the electrode in order to supplement its analysis. A product which cannot be replaced by another non-identical product or be used in different complex products is, in principle, more likely to be linked in a durable and tailored manner to that complex product, and thus to constitute a component part of that complex product.

70

It follows that the Board of Appeal did not err in law or in fact in taking account of the fact that the electrode at issue could be replaced by a different electrode and that torches of different types could use the electrode at issue, in order to determine that that electrode did not constitute a component part of a complex product within the meaning of Article 4(2) of Regulation No 6/2002.

71

The applicant criticises the Board of Appeal for not having taken sufficient account of the real purpose of the limitation of protection referred to in Article 4(2) of Regulation No 6/2002 for non-visible component parts of complex products. According to the applicant, the protection of consumable parts that are not visible during normal use of the product and do not in any way contribute to the overall appearance of the complex product would present an undesirable limitation of competition on the market for component parts of complex products, as in the present case, which concerns a captive market for spare parts.

72

EUIPO and the intervener dispute the applicant’s arguments.

73

In that regard, it should be stated that the Board of Appeal is not required to carry out an analysis of the possible adverse effects on competition on the relevant markets in order to determine whether a product constitutes a component part of a complex product within the meaning of Article 4(2) of Regulation No 6/2002.

74

Even if the protection of competition on the markets for spare parts had been the reason behind the exclusion of certain non-visible component parts of complex products from the protection of designs provided for in Article 4(2) of Regulation No 6/2002, this does not mean that that consideration must form part of the Board of Appeal’s analysis of what constitutes a component part of a complex product. The applicant’s complaint is therefore ineffective.

75

In any event, the applicant does not substantiate its claim that the present case concerns a captive market for spare parts on account of the contested Community design. When questioned by the Court on that point in the context of the measure of organisation of procedure referred to in paragraph 13 above, the applicant merely repeated that the contested Community design prevented manufacturers from marketing electrodes compatible with the intervener’s torches, without providing any details.

76

In that regard, on the contrary, as the intervener made clear in response to the questions put by the Court, it is apparent that the intervener’s torch can be used with other electrodes which may have a different appearance and different technical specifications to those of the electrode in respect of which the Community design is contested in the present case, without infringing that design.

77

Accordingly, the applicant’s argument relating to the purpose of Article 4(2) of Regulation No 6/2002 must be rejected.

78

It follows that, by relying on a set of relevant factors, the Board of Appeal did not err in law or in fact in finding that the electrode at issue constituted a separate product and not a component part of a complex product within the meaning of Article 4(2) of Regulation No 6/2002.

79

In the light of the foregoing, the single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.

80

Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

81

Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

82

The intervener has also claimed that the applicant should be ordered to pay the costs incurred for the purposes of the proceedings before the Board of Appeal. In that regard, it suffices to note that, since the present judgment dismisses the action brought against the contested decision, point 2 of the operative part of that decision continues to govern the costs incurred in the course of the opposition procedure and in the appeal proceedings before EUIPO (see, to that effect, judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131).

On those grounds,

THE GENERAL COURT (Third Chamber, Extended Composition)

hereby: