Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Third Chamber)

20 January 2015 (*)

(Community design — Invalidity proceedings — Registered Community design representing a heat exchanger insert — Ground for invalidity — Lack of visibility of part of a complex product — Article 4(2) and Article 25(1)(b) of Regulation (EC) No 6/2002)

In Case T‑617/13,

Aic S.A., established in Gdynia (Poland), represented by J. Radłowski, Legal Adviser,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

ACV Manufacturing, established in Seneffe (Belgium),

ACTION brought against the decision of the Third Board of Appeal of OHIM of 10 September 2013 (Case R 688/2012-3), relating to invalidity proceedings between ACV Manufacturing and Aic S.A.,

THE GENERAL COURT (Third Chamber),

composed of S. Papasavvas, President, N.J. Forwood and E. Bieliūnas (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 20 November 2013,

having regard to the response lodged at the Court Registry on 31 March 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        The applicant, Aic S.A., is the proprietor of a Community design filed on 13 May 2009 and registered the same day under number 1137152-0002 (‘the contested design’) with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), in accordance with the procedures laid down in Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1). That design was published in the Community Design Bulletin No 152/2009, of 5 August 2009.

2        The goods to which the contested design is intended to be applied are in Class 23.03 of the Locarno Agreement of 8 October 1968 establishing an international classification for industrial designs and correspond to the following description: ‘Heat exchanger inserts’. The contested design is represented as follows:

3        On 7 February 2011, ACV Manufacturing filed an application with OHIM, pursuant to Article 52 of Regulation No 6/2002, for a declaration of invalidity of the contested design, based on Article 25(1)(b) of Regulation No 6/2002, on the ground that it did not meet the requirements of Article 4(1) and (2) of Regulation No 6/2002, read in conjunction with Articles 5 and 6, and, more specifically, Article 8(1) and (2) of that regulation.

4        By decision of 15 February 2012, the Invalidity Division of OHIM granted the application for a declaration of invalidity of the contested design on the basis of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 4(2) of that regulation.

5        On 4 April 2012, the applicant filled a notice of appeal, under Articles 55 to 60 of Regulation No 6/2002, against the decision of the Invalidity Division.

6        By decision of 10 September 2013 (‘the contested decision’), the Third Board of Appeal of OHIM dismissed the appeal. In particular, it found, first of all, that the heat exchanger insert at issue, to which the contested design was applied, was presented as a part of a complex product, namely a heat exchanger, which was itself incorporated into an even more complex product, in the present case, a household boiler. It also noted that no part of the heat exchanger insert remained visible after its installation in a boiler. In addition, it stated that even if the heat exchanger at issue would and could be used as a visible unit, as a part of industrial equipment, which use had not been demonstrated by the applicant in the present case, the heat exchanger insert itself would remain entirely covered. Therefore, it concluded that a heat exchanger insert, incorporated into a complex product — in this instance, a boiler, and in a heat exchanger inside that boiler — lacked both novelty and individual character within the meaning of Article 4 of Regulation No 6/2002, since it was not visible during normal use of the complex product at issue, in accordance with Article 4(2) of Regulation No 6/2002.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        refer the case back to OHIM;

–        order OHIM to pay the costs of the proceedings before the Court and Board of Appeal.

8        OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

9        In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 4(2) thereof.

10      It must be recalled that, under Article 25(1)(b) of Regulation No 6/2002, a Community design may be declared invalid only if it does not fulfil the conditions laid down in Articles 4 to 9 of that regulation.

11      As provided in Article 4(2) of Regulation No 6/2002, a Community design applied to a product which constitutes a component part of a complex product is only to be considered to be new and to have individual character in so far as, first, the component part, once it has been incorporated into the complex product, remains visible during normal use of that product and, secondly, those visible features of the component part fulfil in themselves the requirements as to novelty and individual character. Furthermore, according to Article 4(3) of Regulation No 6/2002, ‘normal use’ means use by the end user, excluding maintenance, servicing or repair work.

12      In the present case, the Board of Appeal found that the contested design had to be declared invalid, in so far as it did not fulfil the first condition laid down in Article 4(2)(a) of Regulation No 6/2002 concerning the visibility of the part to which the Community design is applied, once that part is incorporated into the complex product and during normal use of that product.

13      In reaching that conclusion, the Board of Appeal, first, defined the normal use of the heat exchanger insert at issue in the present case. It stated that, by definition, the heat exchanger insert constitutes an internal part of a heat exchanger, which is further installed into a boiler, and used according to its function as an inseparable part of that device. It took the view, therefore, that the normal use of the heat exchanger insert coincided with that of the end product which includes it, namely a household boiler (paragraph 23 of the contested decision). Secondly, it defined the end user as the person buying a boiler for domestic use, thus excluding professionals in building or maintenance companies, who install boilers in houses (paragraphs 24 and 29 of the contested decision).

14      Thirdly, having defined, in essence, a heat exchanger insert as an internal part of a heat exchanger containing, in the present case, combustion flues (paragraph 23 of the contested decision), the Board of Appeal stated that a heat exchanger was, in general, a piece of equipment built for efficient heat transfer from one medium to another (paragraph 28 of the contested decision). Next, the Board of Appeal found that the documents submitted by the parties could lead to the conclusion that the product at issue — namely, the heat exchanger and its inserts — was intended only for domestic use and was, therefore, fitted into a boiler intended for such use (paragraph 29 of the contested decision). The Board of Appeal took the view that during normal use of a boiler which, for reasons of safety and thermal and acoustic insulation, was constructed as a closed system, covered on all sides by metallic plates, the heat exchanger, which includes the heat exchanger insert, would remain invisible (paragraphs 30 and 31 of the contested decision). On that basis, the Board of Appeal found that, even if the heat exchanger insert were in part visible during the functioning of the heat exchanger — which has not been demonstrated in the present case — that part would still remain invisible to the user, together with its housing, namely the heat exchanger itself, during normal use of a household boiler (paragraph 34 of the contested decision). Furthermore, the Board of Appeal found that it was irrelevant, in the light of the requirements laid down in Article 4(2) of Regulation No 6/2002, that a heat exchanger insert or a heat exchanger itself can be sold separately from a boiler (paragraph 37 of the contested decision).

15      It must be noted that, in its action, the applicant does not challenge the findings of the Board of Appeal, as referred to in paragraphs 13 and 14 above, concerning the definition of the end user, the definition of the normal use of a household boiler, the definition of a heat exchanger insert or that of a heat exchanger, the general appearance of a boiler and the fact that it is irrelevant that a heat exchanger insert can be sold separately in order to satisfy the requirement of visibility provided for in Article 4(2) of Regulation No 6/2002.

16      As those findings are, in any event, free from error, it is appropriate to confirm them.

17      By contrast, the applicant first criticises the Board of Appeal for not having taken into account that the bottom of the heat exchanger has a characteristic conical shape which, as a result, requires the pipe bundles in the heat exchanger insert to have a special, specific shape.

18      Secondly, the applicant claims that the Board of Appeal committed factual errors, as a result of which the facts were not assessed appropriately as regards the prerequisite of visibility of the contested design during normal use. The applicant also submits that the Board of Appeal incorrectly assessed the evidence adduced by the parties and relied on presumptions, not supported by convincing evidence, thereby leading to the finding that the contested design was applied to a part which necessarily formed part of a heat exchanger incorporated into a boiler intended for domestic use.

19      OHIM disputes the applicant’s arguments.

20      In the present case, first, the applicant’s argument regarding the special, specific shape of the pipe bundles required in the heat exchanger insert as a result of the characteristic conical shape of the heat exchanger, must be rejected as ineffective.

21      As was pointed out in paragraph 12 above, the Board of Appeal held that the registration of the contested design on the basis of Article 4(2) of Regulation No 6/2002 was invalid. Therefore, it is necessary to assess only whether the heat exchanger insert constitutes a visible part of the complex product. In that respect, it should be noted that the issue of the shape of the heat exchanger insert, dictated by that of the heat exchanger, cannot be of use in assessing the visibility of the insert once incorporated into a boiler. That issue would fall within the scope of Article 8 of Regulation No 6/2002 which deals with designs dictated by their technical function and designs of interconnections, on which the Board of Appeal did not rely in holding that the registration of the contested design was invalid.

22      Secondly, as regards, the applicant’s complaints concerning the evidence taken into consideration by the Board of Appeal, it must be pointed out that, in accordance with Article 63(1) of Regulation No 6/2002, in proceedings concerning a declaration of invalidity, ‘the [examination by OHIM] shall be restricted … to the facts, evidence and arguments provided by the parties and the relief sought’. According to settled case-law relating to Community trade marks, applicable mutatis mutandis to Community designs, that provision relates, inter alia, to the factual basis of decisions of OHIM, that is, the facts and evidence on which those decisions may be validly based. Thus, the Board of Appeal, when hearing an appeal against a decision terminating proceedings for a declaration of invalidity, may base its decision only on the facts and evidence submitted by the parties (see, to that effect and by analogy, judgment of 22 June 2004 in Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, ECR, EU:T:2004:189, paragraph 28, and judgment of 13 June 2012 in XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, EU:T:2012:294, paragraph 38).

23      Therefore, it was for the parties before the Board of Appeal to adduce evidence to support their claims. In that regard, it is apparent from the case file before OHIM that only ACV Manufacturing provided evidence that made it possible to understand how the heat exchanger insert covered by the contested design is incorporated into a heat exchanger and used. The evidence adduced by the applicant did not relate to the heat exchanger inserts covered by the contested design, but concerned models of heat exchangers, and therefore that evidence cannot be used to challenge the conclusions reached by the Board of Appeal on the basis of the evidence adduced by ACV Manufacturing.

24      Therefore, contrary to the applicant’s allegation, the Board of Appeal cannot be criticised for relying on the evidence put forward by ACV Manufacturing in order to conclude, in the present case, that the contested design concerned a part intended to be incorporated into a complex product.

25      In that regard, it must be pointed out that the applicant does not dispute that a heat exchanger insert is an internal part of a complex product, namely a heat exchanger. By contrast, it claims, first, that the bottom of the heat exchanger insert is visible and the Board of Appeal moreover acknowledged this to be the case, and, secondly, that the heat exchanger does not necessarily form part of a household boiler.

26      It should be noted that, contrary to what the applicant alleges and as pointed out by OHIM, the Board of Appeal did not state, in paragraph 26 of the contested decision, that the lower cover plate of the heat exchanger insert, to which the contested design applies, would remain visible when inserted into a boiler, but only reiterated the conclusion reached by the Invalidity Division and ACV Manufacturing.

27      The Board of Appeal, for its part, found, in paragraph 34 of the contested decision, that it had not been proven in the present case that the heat exchanger insert was partially visible during the normal use of a household boiler.

28      In addition, the applicant merely criticises the Board of Appeal’s findings, after it examined the evidence submitted by the parties, but without adducing any specific evidence to contradict those findings.

29      Furthermore, in the case file of the proceedings before OHIM, the applicant did not provide any documents to prove its claim. Thus, it adduced no evidence that makes it possible to understand how the lower part of the heat exchanger insert to which the contested design applies would remain visible in the heat exchanger and, then, in a household boiler, nor how the heat exchanger at issue in the present case would be likely to function outside of a household boiler.

30      Admittedly, the applicant claims that in a previous decision of 3 January 2012 (File ICD 8368) (‘Decision ICD 8368’), the Invalidity Division of OHIM took the view that sieve bottoms were used as parts of heating equipment in various applications and that they were not necessarily integrated in a boiler box during its use. The applicant adds that in a previous decision of 13 December 2011 (File ICD 8335) (‘Decision ICD 8335’), the Invalidity Division of OHIM also stated that a heat exchanger was not the exclusive component of a boiler and could be used for various different applications, such as industrial installations, chemical or pharmaceutical industries, oil temperature cooling, liquid and gas cooling or domestic installations, floor heating and waste water heat recovery. According to the applicant, the Invalidity Division took the view that it had not been sufficiently and undoubtedly proven that the heat exchanger necessarily constituted an invisible part of a boiler during its normal use, and that the end user was in a position to have a clear view of all the elements of the contested design while the heat exchanger was functioning without the necessity of opening a cover door or disassembling it.

31      According to the applicant, those findings, as set out in Decision ICD 8368 and Decision ICD 8335, contradict the position taken by the Board of Appeal in the present case.

32      However, it must be pointed out that, according to Community trade mark case-law, applicable mutatis mutandis to Community designs, OHIM is under a duty to exercise its powers in accordance with the general principles of EU law. While, in the light of the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and must consider with special care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any design application must be stringent and comprehensive, in order to prevent designs from being improperly registered. Such an examination must therefore be undertaken in each individual case. The registration or the retention of a design as a Community design depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the design at issue is caught by a ground for refusal or a ground for invalidity (see judgment of 12 March 2014 in Tubes Radiatori v OHIM — Antrax It (Radiateur), T‑315/12, EU:T:2014:115, paragraph 74 and the case-law cited).

33      In the present case, none of the evidence — particularly the assessments contained in Decision ICD 8368 and Decision ICD 8335 invoked by the applicant — obliges the Court to conclude that, in the contested decision, the Board of Appeal erred in finding that the heat exchanger insert was necessarily part of a complex product, namely a household boiler in which a heat exchanger is incorporated.

34      In any event, it must be noted that, first, Decision ICD 8368 and Decision ICD 8335 do not deal with a Community design applied to heat exchanger inserts, but concern Community designs applied to sieve bottoms and heat exchangers, respectively, so that the factual circumstances were different from the present case. Secondly, and contrary to the applicant’s contentions, it is apparent from paragraph 39 of the contested decision that, while specifying that, in the present case, the contested design did not concern a heat exchanger, but a heat exchanger insert, and that, therefore, the applicant should, in any event, have, demonstrated the visibility of the insert which is incorporated in such a heat exchanger, the Board of Appeal examined whether a heat exchanger could be used in installations other than a household boiler and took the view that that could be the case. However, the Board of Appeal took the view that, in the circumstances of the present case, the applicant had not provided proof of such use in respect of a heat exchanger, in which a heat exchanger insert is incorporated and to which the contested design applied.

35      It follows that the Board of Appeal did not err in finding that the contested design must be declared invalid on the basis of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 4(2) of the same regulation.

36      In the light of all the foregoing, the single plea in law must be rejected and, therefore, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim.

 Costs

37      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM. 

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Aic S.A. to pay the costs.

Delivered in open court in Luxembourg on 20 January 2015.

[Signatures]

* Language of the case: English.

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