Case T‑574/19

Tinnus Enterprises LLC

European Union Intellectual Property Office

Judgment of the General Court (Tenth Chamber), 18 November 2020

(Community design – Invalidity proceedings – Registered community design representing fluid distribution equipment – Ground for invalidity – Non-compliance with requirements for protection – Article 25(1)(b) of Regulation (EC) No 6/2002 – Features of appearance of a product solely dictated by its technical function – Article 8(1) of Regulation No 6/2002)

Community designs – Grounds for invalidity – Designs dictated by their technical function – Features of appearance of a product solely dictated by its technical function – Criteria for assessment – Existence of alternative designs – Irrelevant

(Council Regulation No 6/2002, recital 10 and Art. 8(1))

(see paragraphs 15, 16, 65, 101)
Community designs – Grounds for invalidity – Designs dictated by their technical function – Features of appearance of a product solely dictated by its technical function – Criteria for assessment – Taking into account the relevant objective circumstances

(Council Regulation No 6/2002, Art. 8(1))

(see paragraphs 17, 23-25, 41, 42, 54, 66, 81, 95)
Community designs – Grounds for invalidity – Designs dictated by their technical function – Representation of fluid distribution equipment

(Council Regulation No 6/2002, Art. 8(1))

(see paragraphs 93, 96, 97, 99)

Résumé

Tinnus Enterprises LLC is the holder of the Community design filed on 10 March 2015 with the European Union Intellectual Property Office (EUIPO) and intended to be applied to the product ‘fluid distribution equipment’. On 7 June 2016 and 19 April 2017, Mystic Products Import & Export SL and Koopman International BV, respectively, submitted an application for a declaration of invalidity in respect of the contested design. They relied, in particular, on Article 8(1) of Regulation No 6/2002 ( 1 ) according to which a Community design is not to subsist in features of appearance of a product which are solely dictated by its technical function.

By a confirmatory decision of 12 June 2019, EUIPO declared that the design at issue was invalid, concluding that it was based on features of appearance of a product, namely fluid distribution equipment, solely dictated by the technical function of that product. Tinnus Enterprises brought an action for the annulment of that decision before the General Court.

In its judgment of 18 November 2020, the General Court dismisses the action brought by Tinnus Enterprises and interprets, for the first time, Article 8(1) of Regulation No 6/2002, thereby supplementing the Court of Justice’s analysis in the judgment of 8 March 2018, DOCERAM. ( 2 )

Findings of the General Court

First of all, the General Court recalls that, according to the judgment in DOCERAM, in order to assess whether features of appearance of a product are solely dictated by its technical function, it has to be established that the technical function is the only factor which has determined those features, the existence of alternative designs not being decisive in that regard. The assessment must be made in three stages, namely determining the technical function of the product concerned, assessing the features of appearance of that product and examining whether, in the light of all of the relevant objective circumstances, those features are solely dictated by the technical function of the product concerned. The Court specifies that, if at least one of the features of appearance of the product concerned is not solely dictated by the technical function of that product, the design remains valid and protects that feature.

Furthermore, the Court observes that if all the features of appearance of the product concerned are solely dictated by its technical function, a design will not be valid, unless it is apparent that the arrangement of those features was dictated by considerations not concerned solely with the need to fulfil the technical function of the product concerned, creating, in particular, an overall visual impression going beyond mere technical function. In the present case, the Court finds that EUIPO correctly carried out all the necessary steps in considering the application of Article 8(1) of that regulation.

Next, after recalling that the identification of the features of appearance of a product must be carried out on a case-by-case basis either by means of a simple visual analysis of the design, or by a detailed examination of that design, the Court confirms the approach taken by EUIPO and finds that the fact that the features of appearance of the product concerned coincide with its individual component parts does not mean that EUIPO erred in the identification of those features.

Furthermore, the Court recalls that, according to the judgment in DOCERAM, the existence of alternative designs which fulfil the same technical function constitutes a relevant objective circumstance that has to be taken into consideration in the assessment as to whether the features of appearance of the product concerned are solely dictated by its technical function. In that regard, the Court considers that EUIPO correctly took into account, in its assessment of the design at issue, not only the existence of other designs held by Tinnus Enterprises, but also other relevant objective circumstances, in particular its European patent application, in order to conclude that all the features of appearance of the product at issue were solely dictated by its technical function.

Finally, the Court finds that EUIPO took into account all the relevant objective circumstances, supported by reliable evidence, in order to conclude that the appearance of the product at issue is not the result of a specific arrangement of its features determined by aesthetic considerations but is solely dictated by the technical functions of that product. Accordingly, the Court dismisses the action.

( 1 ) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs (OJ 2002 L 3, p. 1).

( 2 ) Judgment of the Court of Justice of 8 March 2018, DOCERAM, C-395/16, EU:C:2018:172.