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Document 62020TJ0373

Judgment of the General Court (Fifth Chamber) of 30 June 2021.
Framery Oy v European Union Intellectual Property Office.
Community design – Invalidity proceedings – Community design representing a transportable building – Earlier designs – Proof of disclosure – Article 7 of Regulation (EC) No 6/2002 – Ground for invalidity – No individual character – No different overall impression – Article 6(1)(b) and Article 25(1)(b) of Regulation No 6/2002 – Obligation to state reasons.
Case T-373/20.

ECLI identifier: ECLI:EU:T:2021:400

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

30 June 2021(*)

(Community design – Invalidity proceedings – Community design representing a transportable building – Earlier designs – Proof of disclosure – Article 7 of Regulation (EC) No 6/2002 – Ground for invalidity – No individual character – No different overall impression – Article 6(1)(b) and Article 25(1)(b) of Regulation No 6/2002 – Obligation to state reasons)

In Case T‑373/20,

Framery Oy, established in Tampere (Finland), represented by A. Renck and C. Stöber, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Smartblock Oy, established in Helsinki (Finland),

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 8 April 2020 (Case R 616/2019-3), relating to invalidity proceedings between Smartblock and Framery,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann, President, O. Spineanu-Matei (Rapporteur) and R. Mastroianni, Judges,

Registrar: J. Pichon, Administrator,

having regard to the application lodged at the Court Registry on 15 June 2020,

having regard to the response lodged at the Court Registry on 3 September 2020,

further to the hearing on 24 March 2021,

gives the following

Judgment

 Background to the dispute

1        On 14 July 2016, the applicant, Framery Oy, filed an application for registration of a Community design with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

2        The design in respect of which registration was sought and which is disputed in the present case is represented in the seven views below:

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3        The goods to which the design is intended to be applied are in Class 25-03 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended, and correspond to the following description: ‘Buildings [transportable]’.

4        The contested design was registered under No 3305994-0001 and was published in Community Designs Bulletin No 135/2016 of 21 July 2016.

5        On 18 December 2017, the other party to the proceedings, Smartblock Oy (‘Smartblock’), filed an application with EUIPO for a declaration of invalidity in respect of the contested design, pursuant to Article 52 of Regulation No 6/2002, for all the goods referred to in paragraph 3 above.

6        The ground relied on in support of the application for a declaration of invalidity was that referred to in Article 25(1)(b) of Regulation No 6/2002, in conjunction with Article 6 of that regulation, to the effect that the contested design lacked individual character. In support of its application, Smartblock stated that the contested design produced the same overall impression on the informed user as the designs disclosed earlier for mobile work spaces. It made reference to the designs ‘Office POD A’ and ‘Office POD B’ from the company OfficePOD Ltd. In support of its claims, the applicant furnished the following evidence:

–        an extract from OfficePOD Ltd’s Twitter page dated 19 February 2015, showing Office POD A, as reproduced below:

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–        an extract from Wayback Machine (https://archive.org/web/) dated 16 May 2015 published on http://manofmany.com, showing Office POD A;

–        an extract from OfficePOD’s Instagram page dated 22 June 2015, showing another version of Office POD A in a different colour and location;

–        an extract from Wayback Machine (https://archive.org/web/) dated 19 January 2015 published on www.officepod.co.uk, showing Office POD B, as reproduced below:

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–        an extract from OfficePOD Ltd’s Twitter page dated 11 November 2015, showing Office POD B, as reproduced below:

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–        an extract from OfficePOD’s Instagram page dated 7 April 2015, showing Office POD B, as reproduced below:

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7        By decision of 29 January 2019, the Invalidity Division granted the application for a declaration of invalidity based on the earlier design of Office POD B (‘the earlier design’). In essence, first, it found that Smartblock had proved the disclosure of the earlier design, in accordance with Article 7 of Regulation No 6/2002. Secondly, regarding the alleged lack of individual character for the purposes of Article 6 of Regulation No 6/2002, the Invalidity Division stated that the contested design was lacking in such character since it produced on the informed user an overall impression that was not distinct from that produced by the earlier design.

8        On 19 March 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Invalidity Division, claiming that the latter had erred in recognising the disclosure of the earlier design and arguing that the contested design lacked individual character for the purposes of Article 25(1)(b), in conjunction with Article 6, of Regulation No 6/2002, since it produced an overall impression on the informed user that was different from the earlier design. In support of its arguments, the applicant produced screen shots from a blog post of 1 April 2016 on the website www.1millionwomen.com.au/blog/why-you-should-consider-creating-office-space-your-backyard, which show views of the earlier design from above, as reproduced below:

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9        By decision of 8 April 2020 (‘the contested decision’), the Third Board of Appeal of EUIPO rejected the applicant’s appeal. In the first place, with regard to disclosure of the earlier design pursuant to Article 7 of Regulation No 6/2002, it observed that the images provided by Smartblock provided sufficient information on the earlier disclosure and on the essential features of that design, since they showed the sides, the back, the roof and the front of the transportable building. In the second place, on the basis of Article 25(1)(b), in conjunction with Article 6, of Regulation No 6/2002, it concluded in essence that the contested design produced the same overall impression on the informed user as that produced by the earlier design.

10      In that regard, first, the Board of Appeal pointed out that the degree of freedom of the designer was limited by technical specifications such as soundproofing, ventilation, provision of sufficient user space, plugs, and provision of a working environment with seating. However, the designer did enjoy a high degree of freedom as regards the shape, colours and materials of the transportable building. Secondly, it held that the informed user could be anyone who habitually uses or purchases such an item, and included sellers and distributors of transportable buildings, and purchasers of such buildings, employees and private users. Thirdly, as regards saturation of the state of the art, the Board of Appeal held that the evidence submitted by the applicant was insufficient to prove that the reference sector was so saturated at the date of filing of the contested design that an informed user would have been particularly sensitive to the differences between the designs at issue. Fourthly, as regards comparison of the overall impressions, the Board of Appeal took into account all the images of the earlier design shown in paragraphs 6 and 8 above. As regards the differences between the designs at issue, the Board of Appeal stated that in the earlier design the front and back frames were thicker and overhung the body of the transportable building, the front door and the rear wall were solid and not transparent, there was a protrusion on the roof and not four air vents, the exterior side walls could not be assessed, but appeared to be solid walls and not divided into three panels with air vents as in the contested design. As regards the similarities, the designs at issue had rounded corners of the front and rear frames, a ‘square’ shape of the transportable building, a do