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

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

12 March 2020 (*)

(Community design — Invalidity proceedings — Registered Community design representing packaging for foodstuffs — Earlier design — 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 (EC) No 6/2002)

In Case T‑353/19,

Gamma-A SIA, established in Riga (Latvia), represented by M. Liguts, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,

defendant,

intervener before the General Court, formerly Piejūra SIA, the other party to the proceedings before the Board of Appeal of EUIPO, being

Zivju pārstrādes uzņēmumu serviss SIA, established in Riga, represented by J. Alfejeva, lawyer,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 12 February 2019 (Case R 2543/2017-3), relating to invalidity proceedings between Piejūra SIA and Gamma-A,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann, President, U. Öberg and O. Spineanu‑Matei (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 10 June 2019,

having regard to the response of EUIPO lodged at the Court Registry on 5 August 2019,

having regard to the response of the intervener lodged at the Court Registry on 12 August 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three 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        On 10 February 2011, the applicant, Gamma-A SIA, requested and obtained from the European Union Intellectual Property Office (EUIPO), on the basis of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), registration under number 1819558-0002 of a Community design represented below:

2        The products in which the contested design is intended to be incorporated are in Class 9-3 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Packaging for foodstuffs’. The application for registration as a Community design was published in Community Designs Bulletin No 2011/038 of 16 February 2011.

3        On 7 September 2016, the intervener, Zivju pārstrādes uzņēmumu serviss SIA, formerly Piejūra SIA, filed with EUIPO an application for a declaration of invalidity in respect of the contested design, under Article 52 of Regulation No 6/2002.

4        The ground relied upon in support of the application for a declaration of invalidity was that set out in Article 25(1)(b) of Regulation No 6/2002. The intervener claimed, inter alia, in its application for a declaration of invalidity, that the contested design lacked novelty and individual character for the purposes of Articles 5 and 6 of that regulation. In support of its application, the intervener stated that the contested design was identical to, or produced the same overall impression on the informed user as, several earlier disclosed designs intended to be incorporated in glass jars with a circular, removable lid.

5        Among the earlier designs relied on, the intervener referred, in particular, to the design intended to be incorporated in glass jars bearing the mark Bering (‘the first earlier design’), the disclosure of which it proved by means of, first, a statement by the Lithuanian company UAB Provit Industrija (‘Provit’), confirming that it produced and distributed preserved fish in such jars before 2010, and a statement by the Kompo Group that that group of companies was Provit’s exclusive distributor in Russia for preserved fish bearing the mark Bering from 2004 until 2013 and, second, a veterinary certificate and documents for the transport of those preserves to Russia dating from 2010. The image relating to the first earlier design is reproduced below:

6        The intervener also referred to the Community design registered on 15 December 2004 under number 270533-0001 (‘the second earlier mark’), intended to be incorporated in products in Class 9-1 and corresponding to the following description: ‘Jars (packaging)’. The image relating to that design is reproduced below:

7        By decision of 23 November 2017, the Invalidity Division rejected the application for a declaration of invalidity. It found, first of all, that the intervener had proven the disclosure of three of the earlier designs relied on, including that of the second earlier design, but not that of the first earlier design. Next, in so far as concerns the contested design’s alleged lack of novelty for the purposes of Article 5 of Regulation No 6/2002, the Invalidity Division found, in essence, that the contested design was not identical to the earlier designs in respect of which disclosure had been established, in particular the second earlier design. Lastly, as regards the lack of individual character for the purposes of Article 6 of Regulation No 6/2002, claimed by the intervener, the Invalidity Division stated that the contested design did have such character, in so far as it produced on the informed user an overall impression distinct from that produced by the earlier designs in respect of which disclosure had been established, in particular that produced by the second earlier design, in that, in relation to the latter, differences in the contested design’s appearance were clearly perceptible.

8        On 27 November 2017, the intervener filed a notice of appeal with EUIPO, under Articles 55 to 60 of Regulation No 6/2002, against the Invalidity Division’s decision, claiming that it had wrongly called into question the disclosure of some of the designs relied on, including the first earlier design, and arguing, once again, that the contested design lacked novelty and individual character for the purposes of Article 25(1)(b) of Regulation No 6/2002, in conjunction with Articles 5 and 6 thereof, in so far as it produced on the informed user the same overall impression as the earlier designs relied on.

9        By decision of 12 February 2019 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the intervener’s appeal. Having found that the intervener had established disclosure of the first earlier design, the Board of Appeal based its decision on Article 25(1)(b) of Regulation No 6/2002, in conjunction with just Article 6 thereof, and, in essence, held that the contested design produced on the informed user an impression of ‘déjà vu’ in relation to the first earlier design, in so far as it incorporated the same features of appearance as the latter, namely a transparent glass jar with a coloured circular removable lid. It added that only the features of appearance of the packaging in which the contested design is intended to be incorporated should be taken into account and not the features of appearance of its contents as well. Similarly, according to the Board of Appeal, the label affixed only to the jar in which the first earlier design is intended to be incorporated does not influence the overall impression produced by the designs at issue. Accordingly, the Board of Appeal annulled the Invalidity Division’s decision and declared the contested design invalid for lack of individual character in relation to the first earlier design.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision and, accordingly, declare the contested design valid;

–        order EUIPO and the intervener to pay the costs.

11      EUIPO and the intervener contend, in essence, that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility of the head of claim seeking from the Court a declaration that the contested design is valid

12      EUIPO claims that the first head of claim in the application, in so far as it seeks from the Court a declaration that the contested design is valid, is inadmissible since the declaration of validity sought falls outside the scope of an application for annulment, the objective of which cannot be to obtain confirmatory or declaratory rulings. If that head of claim were to be interpreted as referring to the consequence of the annulment of the contested decision and the rejection of the intervener’s application for a declaration of invalidity, it would, in any event, be redundant.

13      In that regard, it should be noted that, by its first head of claim, the applicant seeks, inter alia, to obtain a declaratory ruling to the effect that the contested design is valid. However, the General Court has jurisdiction, under Article 61(3) of Regulation No 6/2002, only to annul or to alter decisions of the Boards of Appeal. Therefore, the Court does not have jurisdiction to declare the contested design valid (see, by analogy judgment of 1 July 2014, You-View.tv v OHIM — YouView TV (YouView+), T‑480/13, not published, EU:T:2014:591, paragraph 15 and the case-law cited).

14      As a result, in so far as it seeks from the Court a declaration that the contested design is valid, the applicant’s first head of claim is inadmissible.

 Substance

15      In support of the action, the applicant relies on two pleas in law, the first alleging infringement of Article 7(1) of Regulation No 6/2002, in so far as the Board of Appeal made an error of assessment in finding that the evidence submitted by the intervener established that the first earlier design had been disclosed in accordance with that provision, and the second alleging infringement of Article 25(1)(b) of that regulation, in conjunction with Article 6 thereof, in so far as the Board of Appeal decided that the contested design lacked individual character.

16      EUIPO and the intervener dispute the applicant’s arguments.

 The first plea in law, alleging infringement of Article 7(1) of Regulation No 6/2002

17      The applicant claims that the evidence submitted by the intervener in order to prove disclosure of the first earlier design within the meaning of Article 7 of Regulation No 6/2002 is neither solid nor objective, and that the facts pertaining to such disclosure, even if it were established, could not, in the normal course of business, reasonably have become known to specialist circles in the sector concerned operating within the European Union.

18      It should be borne in mind that, according to Article 7(1) of Regulation No 6/2002, for the purpose of applying Articles 5 and 6 of that regulation, a design is to be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date of filing of the application for registration, except where these events could not reasonably have become known in the normal course of business to the specialist circles in the sector concerned, operating within the European Union.

19      According to case-law, a design is deemed to have been made available once the party claiming disclosure has proven the events constituting disclosure. By contrast, in order to refute that presumption, the party disputing disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those events from becoming known in the normal course of business to the specialist circles in the sector concerned (judgment of 21 May 2015, Senz Technologies v OHIM — Impliva (Umbrellas), T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 26).

20      Therefore, in order to establish that an earlier design has been disclosed, it is necessary to carry out a two-stage analysis, namely examining, in the first place, whether the evidence submitted in the application for a declaration of invalidity shows (i) events constituting disclosure of a design, and (ii) that that disclosure occurred earlier than the date of filing or priority of the contested design, and, in the second place, where the holder of the contested design has claimed the contrary, whether those events could reasonably have become known in the normal course of business to the specialist circles in the sector operating within the European Union, failing which any disclosure will be considered to have no effects and will not be taken into account (judgment of 13 June 2019, Visi/one v EUIPO — EasyFix (Document holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 24).

21      Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Regulation No 6/2002 (OJ 2002 L 341, p. 28) is silent as to the evidence of disclosure of the earlier design that is to be provided by the applicant for a declaration of invalidity. More specifically, Article 28(1)(b)(v) of Regulation No 2245/2002 merely provides that, where the ground for the application for the declaration of invalidity is, inter alia, that the Community design for which protection is sought is devoid of individual character, the application must contain the indication and the reproduction of the earlier design that could preclude the Community design for which protection is sought being regarded as having individual character, as well as documents proving prior disclosure of the earlier design. Moreover, neither Regulation No 6/2002 nor Regulation No 2245/2002 specifies a mandatory format for the evidence that must be adduced by the applicant for the declaration of invalidity to prove disclosure of the earlier design before the date of filing of the application for registration of the design for which protection is sought. Thus, Article 28(1)(b)(v) and (vi) of Regulation No 2245/2002 merely requires the application for the declaration of invalidity to contain ‘documents proving the existence [of the earlier design]’ and ‘the facts, evidence and arguments submitted in support [of the grounds of the application]’. Similarly, Article 65(1) of Regulation No 6/2002 merely contains a non-exhaustive list of methods of taking evidence in proceedings before EUIPO. The applicant for the declaration of invalidity is therefore free to choose the evidence he considers useful to submit to EUIPO in support of his application for a declaration of invalidity (see, to that effect, judgment of 17 May 2018, Basil v EUIPO — Artex (Baskets adapted for cycles), T‑760/16, EU:T:2018:277, paragraph 41 and the case-law cited).

22      Disclosure of an earlier design cannot, however, be proven by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of actual disclosure of the earlier design on the market. In addition, the items of evidence adduced by the applicant for the declaration of invalidity must be assessed in relation to each other. Although some of that evidence may be insufficient in itself to prove disclosure of an earlier design, when combined or read in conjunction with other documents or information, it may nevertheless contribute to establishing disclosure. Finally, in order to assess the evidential value of a document, it is necessary to verify whether the information which that document contains is plausible and accurate. It is necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (judgment of 17 May 2018, Baskets adapted for cycles, T‑760/16, EU:T:2018:277, paragraph 42 and the case-law cited).

23      In the present case, the Board of Appeal granted the intervener’s application for a declaration of invalidity on the basis that it had provided proof that the first earlier design had been disclosed to the public within the meaning of Article 7(1) of Regulation No 6/2002.

24      In that regard, it is not disputed that the intervener submitted to the Invalidity Division and the Board of Appeal, as proof of disclosure, the following documents:

–        a statement dated 7 September 2016 by the Kompo Group, that that group was Provit’s exclusive distributor in Russia for preserved fish bearing the mark Bering from 2004 until 2013;

–        a statement dated 5 September 2016 by Provit, confirming that it exported preserved fish bearing the mark Bering, referring to an invoice dated 9 December 2010, in reply to a letter dated 2 September 2016 from a law firm;

–        a veterinary certificate dated 13 December 2010 (LT 0079647/L 2-13722), and the annex thereto, demonstrating that Provit had, from that date, the right to market its preserved fish within the European Union and third countries, including Russia;

–        transport documents dated December 2010 drawn up by Provit, according to which 3 456 jars of preserved fish had been delivered to a company established in Moscow (Russia).

25      The intervener also submitted to the Board of Appeal a notification dated 11 December 2017 from the Rīgas Pilsētas Vidzemes Priekšpilsētas Tiesa (Riga City Court, Vidzeme District, Latvia), stating that the intervener had submitted to that court the Kompo Group’s statement dated 7 September 2016 referred to in the first indent of paragraph 24 above.

26      It must therefore be concluded that the evidence submitted by the intervener to EUIPO, as listed in paragraph 24 above, taken as a whole, is capable of establishing to the requisite legal standard that the first earlier design had been disclosed within the meaning of Article 7(1) of Regulation No 6/2002, as the Board of Appeal stated, moreover, in paragraph 25 of the contested decision.

27      Indeed, considered in relation to each other, the documents described in paragraph 24 above corroborate each other. The veterinarian certificate and the transport documents state the weight of the jars, the type of preserved fish they contained and their date of manufacture. Those indications coincide with and are confirmed by the statement of Provit, which specifies the way in which the preserved fish was packed, and by Kompo Group’s statement, from which it is apparent that that group distributed preserved fish in glass jars under the mark Bering as of 2004.

28      Accordingly, in the first place, as regards the statement made by Provit, the applicant cannot successfully argue that it has limited probative value on the basis that it was neither certified nor affirmed. Indeed, when combined with the other documents, that statement seems to be sound and reliable within the meaning of the case-law referred to in paragraph 22 above. Moreover, with regard to the applicant’s claim that the value of that statement is weakened by the fact that Provit has a direct interest in the contested design being declared invalid, while that could indeed cast doubt on the credibility of the statement in question, it amounts nonetheless to speculation that is unsubstantiated by the applicant and it therefore cannot deprive that statement of all probative value.

29      In addition, as the Board of Appeal stated in paragraphs 22 and 23 of the contested decision, Provit’s statement was made in the context of Article 48 of the Lietuvos Respublikos advokatūros įstatymas (Lithuanian Advocacy Law) and may therefore be regarded as having a similar effect to a sworn or affirmed statement under the law of the State in which it was drawn up, namely the Republic of Lithuania, in accordance with Article 65(1)(f) of Regulation No 6/2002. Moreover, the applicant has not claimed that the facts set out in that statement are untrue.

30      In the second place, the applicant cannot rely on the fact that the veterinary certificate and the transport documents neither specifically identify the Bering mark nor establish that the packaging used is actually that in which the first earlier design is intended to be incorporated. Indeed, as the Board of Appeal stated in paragraph 24 of the contested decision, such documents do not usually describe the substantive details of the packaging of the goods concerned, but, in the light of the information given in those documents, set out in paragraph 27 above, it is possible to link them to the first earlier design.

31      In the third place, as regards the claim made by the applicant that none of the evidence submitted by the intervener bears a date allowing the time at which the first earlier design was allegedly disclosed to be determined, that claim is unfounded. The dates which are in fact on the documents establish that disclosure took place at a time which can be identified with reasonable certainty prior to the filing date of the application for registration of the contested design (see, to that effect, judgment of 14 June 2011, Sphere Time v OHIM — Punch (watch attached to a lanyard), T‑68/10, EU:T:2011:269, paragraphs 31 and 32).

32      In the fourth place, the argument of the applicant, which — without raising an independent plea alleging deficient reasoning vitiating the contested decision — claims that the Board of Appeal, despite not establishing the date of the alleged disclosure of the first earlier design, did not explain its reasons for finding that such disclosure had in fact been established by the intervener, cannot succeed. It is apparent from the contested decision that the Board of Appeal, first, explained that the export of food products packed in glass jars in which the first earlier design is intended to be incorporated must be deemed to be ‘use in trade’ of that design for the purposes of Article 7 of Regulation No 6/2002 (paragraph 20), second, examined and replied to the applicant’s objections concerning the probative value of Provit’s statement (paragraphs 21 to 23) and of the veterinary certificate and the transport documents (paragraph 24) and, third, concluded as a result that the first earlier design had been used in trade prior to the filing of the application for registration of the contested design (paragraph 25).

33      Therefore, in the light of the items of evidence submitted by the intervener, which, according to the case-law referred to in paragraph 22 above, must be assessed in relation to each other, it must be found that the intervener demonstrated the events constituting disclosure of the first earlier design, which took place prior to the date of filing of the application for registration of the contested design, in accordance with the case-law referred to in paragraphs 19 and 20 above.

34      It is true that the applicant relies on the fact that the specialist circles in the sector concerned, operating within the European Union, referred to at the end of the first sentence of Article 7(1) of Regulation No 6/2002, could not reasonably have become aware in the normal course of business of the events allegedly constituting disclosure of the first earlier design, given that the packaging in which it is intended to be incorporated was used in trade outside the geographical boundaries of the European Union. However, facts which could, in some circumstances, have rebutted the presumption of disclosure of the first earlier design were neither put forward nor demonstrated before the Board of Appeal, as is clear from the second sentence of paragraph 25 of the contested decision. Therefore, the points raised in this regard before the Court, in addition to being no more than statements of principle, cannot be raised for the first time before the Court.

35      In the light of all the foregoing, the first plea in law put forward by the applicant must be dismissed as unfounded.

 The second plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, in conjunction with Article 6 thereof

36      The applicant complains, in essence, that the Board of Appeal made an error of assessment in finding that the contested design lacked individual character, in breach of Article 25(1)(b) of Regulation No 6/2002, in conjunction with Article 6 thereof.

37      It should be borne in mind that Article 25(1) of Regulation No 6/2002 provides that a Community design may be declared invalid only in the cases referred to under subparagraphs (a) to (g) of that paragraph and, specifically, as regards the case referred to in subparagraph (b), if it does not fulfil the conditions set out in Articles 4 to 9 of that regulation.

38      Among the requirements for protection of a design by a Community design laid down in Articles 4 to 9 of Regulation No 6/2002 is the requirement that the design has individual character, as set out in Article 6 of that regulation. Article 6(1)(b) of Regulation No 6/2002 provides, inter alia, that a registered Community design is considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing the application for registration. Moreover, Article 6(2) of Regulation No 6/2002 states that, in assessing individual character of a design, the degree of freedom of the designer in developing that design is to be taken into consideration.

39      In accordance with case-law, the individual character of a design results from an overall impression of difference or lack of ‘déjà vu’, from the point of view of an informed user, in relation to any previous presence in the design corpus, without account being taken of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but regard being had to differences that are sufficiently marked so as to produce dissimilar overall impressions (see judgment of 7 November 2013, Budziewska v OHIM — Puma (Bounding feline), T‑666/11, not published, EU:T:2013:584, paragraph 29 and the case-law cited).

40      In the assessment of the individual character of a design in relation to any previous presence in the design corpus, account must be taken of the nature of the product in which that design is incorporated, in particular the industrial sector to which it belongs (see recital 14 of Regulation No 6/2002), the degree of freedom of the designer in developing the design (see Article 6(2) of Regulation No 6/2002), whether there is saturation of the state of the art, which might make the informed user more attentive to the differences in the designs compared, and also the manner in which the product concerned is used, in particular the way it is normally handled (see, to that effect, judgment of 7 November 2013, Bounding feline, T‑666/11, not published, EU:T:2013:584, paragraph 31 and the case-law cited).

41      As a preliminary point, it should be noted that the applicant submits that there remains uncertainty as regards the design in relation to which, according to the Board of Appeal, the contested design produces an overall impression of ‘déjà vu’, in so far as, even though the Board of Appeal refers, in paragraph 14 of the contested decision, to the earlier glass jar design ‘shown at paragraph 5 under letter (a)’, the contested decision does not contain such a paragraph. In that regard the applicant claims that, on the assumption that this refers to the first earlier design, which is, however, referred to in paragraph 4(a) of the contested decision, that design has no bearing on the individual character of the contested design, given that the intervener has not proved that it was disclosed to the public before the date of filing of the application for registration of the contested design. On the assumption, on the other hand, that the Board of Appeal was referring to the second earlier design, the applicant claims that the contested design differs from that earlier design in respect of its shape, its size and the colour of its lid.

42      In that regard, EUIPO clarifies, in its response, that the reference in paragraph 14 of the contested decision to the earlier glass jar design ‘shown at paragraph 5 under letter (a)’ was a clerical error and must be read as relating, in fact, to the first earlier design, shown in paragraph 4(a) of that decision. That statement must be endorsed as it is clear from the assessment of the evidence of disclosure and from the resulting reasoning that the Board of Appeal concluded that the design in relation to which, in its view, the contested design produces an overall impression of ‘déjà vu’ is the first earlier design. That clerical error therefore does not affect the legality of the contested decision.

43      It is thus in the light of the considerations set out in paragraphs 37 to 40 above and in relation to the first earlier design, the disclosure of which has been established, that it is necessary to determine whether the contested design lacks individual character within the meaning of Article 6 of Regulation No 6/2002.

44      In the present case, in the first place, in paragraphs 28 to 30 of the contested decision, the Board of Appeal indicated, in essence, that, in view of the function of the products in which the design was intended to be incorporated, namely packaging for foodstuffs, the informed user of the contested design was, on the one hand, the ‘professional of the food-processing industry’ who fills the jar with food, notably preserved fish, and, on the other hand, the ‘average consumer of preserves’ who opens and closes the jar when consuming its contents. In the second place, in paragraph 33 of the contested decision, the Board of Appeal indicated that the designer of the contested design had a high degree of freedom since food can be preserved in containers that have different appearances as a result of different shapes and materials, without limiting the function of the product.

45      It is therefore necessary to make a comparison between the overall impressions produced on the informed user by the designs at issue on the basis of the findings, referred to in paragraph 44 above, made by the Board of Appeal, which are, moreover, not disputed by the parties.

46      Following its assessment of the overall impression produced on the informed user by the contested design, the Board of Appeal concluded, in paragraph 35 of the contested decision, that it produced an impression of ‘déjà vu’ in relation to the first earlier design.

47      The Board of Appeal’s finding in that respect must be endorsed. Indeed, the contested design is intended to be incorporated into packaging formed of the same components with the same characteristics as those of which the packaging incorporating the first earlier design are formed, namely a transparent glass jar with a coloured circular removable lid. The informed user who looks at the designs at issue will easily recognise, as regards the transparent glass jar, the same circular cross-section, the same diameter-to-height proportions and, as regards the lid, the same appearance, namely a circular shape of the same thickness, which also contribute to producing an impression of ‘déjà vu’ from the perspective of the informed user of the contested design in relation to the first earlier design.

48      The arguments relied on by the applicant in support of its claim that the contested design does not produce on the informed user the same overall impression as that produced by the first earlier design do not call into question that conclusion.

49      In the first place, the applicant claims that, while the indication of the product in which the design is intended to be incorporated and the classification of that product state that the contested design concerns ‘packaging for foodstuffs’, that does not prevent the scope of the design protection being extended to the contents of the packaging in question, given that those contents are visible. According to the applicant, under Article 3(2) of Regulation No 2245/2002, products are classified purely for administrative purposes.

50      Such argument cannot succeed.

51      In that regard, it must be noted, first, that although the classification of the products in which a design is intended to be incorporated cannot serve, on its own, to determine the subject matter of the protection to be afforded by that design, given that, in accordance with Article 36(6) of Regulation No 6/2002, that information cannot affect the scope of protection of the design as such, it cannot be ruled out, as EUIPO rightly submits, that it may in fact contribute to establishing the overall impression produced by that design on the informed user for the purpose of assessing whether it has individual character in relation to an earlier design.

52      As recital 14 of Regulation No 6/2002 states, the assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him or her by the existing design corpus, taking into consideration, inter alia, the nature of the product in which that design is intended to be incorporated. Furthermore, case-law has confirmed that identification of the precise product in which the design is incorporated is relevant for the purposes of assessing its individual character, within the meaning of Article 6 of that regulation (see, to that effect, judgment of 13 May 2015, Group Nivelles v OHIM — Easy Sanitairy Solutions (Shower drainage channel), T‑15/13, EU:T:2015:281, paragraph 133).

53      Therefore, the Board of Appeal was right to take into consideration the fact that the contested design is intended to be incorporated in packaging for foodstuffs for the purpose of its assessment of the overall impression it produces on the informed user and, therefore, of its individual character in relation to the first earlier design.

54      Second, contrary to the applicant’s claim, the fact that the contents of the packaging in which it is intended to be incorporated is visible does not extend the protection conferred on the contested design to those contents. Indeed, the most that can be said concerning the presence of visible foodstuffs in the products in which the contested design is intended to be incorporated is that it provides a better illustration of their purpose, namely as packaging for foodstuffs.

55      In the second place, according to the applicant the Board of Appeal was wrong to exclude the visible foodstuffs inside the packaging in which the contested design is intended to be incorporated from the scope of ‘overall impression’, to which Article 6(1) of Regulation No 6/2002 refers.

56      It must be noted, in that regard, that the comparison of the overall impressions produced by the designs must relate solely to the elements actually protected (see, to that effect, judgment of 13 June 2017, Ball Beverage Packaging Europe v EUIPO — Crown Hellas Can (Cans), T‑9/15, EU:T:2017:386, paragraph 79 and the case-law cited). As was correctly stated by the Board of Appeal in paragraph 35 of the contested decision and confirmed by the Court in paragraph 54 above, the protection conferred by the contested design relates to its appearance in that it is intended to be incorporated into packaging for foodstuffs having certain components with specific characteristics, namely a transparent glass jar with a coloured circular removable lid. The foodstuffs inside the container must not, therefore, be taken into consideration for the purpose of assessing the ‘overall impression’ referred to in Article 6(1) of Regulation No 6/2002.

57      The applicant claims, moreover, that the informed user will be able to distinguish between the designs at issue, since the fact that the jar is transparent enables the user to see the foodstuffs contained in the packaging in which the contested design is intended to be incorporated and the specific way in which those foodstuffs are arranged, which gives the contested design a more attractive appearance compared with the first earlier design. According to the applicant, the informed user will make his or her choice not in order to have an empty jar at his or her disposal but in order to consume the foodstuffs that it contains. As a result, the foodstuffs in question are an integral part of the contested design since they form a part of the overall impression that the design produces on the informed user.

58      The applicant thus refers to the overall impression produced by the contested design on the informed user, as defined in paragraph 30 of the contested decision — which is the definition adopted by the Court in paragraphs 44 and 45 above — and represented, first by ‘the average consumer of preserves’ who opens and closes the jar when he or she consumes its contents and, second, by ‘the professional of the food-processing industry’ who fills the jar with food.

59      In that regard, it should be borne in mind, first, that the informed user represented by ‘the average consumer of preserves’ does not correspond to ‘the average consumer’, who is the consumer deemed to be reasonably well informed and reasonably observant and circumspect, forming part of the relevant public interested in the goods covered by a trade mark.

60      According to case-law, the concept of the ‘informed user’ must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks at issue, and the sectoral expert, who has detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user displaying an average level of attention, but to a particularly observant one, either because of his or her personal experience or his or her extensive knowledge of the sector in question (judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 53). Generally, the informed user will make a direct comparison of the designs in at issue (judgments of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 55, and of 14 March 2017, Wessel-Werk v EUIPO — Wolf PVG (Suction nozzles for vacuum cleaners), T‑174/16, not published, EU:T:2017:161, paragraph 24).

61      Second, the qualifier ‘informed’ suggests that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his or her interest in the products concerned, shows a relatively high level of attention when using them (see judgment of 13 May 2015, Group Nivelles v Shower drainage channel, T‑15/13, EU:T:2015:281, paragraph 128 and the case-law cited), whether the user is, as in the present case, a professional or the final consumer of the products in question.

62      Third, the assessment of the overall impression produced on the informed user by a design includes the manner in which the product represented by that design is used (see, to that effect, judgment of 21 November 2013, El Hogar Perfecto del Siglo XXI v OHIM — Wenf International Advisers (Corkscrew), T‑337/12, EU:T:2013:601, paragraph 46 and the case-law cited).

63      Accordingly, the informed user of the contested design, whether a consumer of the preserves or a professional of the food-processing industry, will assess that design in accordance with the purpose of the products in which the design is intended to be incorporated, namely as packaging for foodstuffs, and will be able to differentiate between that packaging and its contents. Therefore, as the Board of Appeal rightly found in paragraph 35 of the contested decision, the appearance of the foodstuffs contained in the packaging in which the contested design is intended to be incorporated is not relevant for the purpose of assessing the overall impression produced on the informed user by the contested design.

64      In the third place, the applicant claims, first, that the designs at issue differ, not only in the foodstuffs they contain, but also in the colour of their lids. It adds, next, that the Board of Appeal’s reasoning is contradictory in so far as, on the one hand it accepts that the colour of the lid is often chosen according to the colour of the contents of the transparent jar in order to give them an attractive appearance, but on the other hand it excludes those contents from the overall impression produced by the contested design. Lastly, the applicant does not agree with the Board of Appeal’s finding that, despite the difference in the colour of their lids, that difference is unlikely to produce different overall impressions on an informed user, who knows that black and gold are among the colours most commonly used for lids of glass jars. The designs at issue are therefore not identical.

65      In that regard, it must be borne in mind that the more the designer’s freedom in developing a design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Conversely, the greater the designer’s freedom in developing a design, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user (see, to that effect, judgment of 18 July 2017, Chanel v EUIPO — Jing Zhou and Golden Rose 999 (Ornament), T‑57/16, EU:T:2017:517, paragraph 30).

66      As was stated in paragraph 47 above, the informed user will easily recognise in the designs at issue the same components, namely a transparent glass jar with the same characteristics of shape and proportion and with a coloured circular removable lid. Although the colour of the lid of the first earlier design is black, the gold colour of the lid of the contested design is not sufficient to produce on the informed user distinct overall impressions of the designs at issue, especially as the lids in question have the same shape and thickness.

67      The applicant’s arguments regarding the alleged contradiction in the Board of Appeal’s reasoning and the fact that the designs at issue are not identical on account of the different colour of their lids cannot succeed either.

68      The Board of Appeal’s finding in paragraph 35 of the contested decision, called into question by the applicant, that ‘an observant and discerning informed user … knows … that, often, the colour of the lid is chosen according to the colour of the content of the (transparent) jar in order to generate an attractive appearance’ does not mean that the Board of Appeal accepted, in contradiction with its own reasoning — established to be well founded in paragraph 56 above — that the content of the jar forms an integral part of the appearance of the products in which the contested design is intended to be incorporated. As EUIPO observes, as regards the lids of the designs at issue, the Board of Appeal merely stated that, since they have the same appearance as regards their shape and thickness, it is unlikely that the only difference, which concerns their colour, will produce on the informed user distinct overall impressions.

69      Contrary to the applicant’s claims, the Board of Appeal did not conclude that the designs at issue were identical notwithstanding the different colour of their lids, which, if it had so concluded, would have fallen within the assessment of the novelty of the contested design under Article 25(1)(b) of Regulation No 6/2002 in conjunction with Article 5 thereof. Rather, the Board of Appeal correctly stated that, given the designer’s broad freedom in developing the contested design, the colour difference in the lids is insufficiently pronounced to produce on the informed user a different overall impression of the contested design from that produced on such a user by the first earlier design, for the purposes of the assessment of the individual character of the contested design under Article 25(1)(b) of Regulation No 6/2002, in conjunction with Article 6 thereof.

70      It is clear from all the above that the Board of Appeal did not make an error of assessment in finding, in paragraph 35 of the contested decision, that the designs at issue produce the same overall impression on the informed user, and by therefore concluding that the contested design lacks individual character, for the purpose of Article 25(1)(b) of Regulation No 6/2002, in conjunction with Article 6 thereof, in relation to the first earlier design.

71      In the light of all the foregoing, the second plea in law put forward by the applicant must be rejected as unfounded and, therefore, the action must be dismissed in its entirety.

 Costs

72      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.

73      Since the applicant has been unsuccessful in the present case, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Gamma-A SIA to pay the costs.

Delivered in open court in Luxembourg on 12 March 2020.

*      Language of the case: English.

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