Case T‑219/18

Piaggio & C. SpA

v

European Union Intellectual Property Office

Judgment of the General Court (Sixth Chamber), 24 September 2019

(Community design — Invalidity proceedings — Registered Community design representing a moped — Earlier Community design — Ground for invalidity — Individual character — Different overall impression — Informed user — Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002 — Interpretation of Article 6 of Regulation No 6/2002 in conformity with EU law — No use of an unregistered earlier national three-dimensional mark in the registered design — Article 25(1)(e) of Regulation No 6/2002 — No unauthorised use of a work protected under the copyright law of a Member State in the registered design — Article 25(1)(f) of Regulation No 6/2002)

1. EU law — Interpretation — Texts in several languages — Uniform interpretation — Differences between the various language versions — Context and purpose of the legislation in question as a basis for reference

   (see paragraph 30)

2. Community designs — Conditions for protection — Individual character — Design giving the informed user a different overall impression from that produced by the earlier design — Overall impression not required to differ significantly

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

   (see paragraphs 31-35)

3. Community designs — Conditions for protection — Individual character — Design giving the informed user a different overall impression from that produced by the earlier design — Determination of the overall impression in relation to one or more earlier designs taken individually

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

   (see paragraph 46)

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 — Representation of a scooter

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

   (see paragraphs 41-45, 49-63)

5. Community designs — Conditions for protection — Individual character — Design 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, Art. 6(1))

   (see paragraphs 47, 48)

6. Community designs — Grounds for invalidity — Use of a distinctive sign in a subsequent design — Comparison between the contested design and the distinctive sign — Relevant public

   (Council Regulation No 6/2002, Art. 25(1)(e))

   (see paragraph 67)

7. Community designs — Grounds for invalidity — Use of a distinctive sign in a subsequent design –Comparison between the contested design and the distinctive sign — Likelihood of confusion

   (Council Regulation No 6/2002, Art. 25(1)(e))

   (see paragraph 86)

8. Community designs — Grounds for invalidity — Unauthorised use of a work protected under the copyright law of a Member State — Law of the Member State serving to define the procedures for acquiring and proving copyright

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

   (see paragraph 99)

Résumé

In its judgment of 24 September 2019, Piaggio & C. v EUIPO — Zhejiang Zhongneng Industry Group (Mopeds) (T‑219/18), the General Court clarified the scope of and concepts relating to three of the grounds for invalidity of a registered Community design described in Article 25 of Regulation No 6/2002, namely those based, first, on a design’s lack of individual character under Article 25(1)(b) of that regulation, read in conjunction with Article 6 thereof, secondly, on the use, in a design, of an earlier distinctive sign within the meaning of Article 25(1)(e) of Regulation No 6/2002 and, thirdly, on the use, by a design, of an intellectual work protected by copyright within the meaning of Article 25(1)(f) of that regulation.

The Court upheld the decision of the Third Board of Appeal of EUIPO rejecting the application, made by Piaggio & C. SpA, for a declaration of invalidity in respect of the design representing a scooter.

First of all, with regard to the contested design’s lack of individual character for the purposes of Article 25(1)(b) of that regulation, read in conjunction with Article 6 thereof, inasmuch as Piaggio & C. had relied on the earlier design ‘Vespa LX’, the Court held that the Board of Appeal did not make an error of assessment in taking the view that the contested design and the earlier design produced different overall impressions on the informed user and in concluding that the contested design did not lack individual character for the purposes of Article 6 of Regulation No 6/2002 in relation to the earlier design.

In that regard, the Court pointed out, in the first place, that the applicant is not justified in maintaining that the fact that the designs at issue have several common features and have a very similar general shape shows that the contested design creates an overall impression of ‘déjà vu’ in relation to the earlier design.

In the second place, the Court noted that the differences which the Board of Appeal correctly observed between the designs at issue, which also relate to the elements on which the applicant relies as being the distinctive features of the earlier design, can be perceived by the informed user and influence the overall impression on that user created by the designs at issue, irrespective of the perspective from which those designs will be observed by the informed user.

In the third place, the Court took the view that the Board of Appeal, which is not bound by the findings of fact made by the Invalidity Division, explained to the requisite legal standard the reasons why, following the examination of the substance of the appeal and an objective technical assessment of the differences between the designs at issue, it had reached conclusions which differed from those of the Invalidity Division.

Next, with regard to the infringement of Article 25(1)(e) of Regulation No 6/2002, the Court held that the Board of Appeal did not make an error of assessment in taking the view that there was no likelihood of confusion on the part of the relevant public, which included the likelihood of association, for the purposes of the application of that provision.

In that regard, the Court took the view that due to (i) the overall visual impression produced by the earlier mark relied on by Piaggio & C., constituted by the three-dimensional scooter shape which is also protected by the earlier design, which is different from that emanating from the contested design, and (ii) the importance of aesthetics in the decision which he makes, the average consumer, who displays a high level of attention, will rule out the possibility that the earlier mark may be used in the contested design, despite the fact that the goods concerned are identical.

More specifically, the Court pointed out that when he observes the three-dimensional scooter shape protected by the earlier mark and that of the contested design, the average consumer, who is not an expert with in-depth technical skills, will not be able to spontaneously identify the ‘X’ shape between the rear fairing and the under-seat assembly or the inverted ‘Ω’ shape between the under-seat assembly and the front shield, nor will he automatically notice the arrow shape of the front shield, even when displaying a high level of attention. As to the fairing, he will rather notice the difference between the tapered shape of the fairing of the earlier mark, where that of the contested design looks more like a semicircle. More generally, the average consumer, who displays a high level of attention, will perceive the style, lines and look which characterise the three-dimensional scooter shape protected by the earlier mark as different, visually, from those of the contested design.

Lastly, the Court held that the Board of Appeal did not make an error of assessment in considering, on the basis of the evidence available to it, that the scooter design corresponding to the earlier design, protected by Italian and French copyright, was not the subject of an unauthorised use in the contested design for the purposes of the application of Article 25(1)(f) of Regulation No 6/2002.

In that regard, the Court pointed out that under Italian copyright, the use of the artistic and creative core constituted by the features of shape of the scooter design corresponding to the earlier design cannot be discerned in the contested design. Between the rear fairing and the under-seat assembly and between the under-seat assembly and the front shield, the lines of the contested design rather have an angular look. Its pointed front shield represents a ‘necktie’ up to the mudguard, rather than an arrow. As to the fairing, the shape of that of the contested design is not tapered, unlike the teardrop shape of the fairing of the earlier design.

Moreover, according to the Court, neither can the specific overall look and particular shape, which has a ‘rounded, feminine and “vintage” character’, of the earlier design be found in the contested design, which is characterised by straight lines and angles, so that the impressions which emanate from the work corresponding to the earlier design and from the contested design are different.