Case T‑193/20

Eternit

v

European Union Intellectual Property Office

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

(Community design – Invalidity proceedings – Registered Community design representing a building panel – Earlier design representing a panel for a noise-reduction wall – Ground for invalidity – No individual character – Sector concerned – Informed user – Degree of freedom of the designer – No different overall impression – Relevance of goods actually marketed – Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002)

1.      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 – Criteria for assessment – Determination of the sector concerned, the informed user and the designer’s degree of freedom by reference to the design at issue – Comparison of the overall impressions of the designs at issue

(Council Regulation No 6/2002, Recital 14 and Arts 6 and 25(1)(b))

(see paragraphs 21-25, 27)

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 – Overall assessment of all the elements presented by the designs – Scope – Consideration of the goods actually marketed – Conditions

(Council Regulation No 6/2002, Recital 12 and Arts 3(a), 4(1), 6 and 25(1)(b))

(see paragraphs 28-33, 71, 72, 75, 82)

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 – Criteria for assessment – Sector concerned

(Council Regulation No 6/2002, Arts 6, 25(1)(b) and 36(2))

(see paragraphs 36, 37, 41-43)

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 building panel

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

(see paragraphs 50, 63, 65, 76-78, 81, 85)

Résumé

Following an application filed with the European Union Intellectual Property Office (EUIPO), Eternit (Belgium) obtained the registration of a Community design representing a building panel. Eternit Österreich GmbH brought an application for a declaration of invalidity of that design, inter alia, on the ground that it did not have individual character (1) in relation to the earlier design representing a panel for a noise-reduction wall.

EUIPO declared the design at issue invalid, taking the view that it lacked individual character because, to the informed user, it was similar overall to the earlier design.

The Court dismisses Eternit’s action against the decision of EUIPO. First, it clarifies, in relation to the designs at issue, that it is appropriate to define the sector concerned, the informed user and the degree of freedom of the designer. Second, it specifies whether the goods actually marketed in which the designs at issue are incorporated or to which they are applied are relevant to the assessment of the individual character of the contested design.

Assessment of the General Court

In the first place, the Court recalls that the assessment of the individual character of a design at issue is the result, in essence, of a four-stage examination. In that regard, it states that the first three stages of the analysis, namely the determination of the sector concerned, the informed user and the designer’s degree of freedom, must be carried out only in relation to the design at issue. Given that the earlier design may fall within a completely different sector, characterised by a separate informed user and a separate freedom of the designer, it is not relevant for the purposes of those first three stages of the analysis. By contrast, the fourth stage, consisting of the comparison of the overall impressions produced by the designs at issue, requires both the contested design and the earlier design to be taken into account.

In the second place, the Court notes that, in the context of the assessment of individual character, account may be taken, in certain circumstances, of the goods actually marketed in which the designs at issue are incorporated or to which they are applied. It states that the goods actually marketed or the way in which they are used are relevant if the graphic or photographic representation of the design at issue does not, on its own, make it possible to determine which aspects of it are visible or the way in which the design will be perceived visually. The goods actually marketed may be taken into consideration only for illustrative purposes in order to determine the visual aspects of the designs. Thus, a product which is actually marketed may not be taken into account if the design applied to it or in which it is incorporated differs from the design as registered or if it displays features which are not clearly apparent from the graphic representation of that design.

1      For the purposes of 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 Article 6 of that regulation, a Community design may be declared invalid if it does not have individual character, such that the overall impression it produces on the informed user does not differ from that produced on such a user by any design which has been made available to the public.