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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

17 September 2019 (*)

(Community design — Invalidity proceedings — Registered Community design representing a washing sponge — Earlier designs — Grounds for invalidity — Examination by the Board of Appeal of its own motion of the facts constituting disclosure — Burden of proof on the invalidity applicant — Requirements relating to the reproduction of the prior design)

In Case T‑532/18,

Aroma Essence Ltd, established in Kazanlak (Bulgaria), represented by A. Nastev, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,

defendant,

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

Refan Bulgaria OOD, established in Trud (Bulgaria),

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 19 July 2018 (Case R 1197/2017‑3), relating to invalidity proceedings between Aroma Essence and Refan Bulgaria,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin and M.J. Costeira (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 10 September 2018,

having regard to the response lodged at the Court Registry on 6 December 2018,

having regard to the fact that no request for a hearing was submitted by the main parties within 3 weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        Refan Bulgaria OOD is the holder of the Community design filed with the European Union Intellectual Property Office (EUIPO) on 29 April 2012 and registered under number 1333223‑0001 pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

2        The contested design is represented as follows:

3        The contested design was lodged for ‘washing sponges, soaps’ in Class 28.03 of the Locarno Agreement establishing an International Classification for Industrial Designs of 8 October 1968, as amended.

4        On 13 September 2016, the applicant, Aroma Essence Ltd, filed an application for a declaration of invalidity relating to the contested design, claiming that it lacked novelty and individual character, pursuant to Articles 5 and 6 of Regulation No 6/2002.

5        In support of its arguments, the applicant produced the images of two prior designs (No 1890492‑0001 and No 1890492‑0002), which had also been held by the holder of the contested design and which had been declared invalid by decisions of the Invalidity Division, ICD 8688 of 24 October 2012 and ICD 8689 of 3 October 2012 (‘the previous decisions’).

6        By decision of 10 April 2017, the Invalidity Division declared the contested design invalid for lack of individual character on the basis of prior design No 1890492‑0001. The Invalidity Division considered that, even if its examination was limited to the facts, evidence and arguments submitted by the parties, nothing prevented it from taking into consideration facts that are well known. Thus, it took the view that it could not overlook the fact that the holder of the prior contested design had been the holder of two designs which were declared invalid by the previous decisions on the basis of previous disclosures made by the holder itself. It considered that, although prior design No 1890492‑0001 had been disclosed during the period of 12 months laid down in Article 7(2) of Regulation No 6/2002 and should not be considered as evidence against the validity of the contested design, the fact that it had been declared invalid justified taking it into consideration for the purposes of declaring the identical, or very similar, contested design invalid. It found that to decide otherwise would have led to the paradox that one registration of the design would have been declared invalid whereas the subsequent registration of the same design would have been maintained on the register.

7        On 5 June 2017, the holder of the contested design filed an appeal against the decision of the Invalidity Division.

8        By decision of 19 July 2018 (‘the contested decision’), the Third Board of Appeal of EUIPO annulled the Invalidity Division’s decision and rejected the application for a declaration of invalidity of the contested design.

9        In the first place, the Board of Appeal indicated that, in its action before the Invalidity Division, the applicant claimed that the contested design lacked novelty and individual character and, in that respect, referred to the previous decisions declaring design No 1890492‑0001 and design No 1890492‑0002 invalid. The Board of Appeal stated that the application for a declaration of invalidity was based on the fact that the contested design had to be declared invalid for the same reasons as those which led to the invalidity of both those designs.

10      However, the Board of Appeal stated that the applicant had not made any reference to the reasoning in the previous decisions or to the prior designs on which those decisions were based.

11      Furthermore, the Board of Appeal considered that the fact that the previous decisions also reproduced the evidence of disclosure of the prior design in the form of YouTube screenshots and a catalogue picture could not be considered sufficient evidence to prove the existence of that prior design allegedly disclosed in 2010. It considered that it was for the applicant to identify and reproduce precisely the prior designs relied on to prove the invalidity of the contested design and not for the Board of Appeal to construe the prior designs from the evidence submitted.

12      Thus, it concluded that only design No 1890492‑0001 and design No 1890492‑0002 could be taken into consideration for the purposes of examining the application for a declaration of invalidity.

13      In the second place, the Board of Appeal considered that, contrary to what the Invalidity Division found, the invalidity of the prior designs for lack of novelty was not a well-known fact to be taken into account ex officio. It stated that the argument that any other conclusion would have led to the paradox of a prior design being declared invalid while the subsequent registration of the same design was maintained, misunderstood the principles of the invalidity proceedings as inter partes proceedings.

14      Moreover, the Board of Appeal stipulated that, while the applicant is not precluded from reverting to prior designs invoked in other proceedings and to the evidence submitted in support, it could not dispose of its obligation to substantiate those designs by merely referring to the decision taken in those other proceedings.

 Forms of order sought

15      The applicant claims that the Court should:

–        annul the contested decision or alter it by dismissing the appeal brought by Refan Bulgaria against the decision of the Invalidity Division of EUIPO of 10 April 2017;

–        order EUIPO and Refan Bulgaria to bear their own costs and to pay those which it incurred in the proceedings before the General Court and before EUIPO.

16      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

17      In support of its application, the applicant puts forward two pleas in law. The first plea alleges infringement of the principle of sound administration and infringement of Article 53(1) and (2), and Article 60(1) of Regulation No 6/2002 read in conjunction with Article 28(1)(b)(i), (v) and (vi), Article 30(1) and Article 36(1) of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation No 6/2002 (OJ 2002 L 341, p. 28), in so far as those provisions were construed in an extremely restrictive manner. The second plea alleges infringement of the principles of legal certainty, equal treatment and sound administration, and infringement of Article 59, Article 60(1), Article 65(5)(b) and (c), and Article 75 of Regulation No 6/2002, and of Article 36(1) of Regulation No 2245/2002.

18      The Court considers it appropriate to deal with both pleas together under a single plea, since the arguments advanced in support of those pleas are identical.

19      The applicant argues that the Board of Appeal’s conclusion that, in its pleadings, ‘no reference was made to the reasoning of the [previous decisions] or the prior designs on which they were based’ was incorrect. In that respect, the applicant claims that its pleadings submitted in the action before the Board of Appeal contained an express reference to the reasoning of the previous decisions. Furthermore, the previous decisions containing screenshots of the designs of a washing sponge with embedded soap taken from videos from a website uploaded on 12 January 2010 and 3 April 2010 and the leaflet dated ‘spring 2010’ were annexed to its application for a declaration of invalidity.

20      The applicant maintains, in any event, that the Board of Appeal, instead of interpreting the dispositive principle too broadly and interpreting the principle of ex officio examination too restrictively, should have exercised its full powers by informing it that its application for a declaration of invalidity did not comply with Article 28(1)(b)(i), (v) and (vi) of Regulation No 2245/2002 and by setting a deadline on the basis of Article 30(1) of Regulation No 2245/2002 for it to remedy the deficiencies in its application. The Board of Appeal thus infringed the principle of sound administration, Article 30(1) of Regulation No 2245/2002, Article 36(1) of Regulation No 2245/2002 and Article 60(1) and (2) of Regulation No 6/2002. In support of that claim, the applicant relies on the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), to argue that the Board of Appeal was required to request that it produce the evidence relied on in the previous decisions in order to carry out a full examination of the application for a declaration of invalidity in accordance with the principles of sound administration and equal treatment.

21      EUIPO disputes the applicant’s arguments.

22      As a preliminary point, it should be noted that the applicant criticises the Board of Appeal for having found that, in its pleading before the Board, the applicant did not make any reference to the reasoning in the previous decisions or to the prior designs on which those decisions were based. The applicant’s line of argument is based on a misreading of paragraph 18 of the contested decision. The Board of Appeal criticises the applicant for not referring to the reasoning of those previous decisions and of those designs in its pleadings submitted to the Invalidity Division.

23      In the first place, it should be observed that Article 63(1) of Regulation No 6/2002, on the examination of the facts by EUIPO of its own motion, provides that, in proceedings for a declaration of invalidity, the examination by EUIPO is restricted to the facts, evidence and arguments provided by the parties and the relief sought. That provision relates, inter alia, to the factual basis of decisions by EUIPO, 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 judgment of 5 July 2017, Gamet v EUIPO — ‘Metal-Bud II’ Robert Gubała (Door handle), T‑306/16, not published, EU:T:2017:466, paragraph 31 and the case-law cited).

24      In the second place, it should be noted that Article 52(2) of Regulation No 6/2002 provides that the application for a declaration of invalidity must be filed in a written reasoned statement. Article 28(1)(b)(i) and (vi) of Regulation No 2245/2002 stipulates that an application for a declaration of invalidity must contain a statement of the grounds of invalidity and an indication of the facts, evidence and arguments submitted in support of that application. Article 28(1)(b)(v) of Regulation No 2245/2002 requires, in addition, that where the application for a declaration of invalidity is based, in particular, on the lack of novelty and individual character of the registered Community design, it must contain the indication and the reproduction of the prior designs that could form an obstacle to the novelty or individual character of the registered Community design, as well as documents proving the existence of those earlier designs.

25      Thus, it is apparent from those provisions, first, that it is for the party who lodged the application for a declaration of invalidity to provide EUIPO with the necessary information and, in particular, to identify and reproduce precisely and entirely the design that is allegedly earlier in order to demonstrate that the contested design cannot be validly registered (judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 65). Secondly, it is not for EUIPO, but for the applicant for a declaration of invalidity, to provide evidence to demonstrate the truth of that ground (see judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 59 and the case-law cited).

26      It is apparent from the court file, first, that the application for a declaration of invalidity submitted by the applicant to the Invalidity Division did not contain any (direct and explicit) reference to the reasoning, evidence and conclusions in the previous decisions or to the prior designs on which those decisions were based. The applicant merely declared in its application that the contested design should be declared invalid on the same grounds as those relied on in the previous decisions, without explaining what those grounds were, and attached to that application the previous decisions which contained screenshots taken from the web site and a catalogue picture in order to prove the existence of that prior design allegedly disclosed in 2010.

27      Secondly, only prior design No 1890492‑0001 and prior design No 1890492‑0002 were validly relied on by the applicant in support of its application for a declaration of invalidity. The applicant identified only those prior designs as prior designs that could form an obstacle to the novelty or individual character of the registered Community design by indicating precisely their registration number and their reproduction. In addition, with regard to those prior designs registered with EUIPO, that evidence was sufficient to prove their existence, since all the relevant information concerning them could be verified in the EUIPO database. Furthermore, the application contained a comparison of the contested design with those prior designs alone.

28      It follows that the Board of Appeal rightly concluded that only design No 1890492‑0001 and design No 1890492‑0002 could be taken into consideration for the purposes of examining the application for a declaration of invalidity.

29      Although the earlier decisions contained evidence of disclosure of designs representing a washing sponge with embedded soap in the form of screenshots and a catalogue picture, the fact remains that that reference to the previous decisions, without providing further elaboration, does not satisfy the requirement to demonstrate the existence of a prior design identical to the contested design. In the present case, the applicant confines itself to that reference and does not provide the explanations needed to assess the lack of novelty and individual character of the contested design in relation to the prior design. The assessment of the novelty of a design must be conducted in relation to one or more specific, individualised, defined and identified designs from among all the designs which have been made available to the public previously (see judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 61 and the case-law cited).

30      The applicant cannot therefore criticise the Board of Appeal for having provided an overly restrictive interpretation of the principle that EUIPO is required to examine the facts of its own motion, given that, according to Article 63(1) of Regulation No 6/2002, in an action for a declaration of invalidity, EUIPO’s examination is restricted to the facts, evidence and arguments provided by the parties. It was for the applicant to make sure that all the prior designs relied on were clearly identified and reproduced, given that invalidity proceedings come under inter partes proceedings.

31      Nor can the applicant criticise the Board of Appeal for not having informed it that its application for a declaration of invalidity was vitiated by irregularities and for not having invited it to rectify them.

32      In that regard, it must be stated that Article 30(1) of Regulation No 2245/2002, concerning the dismissal of an application for a declaration of invalidity as inadmissible, provides that, if EUIPO finds that the application for declaration of invalidity does not comply with Article 52 of Regulation No 6/2002, Article 28(1) of Regulation No 2245/2002 or any other provision of both those regulations, it must inform the applicant accordingly and call upon the applicant to remedy the deficiencies within such time limit as it may specify.

33      Thus, it is clear from that provision that EUIPO must invite the applicant for a declaration of invalidity to rectify the irregularities where the application is inadmissible.

34      In the present case, as EUIPO rightly states in its reply, the application for a declaration of invalidity was found to be admissible in that the applicant relied on, as a basis for the application for a declaration of invalidity, prior design No 1890492‑0001 and prior design No 1890492‑0002, which were the only prior designs expressly mentioned and identified by the applicant.

35      Therefore, it must be concluded that it was for the applicant, not only to identify and reproduce clearly the prior designs which had been used as a basis for the decisions declaring design No 1890492‑0001 and design No 1890492‑0002 invalid, but also to refer to the evidence examined in the previous decisions.

36      EUIPO was therefore correct to take into consideration, during the examination of the application for a declaration of invalidity, only those designs which were expressly relied on by the applicant. Consequently, the Board of Appeal carried out a proper examination and did not infringe the principles of sound administration and equal treatment.

37      That conclusion cannot be called into question by the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509, paragraphs 91 to 100), relied on by the applicant.

38      In the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), the Court confirmed that, in trade mark opposition proceedings, EUIPO is obliged to take into consideration its previous decisions relied on by the opponent to prove the reputation of the earlier mark relied on and, if necessary, to request additional facts and evidence or, in the alternative, to provide reasons why it considers that the findings made in those decisions should be rejected.

39      In that regard, it must be observed that nothing precludes EUIPO’s previous decisions from being relied on as evidence in other inter partes proceedings, in particular where they have been identified in a precise manner and their substantive content is set out in the application for a declaration of invalidity (see, by analogy, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 69).

40      It is apparent from the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509, paragraph 61 and the case-law cited), relied on by the applicant, that EUIPO must, in accordance with Article 36(1) of Regulation No 2245/2002 and having regard to the principles of equal treatment and of sound administration, take into consideration the decisions which it has already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not.

41      However, the findings in the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509) do not apply to the particular circumstances of the present case. In that judgment, EUIPO’s previous decisions had been identified in a precise manner and the relevant passages and evidence from those decisions had been expressly referred to and summarised (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 73).

42      However, in the present case, as is apparent from paragraphs 26 to 29 above, the previous decisions were not validly relied on by the applicant in that it merely mentioned the designs declared invalid by the previous decisions without setting out the substantive content of those decisions and, in particular, without identifying the prior designs which served as a basis for that declaration of invalidity.

43      In addition, the Board of Appeal did in fact provide the reasons why it did not consider that the prior design at issue had been properly relied on. By contrast, in the case relied on by the applicant, the Court criticised EUIPO for not setting out the reasons which led it to disregard the previous prior decisions.

44      In any event and as EUIPO stated in its written pleadings, those decisions were, in the present case, taken into consideration in so far as they referred to the prior designs relied on expressly by the applicant.

45      Thus, it must be emphasised that the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509) cited by the applicant, cannot be applied to the present case.

46      In the light of all of the foregoing, the action must be dismissed in its entirety as unfounded.

 Costs

47      Under Article 134(1) 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.

48      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Second Chamber),

hereby:

1.      Dismisses the action;

2.      Orders Aroma Essence Ltd to pay the costs.

Delivered in open court in Luxembourg on 17 September 2019.

*      Language of the case: English.

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