Case T‑443/20

Sanford LP

v

European Union Intellectual Property Office

Judgment of the General Court (Fifth Chamber), 10 November 2021

(Community design – Invalidity proceedings – Registered Community design representing a label – Earlier design – Proof of disclosure – Article 7(1) of Regulation (EC) No 6/2002 – Evidence submitted after the expiry of the prescribed time limit – Board of Appeal’s discretion – Article 63(2) of Regulation No 6/2002 – Ground for invalidity – No individual character – Article 6 and Article 25(1)(b) of Regulation No 6/2002)

1. Community designs – Procedural provisions – Examination of the facts of EUIPO’s own motion – Facts and evidence not submitted in time – Account taken – EUIPO’s power of assessment

   (Council Regulation No 6/2002, Art. 63(2))

   (see paragraphs 15-17, 22)

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 – Representation of a label

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

   (see paragraphs 63, 67, 70, 71, 99)

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 – Overall assessment of all the elements presented by the designs – Scope – Taking account of the marks and distinctive signs affixed to the product – Not included

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

   (see paragraphs 68, 69, 80-82)

Résumé

Sanford LP was the proprietor of a Community design registered under the description ‘labels’ and representing printer label rolls. Avery Zweckform GmbH filed an application for a declaration of invalidity of that design with the European Union Intellectual Property Office (EUIPO) on the ground, inter alia, that it lacked individual character. ( 1 )

The Cancellation Division of EUIPO rejected the application for a declaration of invalidity because the evidence submitted to demonstrate disclosure of an earlier design was insufficient. The Board of Appeal of EUIPO annulled that decision and found that some of the additional evidence submitted to it had to be taken into account, that the disclosure of an earlier design had been proved and that the contested design lacked individual character.

The General Court dismisses the action brought by Sanford and, in addition to applying, in relation to designs, the principles relating to the admissibility of evidence submitted out of time, it points out, inter alia, that, in the comparison of the overall impressions during the assessment of individual character, the marks and distinctive signs on the designs are irrelevant.

Findings of the Court

As regards, first, the admissibility of evidence submitted out of time, the Court states that, in that respect, EUIPO has a broad discretion because it may disregard evidence which the parties have not submitted in due time. ( 2 ) The Court points out that, where EUIPO is called upon to adjudicate in invalidity proceedings, the taking into account of evidence submitted out of time may be justified where that evidence is relevant to the outcome of the application for a declaration of invalidity, the circumstances do not preclude this and the evidence is submitted by way of complement to the evidence submitted within that time limit.

In the present case, the Court finds that the Board of Appeal made appropriate use of its discretion. The evidence submitted for the first time to the Board of Appeal was intended to demonstrate that the earlier design had been disclosed. Furthermore, that evidence is in addition to the evidence which had already been submitted to the Cancellation Division and considered insufficient to establish disclosure. That evidence was therefore relevant to the outcome of the dispute and could validly complement the evidence already submitted.

Furthermore, the admissibility of the evidence at issue did not infringe the applicant’s right to be heard, since it was able to submit observations in that regard before the Board of Appeal.

Secondly, the Court holds that the earlier design was made available to the public within the meaning of Article 7(1) of Regulation No 6/2002.

Thirdly, as regards the assessment of individual character, the Court finds that the differences between the designs at issue, which are limited to the size of the label, the height of the roll, and the number, position and size of the black prints marks, are insufficient to produce a different overall impression in the mind of the informed user.

In addition, it points out that the word and figurative elements on the designs at issue are marks or distinctive signs affixed to the product to indicate its origin. Those elements do not constitute features of the product giving the goods concerned their appearance and are therefore irrelevant in the comparison of the overall impressions. The Court adds that, even though those elements could be regarded as relevant, it will be clear to the informed user that their purpose is to indicate the origin of the goods, with the result that, in the overall impression, that user will not attach importance to them.

Accordingly, the Court holds that the designs at issue produce the same overall impression on the informed user and that the contested design therefore lacks individual character.

( 1 ) Within the meaning of Article 6 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

( 2 ) Under Article 63(2) of Regulation No 6/2002.