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

JUDGMENT OF THE GENERAL COURT (First Chamber)

29 April 2020 (1)

(Community design — Invalidity proceedings — Registered Community design representing a wood-splitting tool — Earlier national design — Ground for invalidity — No individual character — No different overall impression — Article 6(1) of Regulation (EC) No 6/2002 — Infringement of the rights of the defence — Article 62 of Regulation No 6/2002)

In Case T‑73/19,

Bergslagernas Järnvaruaktiebolag, established in Saltsjö-Boo (Sweden), represented by S. Kirschstein-Freund and B. Breitinger, lawyers,

applicant,

v

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

defendant,

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

Scheppach Fabrikation von Holzbearbeitungsmaschinen GmbH, established in Ichenhausen (Germany),

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 23 November 2018 (Case R 1455/2018-3), relating to invalidity proceedings between Scheppach Fabrikation von Holzbearbeitungsmaschinen and Bergslagernas Järnvaru,

THE GENERAL COURT (First Chamber),

composed of H. Kanninen, President, N. Półtorak (Rapporteur) and O. Porchia, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 7 February 2019,

having regard to the response lodged at the Court Registry on 15 April 2019,

further to the hearing on 14 January 2020,

gives the following

Judgment

 Background to the dispute

1        On 12 August 2011 the applicant, Bergslagernas Järnvaruaktiebolag, 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 is reproduced below:

3        The contested design is intended to be applied to ‘wood splitting tools’ in Class 08.03 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs.

4        The contested design was registered on 12 August 2011 under No 001289243-0001 and published in Community Designs Bulletin No 205/2011 of 9 September 2011.

5        On 12 July 2017 Scheppach Fabrikation von Holzbearbeitungsmaschinen GmbH filed an application for a declaration of invalidity with EUIPO, pursuant to Article 52 of Regulation No 6/2002, in respect of the contested design, arguing, in particular, that that design had no individual character within the meaning of Article 6 of Regulation No 6/2002.

6        In support of its application for a declaration of invalidity, Scheppach Fabrikation von Holzbearbeitungsmaschinen relied on the making available to the public of an earlier design, which was published in 1986 as a registered design in the Norwegian intellectual property register and which is reproduced below:

7        By decision of 12 June 2018, the Invalidity Division declared the contested design invalid on the ground that it had no individual character.

8        On 27 July 2018 the applicant filed a notice of appeal against the Invalidity Division’s decision.

9        By decision of 23 November 2018 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal. In essence, it considered that the Invalidity Division had been fully entitled to declare that the contested design was invalid because it was devoid of individual character.

 Forms of order sought

10      The applicant claims that the Court should:

–        principally, annul the contested decision;

–        in the alternative, amend the contested decision;

–        order EUIPO to pay the costs.

11      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

12      In support of its claims for annulment and amendment, the applicant raises two pleas in law, the first alleging infringement of Article 62 of Regulation No 6/2002 and the second alleging infringement of Article 6(1) of that regulation.

 First plea in law: infringement of Article 62 of Regulation No 6/2002

13      In support of its first plea in law, the applicant submits that the Board of Appeal infringed its right to be heard, as enshrined, according to the applicant, in Article 62 of Regulation No 6/2002, by setting out, in the contested decision, a certain number of facts and arguments without having allowed the applicant to submit its observations. In particular, according to the applicant, the Board of Appeal put forward for the first time, in the contested decision, the following facts and arguments, on which the applicant claims it was given no opportunity to present its comments:

–        it is a well-known fact for an informed user that wood-splitting tools of the kind shown in the designs in question operate by firstly lifting the lever from the base and secondly lowering it once a piece of wood has been firmly put in place between two of the teeth (paragraph 25 of the contested decision);

–        the shape of the body and that of the lever are interdependent inasmuch as the lever must be bent in view of the relatively longer size of the support. A straight lever would protrude excessively and easily become a hindrance for the user (paragraph 26 of the contested decision);

–        a shorter support opposite the hinge does not require the lever to be bent. Those characteristics are linked to each other and reflect functional necessities, with the result that they play only a relatively feeble role in the overall impression created by the two designs. Consequently, what will strike the informed user is the overall design of the base and the lever (paragraphs 27 to 29 of the contested decision);

–        the differences relating to the shape of the teeth are appreciable only upon closer inspection and are thus likely to pass unobserved (paragraph 32 of the contested decision);

–        the shape concerns a relatively small portion of the tool (paragraph 33 of the contested decision);

–        the hinge is on the rear side of the base and does not attract visual attention when the tool is being used (paragraph 34 of the contested decision);

–        the circular safety device is a feature for product safety and will be perceived as purely functional (paragraph 36 of the contested decision).

14      EUIPO disputes the applicant’s arguments.

15      In that regard, it should be noted that, according to Article 62 of Regulation No 6/2002, decisions of EUIPO may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The general principle of protection of the right to defend oneself is enshrined in the law of Community designs by that provision. According to that general principle of EU law, a person whose interests are significantly affected by a decision addressed to him and taken by a public authority must be given the opportunity to make his point of view known. The right to be heard extends to all the matters of fact or of law which form the basis of the decision, but not to the final position which the authority intends to adopt (judgment of 9 February 2017, Mast-Jägermeister v EUIPO (Beakers), T‑16/16, EU:T:2017:68, paragraph 57), or to each well-known fact on which it relies in order to arrive at that position (see, to that effect, judgment of 1 June 2016, Wolf Oil v EUIPO — SCT Lubricants (CHEMPIOIL), T‑34/15, not published, EU:T:2016:330, paragraph 83).

16      In the present case, first, it should be pointed out that it is apparent from the file that, during the procedure leading to the adoption of the contested decision, the applicant had the opportunity to submit its observations relating to all the aspects of the application for a declaration of invalidity, including with regard to the individual character of the contested design. A summary of the observations submitted in response to the application for a declaration of invalidity is set out in paragraph 7 of the contested decision. In addition, during the procedure leading to the adoption of the contested decision, the applicant also had the opportunity to submit arguments and factual evidence concerning the use of the relevant goods and concerning the visual characteristics of the designs at issue.

17      Second, as is noted by EUIPO, the contested decision is exclusively based on facts which are well known, since they are likely to be known by anyone, or which may be learned from generally accessible sources, and on elements which are apparent from the representations of the designs at issue or on facts and arguments expressly put forward by the parties.

18      In particular, regarding the assertion that ‘it is a well-known fact for an informed user that wood-splitting tools of the kind shown in both designs operate by firstly lifting the lever from the base and secondly lowering it once a piece of wood has been firmly put in place … between two of the teeth’ (paragraph 25 of the contested decision), this is merely the Board of Appeal’s response to the argument, already put forward by the applicant before the Invalidity Division, that, in essence, for the purpose of assessing the overall impression produced by the earlier design, only the representation of that design in a closed position, as registered, is decisive. More specifically, that statement by the Board of Appeal is intended to confirm and to clarify the Invalidity Division’s decision in so far as it rejected the applicant’s argument as being incapable of calling into question the assessment of the overall impression produced by the designs at issue. That statement is also in response to the argument, put forward by the applicant before the Board of Appeal, that the appearance of a product in a closed position which resembles an earlier design when open was unknown, given that it had never been made available to the public.

19      Accordingly, the applicant cannot claim that the argument set out in the second sentence of paragraph 25 of the contested decision was put forward for the first time by the Board of Appeal, so that the applicant was not given an opportunity to present its comments on that argument. In addition, regarding the well-known fact relied on by the Board of Appeal in paragraph 25 of the contested decision, which the applicant argued was not well known for the first time at the hearing, it is sufficient to note, in order to set that line of argument aside, that the applicant does not submit any evidence to support its argument that the fact in question is not well known.

20      Furthermore, regarding the other facts and arguments referred to in paragraph 13 above, on which the applicant claims not to have had an opportunity to present its comments, it should be noted that these constitute the Board of Appeal taking a position in relation to the arguments put forward by the applicant during the procedure leading to the adoption of the contested decision and intended to emphasise the differences which, in its view, distinguish the designs at issue.

21      In any event, the mere fact that the final position of the Board of Appeal as regards the lack of individual character of the contested design does not correspond to that expressed by the applicant before the departments of EUIPO in no way constitutes, according to the case-law referred to in paragraph 15 above, an infringement of the applicant’s right to be heard (see, to that effect, judgment of 24 September 2008, Anvil Knitwear v OHIM — Aprile e Aprile (Aprile), T‑179/07, not published, EU:T:2008:401, paragraph 24). Accordingly, the applicant is not justified in claiming that it did not have an opportunity to present its comments on the facts and arguments referred to in paragraph 13 above.

22      It follows from the foregoing that the first plea in law must be rejected.

 Second plea in law: infringement of Article 6(1) of Regulation No 6/2002

23      It is apparent from the wording of Article 6(1)(b) of Regulation No 6/2002 that, in the case of a registered Community design, the individual character must be assessed having regard to the overall impression produced on the informed user, which must be different from that produced by any design made available to the public before the date of filing of the application for registration or, if a priority is claimed, the date of priority. Article 6(2) of Regulation No 6/2002 specifies that, for the purposes of that assessment, the degree of freedom of the designer in developing the design must be taken into consideration (judgment of 29 October 2015, Roca Sanitario v OHIM — Villeroy & Boch (Single control handle faucet), T‑334/14, not published, EU:T:2015:817, paragraph 15).

24      According to 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 taking account of any differences that are insufficiently marked to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked to produce dissimilar overall impressions (judgment of 17 May 2018, Basil v EUIPO — Artex (Bicycle baskets), T‑760/16, EU:T:2018:277, paragraph 77).

25      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 to which the design is applied or in respect of which it 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, whether there is saturation of the state of the art, which could be capable of making the informed user more attentive to the differences in the designs compared, and also the manner in which the product at issue is used, in particular according to the manner in which it is normally handled when used (judgment of 17 May 2018, Bicycle baskets, T‑760/16, EU:T:2018:277, paragraph 78).

26      Lastly, in the assessment of the individual character of a design, account must also be taken of the point of view of an informed user. According to settled case-law, an informed user is a person who is particularly observant and who has some awareness of the previous state of the art, that is to say, the corpus of previous designs relating to the product in question that had been made available to the public on the date of filing of the contested design or, as appropriate, the date of priority claimed (see judgment of 17 May 2018, Bicycle baskets, T‑760/16, EU:T:2018:277, paragraph 79 and the case-law cited).

27      In the present case, the Board of Appeal was fully entitled to define the informed user, without that definition being challenged by the applicant, as being a person who is familiar with wood-splitting tools, which includes persons who use those tools to split logs that can be burned in a fireplace into smaller pieces (paragraph 18 of the contested decision).

28      In addition, the Board of Appeal also correctly considered, without being challenged by the applicant on that point, that the freedom of the designer in developing a wood-splitting tool was not severely limited inasmuch as, even though the tool had a functional purpose (splitting pieces of wood), so that it required a blade and a body, the designer could choose a particular shape for the body, the lever arm, and the handle, or the way in which the tool could be mounted on a surface. The Board of Appeal added that the applicant had not provided any evidence of technical or legal constraints in designing tools for splitting wood by hand (paragraph 23 of the contested decision).

29      In paragraph 24 of the contested decision, the Board of Appeal considered that the contested design produced an impression of déjà vu with regard to the earlier design, inasmuch as it reproduced the characteristics of that earlier design that immediately strike an informed user, namely a base comprising a piece of solid material with several protruding teeth and a lever in the form of a steel rod with a blade on one side and a handle on the other. In particular, in paragraph 25 of the contested decision, it specified that the fact that the tool was represented in a closed position (in the contested design) and in an open position (in the earlier design) was not decisive either in the comparison of the designs or in the assessment of individual character. Indeed, it stated that it is a well-known fact for an informed user that wood-splitting tools of the kind shown in the designs in question operate by firstly lifting the lever from the base and then lowering it once a piece of wood has been firmly put in place between two of the teeth. In addition, in paragraph 37 of the contested decision, the Board of Appeal noted that the differences highlighted by the applicant had a relatively low weight in the overall impression produced by the two designs, which was dominated by the very similar appearance of a base with several teeth and a lever with a blade and a handle.

30      By the second plea in law, alleging infringement of Article 6(1) of Regulation No 6/2002, the applicant challenges that assessment and argues that the Board of Appeal wrongly considered that the contested design and the earlier design produced the same overall impression and that, consequently, the contested design was devoid of individual character.

31      That plea is divided into two parts alleging, in essence, first, that the Board of Appeal erred in its assessment of the overall impression produced by the earlier design, which departs from the representation of that design as registered, and, second, that the Board of Appeal erred in its assessment of the individual character of the contested design.

 First part of the second plea in law

32      The applicant argues, first, in essence, that the assessment of the overall impression produced by a design can be based only on what can be seen from the representation provided with the application for registration. In particular, according to the applicant, it follows from the principle of legal clarity and certainty that, in the context of the assessment of the overall impression produced by the contested design, only the overall impression produced by the graphic representation of the earlier design as registered can be relevant. The assessment of the overall impression produced by a design cannot therefore be carried out in relation to the actual product corresponding to the registered design.

33      Second, the applicant submits that, having regard to the earlier design as registered, the overall impression produced by the designs in question, in the context of a direct and detailed one-on-one comparison, is very different. The earlier design consists of only a single representation which is clearly visible and contains no uncertainties. Therefore there is no room for interpretation. However, even if the earlier design were to be interpreted, this would not justify taking into account the earlier design in functional or operational states of use not shown in the registration.

34      Third, the applicant asserts that the objective of the owner of the earlier design was not to obtain protection for a design for a wood-splitting tool in a closed position, half-closed position, or more open position. In the applicant’s view, if that had been the case, that owner should have filed an application for registration of a design including different views, or a multiple application for registration illustrating the various functional states of use. Moreover, the argument that, when interpreting a design, it should be considered that the owner of the design had the intention of obtaining the broadest possible protection also does not support the Board of Appeal’s reasoning. In addition, it would be unfair to extend the rights of the designer, who has filed an application for registration showing only one view, by increasing the scope of that design so as to cover views which were not the subject of the application for registration. Any functional state of use other than that shown in the registration is irrelevant.

35      Fourth, the applicant claims that the overall visual impression of the earlier design in a closed position cannot be precisely taken or deduced from the representation of the earlier design as registered. Accordingly, the overall visual impression of the earlier design in a closed position remains uncertain and too imprecise to be able to form a basis for comparison with the overall visual impression produced by the contested design.

36      EUIPO disputes the applicant’s arguments.

37      As a preliminary point, it should be noted that, by its arguments, the applicant seeks, inter alia, to call into question the statement of the Board of Appeal set out in paragraph 25 of the contested decision, according to which, in essence, the fact that the tool is represented in a closed position (in the contested design) and in an open position (in the earlier design) is not decisive in either the comparison of the designs or in the assessment of individual character (see paragraph 29 above). In essence, it criticises the Board of Appeal for having taken account, when assessing the overall impression produced by the earlier design, of the representation of the wood-splitting tool in a closed position, despite the fact that the graphic representation of that design consisted of a single view reproducing that tool in an open position.

38      Regarding the argument that the assessment of the overall impression produced by a design is to be based only on the graphic representation of that design as registered and not on the actual product corresponding to that design, it should be noted, in the first place, that, according to case-law, 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 to which the design is applied or in respect of which it is incorporated, in particular the industrial sector to which it belongs, the degree of freedom of the designer in developing the design, whether there is saturation of the state of the art, which could be capable of making the informed user more attentive to the differences in the designs compared, and also the manner in which the product at issue is used, in particular according to the manner in which it is normally handled when used (see judgment of 7 November 2013, Budziewska v OHIM — Puma (Bounding feline), T‑666/11, not published, EU:T:2013:584, paragraph 31 and the case-law cited).

39      In the second place, it should be borne in mind, as EUIPO did, that, since in design matters the person making the comparison is an informed user who is different from the ordinary average consumer, it is not mistaken, in the assessment of the overall impression produced by the designs at issue, to take account of the goods actually marketed which correspond to those designs (judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraphs 73 and 74), at least for illustrative purposes, in order to confirm the conclusions already drawn from the representation of the designs (judgment of 4 July 2017, Murphy v EUIPO — Nike Innovate (Electronic wristband), T‑90/16, not published, EU:T:2017:464, paragraph 53).

40      In the present case, as EUIPO notes, the earlier design represents a wood-splitting tool comprising a base and a lever connected by a hinge, the very purpose of which is to move the lever and thus to take a closed or open position in order to cut the wood. Thus, in view of the fact that the assessment must concern the overall impression produced by a design on the informed user, including the way in which the product represented by that design is used (see paragraph 38 above), the Board of Appeal cannot be criticised, in view of the characteristics of the wood-splitting tool represented, which is specifically designed to cut wood by moving the lever, for also having taken account of the impression produced by the design in question on the informed user when the tool is in a closed position (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).

41      In the third place, it should be noted that the fact that, in the present case, the representation of the earlier design is limited to a single view, representing the tool in question in an open position, does not exclude the possibility of carrying out a comparison with the contested design in so far as the visual representation of the tool in question in a closed position may be deduced from the representation of the earlier design (see, to that effect, judgment of 21 May 2015, Senz Technologies v OHIM — Impliva (Umbrellas), T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 80 (not published)).

42      Moreover, it should be emphasised that so far as the assessment of a design’s individual character for the purposes of Article 6 of Regulation No 6/2002 is concerned, the regulation does not require the graphic representation of a design in respect of which registration has been sought or that of a design which has already been made available to the public to include views reproducing the tool in question in all possible positions, so long as that graphic representation allows the shape and the features of the design to be identified (see, to that effect, judgment of 3 October 2014, Cezar v OHIM — Poli-Eco (Insert), T‑39/13, EU:T:2014:852, paragraph 48).

43      In the present case, it must be held that the graphic representation concerning the earlier design, consisting of a single view, is clear and unambiguous. Accordingly, as EUIPO correctly emphasises and contrary to the applicant’s assertions, as the closed position of a wood-splitting tool is innate to its purpose, the closed visual appearance of the tool in question can be deduced with sufficient clarity and precision from its representation in an open position.

44      Regarding the argument that, by taking account of the earlier design in a closed position, the Board of Appeal infringed the principle of legal clarity and certainty by unfairly extending the protection of that earlier design, it should be noted that such an infringement, resulting from an undue extension of the protection of the earlier design, would not take place unless the Board of Appeal, when assessing the overall impression produced by the earlier design, took into consideration characteristics which are not apparent from the view submitted when that design was registered, which, however, is not the situation in the present case. Indeed, as the graphic representation concerning the earlier design, consisting of a single view, is clear and unambiguous (see paragraph 43 above), all the characteristics of that design are clearly visible and were correctly examined by the Board of Appeal.

45      In addition, as was stated by the Invalidity Division in its decision, the different positions of the designs at issue could not be regarded as characteristics specific to those designs, so that the fact that the Board of Appeal took account of the earlier design in its closed position cannot unfairly extend the protection of the earlier design beyond what was intended by its designer.

46      Having regard to all of the foregoing, the Board of Appeal cannot be said to have made any error of assessment by taking into account, when assessing the overall impression produced by the earlier design, the representation of the wood-splitting tool in a closed position. Nor can the Board of Appeal be said to have made any error in not concluding, on the basis of the representation of that tool in a closed position, that the overall impression produced by the designs at issue was different.

47      It follows from the foregoing that the first part of the second plea in law must be rejected as unfounded.

 Second part of the second plea in law

48      By the second part of the second plea in law, the applicant seeks to call into question the Board of Appeal’s conclusion in paragraph 24 of the contested decision (see paragraph 29 above) that the contested design produces an impression of déjà vu with regard to the earlier design. The applicant argues that, even if the functional state of use of the goods shown in the designs at issue was irrelevant and could be disregarded, the fact remains that their overall impressions differ.

49      In support of that part, it puts forward, in essence, two complaints, the first concerning an error in assessing the overall impression produced by the designs at issue and the second concerning the assessment of the differences between those designs.

–       First complaint, concerning an error in assessing the overall impression produced by the designs at issue

50      By its first complaint, the applicant argues that the question whether the contested design produces an impression of déjà vu with regard to the earlier design is irrelevant and constitutes an incorrect legal standard. In the applicant’s view, only the question whether the overall impression produced on the informed user by the contested design differs from that produced on such a user by the earlier design is decisive. The informed user, who is particularly observant, will be aware of the similarities and differences and will be able to evaluate them. In addition, according to the applicant, the influence of the various characteristics of the product on the overall impression it produces depends on the type of product. Regarding products with more or less standardised characteristics, noticeable differences in detail create a different overall impression. When assessing the impression produced by a design the Court must therefore exclude from its assessment characteristics of appearance which are also dictated by their technical function. According to the applicant, such characteristics include the basic shapes of the asserted design, which are necessary to give the product concerned its function.

51      The applicant also submits that the informed user who is familiar with the various designs which exist in the sector concerned and who has a certain degree of awareness of the features which those designs normally include and, as a result of his or her interest in the products concerned, displays a relatively high degree of attention when he or she uses them, knows that a wood-splitting tool consists of a solid base with several protruding teeth and a lever with a blade and a handle. Consequently, when faced with the designs to be compared, the informed user will not focus on these purely technical elements, as these elements can be found in any wood-splitting tool. This is why, for the informed user, these purely technical elements also do not produce an impression of déjà vu. In reality, according to the applicant, the informed user, who is frequently faced with the product in his or her main living space and is highly attentive to the design of such a product, will focus on the characteristic features of the design in question which distinguish it from other wood-splitting tools and which are decisive for the success of the product.

52      In the present case, first, regarding the argument that the question whether the contested design produces an impression of déjà vu with regard to the earlier design is irrelevant and constitutes an incorrect legal standard, it should be noted that, as has already been recalled in paragraph 23 above, according to Article 6(1)(b) of Regulation No 6/2002, in the case of a registered Community design, the individual character must first be assessed having regard to the overall impression produced on the informed user (see judgment of 25 October 2013, Merlin and Others v OHIM — Dusyma (Games), T‑231/10, not published, EU:T:2013:560, paragraph 28 and the case-law cited).

53      It follows that the applicant is wrong to argue that, for the purpose of establishing the individual character of the contested design, it is irrelevant whether the contested design produces an impression of déjà vu with regard to the earlier design.

54      Second, regarding the argument that, in essence, when faced with the designs in question, the informed user would not concentrate on the basic elements, such as the body and the lever, which are common to all wood-splitting tools and would also be dictated by their purely technical function, it should be noted, first of all, that, although the elements common to both of the designs at issue, such as the base (comprising a piece of solid material with several protruding teeth) and the lever (with a blade and a handle) are the basic elements of the type of product concerned, they are also the most visible and important elements of the two designs at issue. Next, as was rightly stated by the Board of Appeal, the basic elements of the products concerned are very similar. Lastly, even assuming that those basic elements may have a technical function, which, incidentally, is not ruled out by the Board of Appeal (paragraph 22 of the contested decision), it is not established that they would be purely ‘technical’ for the purposes of Article 8(1) of Regulation No 6/2002 or, in particular, that they would be elements whose visual characteristics would be exclusively imposed by the technical function of the product in question.

55      Therefore, contrary to the applicant’s assertions, there is no reason to disregard the specific appearance of the basic elements of a wood-splitting tool in the overall impression produced by the designs at issue. Moreover, as their appearance can be modified, both possible differences and possible similarities in the shape and positioning of those elements may have an influence on the overall impression produced by the product in respect of which they have been incorporated.

56      Therefore, the Board of Appeal was correct to take account of the basic elements of the product incorporated into the designs at issue and to state that what was striking to the informed user was the overall design of the base (with teeth) and the lever (with a blade and a handle), which were very similar and which produced an impression of déjà vu on that user (paragraphs 24 and 29 of the contested decision).

57      That conclusion cannot be called into question by the applicant’s argument that, in essence, as the informed user is frequently faced with the product in question in his or her main living space, he or she would be very attentive to the design of such a product and, in particular, to the characteristic features which distinguish it from other products and which are decisive for the success of that product.

58      In that regard, it should be noted, as EUIPO did, that the perception of the informed user, and thus the extent of the protection of the design, is not dependent on how often a user is faced with the type of product concerned in real life. Indeed, as the Court has already held, unlike the average consumer in the field of trade marks for whom the fact of being faced with a certain product, such as a fashion accessory, may in fact play a role in that consumer’s level of attention, the informed user of a design is already by nature a person who has a particular interest in the design of a given product and who is interested in trends in design, art and fashion which might be behind the emergence of such a design. Accordingly, the mere fact of being faced with a particular design does not make the informed user more or less attentive, as that user’s level of attention is already, by its very nature, relatively high (see, to that effect, judgment of 21 May 2015, Umbrellas, T‑22/13 and T‑23/13, EU:T:2015:310, paragraphs 51 and 52 (not published) and the case-law cited).

59      Having regard to the foregoing, the first complaint of the second part of the second plea in law must be rejected.

–       Second complaint, concerning the assessment of the differences between the designs at issue

60      Regarding the differences between the designs at issue, in paragraphs 26 and 27 of the contested decision the Board of Appeal accepted that there were differences in the shape of the body and the shape of the lever of the wood-splitting tool that were capable of affecting the visual aspect. In particular, it noted that, while the contested design was characterised, first, by a body having two supports (used to mount the tool on a surface, such as a wall or a floor), one of which, located opposite the hinge, was longer, and, second, by a lever that was bent slightly downwards towards the handle, the earlier design had contrary characteristics, namely a shorter support opposite the hinge that did not require the lever to be bent. In paragraph 28 of the contested decision, it nonetheless considered that, in so far as those two pairs of characteristics were interdependent and reflected a functional necessity, namely avoiding an unnecessary protrusion of the lever, they played a relatively feeble role in the overall impression produced by the two designs.

61      The applicant challenges that conclusion, arguing, inter alia, that, in a direct comparison, the informed user will not consider that those two characteristics are interdependent, but will perceive the angled lever of the upright, elegant, slim and solid impression produced by the contested design as a design development of the earlier design, the overall appearance of which is square, broad, clumsy, massive and heavy.

62      In that regard, it must be pointed out that, by its line of argument, which it confirmed at the hearing, the applicant is not calling into question the well-founded nature of the assessments made by the Board of Appeal as regards the fact that the differences concerning the shape of the body and the shape of the lever are interdependent. Indeed it disputes only the Board of Appeal’s assessment that, for the informed user, those differences would play only a feeble role in the overall impression produced by the two designs.

63      However, even assuming that, in a direct comparison, the informed user does not consider that the two differences in question are interdependent, it must be held that he or she will also not perceive the differences highlighted by the applicant, consisting of a bent lever and an impression of an elegant, slim and solid object produced by the contested design, as being substantial differences.

64      In that regard, it should be borne in mind that, even if the informed user has a certain degree of awareness as regards the various designs which exist in the sector concerned and displays a relatively high level of attention and is particularly observant when using them, that user is also not an expert or a specialist, such as a person skilled in the art, who is capable of observing minor differences that may exist between the designs at issue (judgment of 13 June 2019, Visi/one v EUIPO — EasyFix (Door hanger for vehicles), T‑74/18, EU:T:2019:417, paragraph 72).

65      Accordingly, those differences concerning the shape of the body and the lever cannot dispel the impression of déjà vu which emerges from the designs at issue, in view of their common elements, which are among their most visible and important elements (see, to that effect, judgments of 29 October 2015, Single control handle faucet, T‑334/14, not published, EU:T:2015:817, paragraph 74, and of 28 September 2017, Rühland v EUIPO — 8 seasons design (Lamp in the form of a star), T‑779/16, not published, EU:T:2017:674, paragraph 43).

66      Regarding the other differences between the designs at issue relied on by the applicant, namely the shape of the teeth, the shape of the handle, the shape of the hinge, the shape of the blade and the presence or lack of a circular safety device, the Board of Appeal noted, in paragraph 37 of the contested decision, that they all had a relatively low weight in the overall impression produced by the two designs, which was dominated by the very similar appearance of a base with several teeth and a lever with a blade and a handle.

67      The applicant challenges that assessment and argues, in essence, first, that the differences between the teeth of the two designs in question are immediately visible without there being a need for a ‘closer inspection’, given that the user looks directly at those teeth when placing a piece of wood on those teeth for splitting, second, that there are substantial aesthetic differences between the common elements of the designs in question and that the differences concerning the handle are particularly visible, given that that element is the first to be grasped by the user, third, that, because of the differences in terms of the portion connecting the hinged suspension of the handle and the first tooth, the contested design produces a more elegant extended impression, and, fourth, that the presence, in the contested design, of a circular safety device has a considerable impact on the overall impression produced by the designs at issue.

68      In the present case, it must be pointed out at the outset that the applicant does not challenge the statement by the Board of Appeal, set out in paragraph 35 of the contested decision, that, if the designs are considered as a whole, the differences in the shape and length of the blades (which are longer in the earlier design than in the contested design) are unlikely to have an influence on the overall impression produced on the user.

69      In addition, it should be borne in mind that the comparison of the overall impressions produced by the designs must be synthetic and may not be limited to an analytic comparison of a list of similarities and differences. That comparison must relate solely to the elements actually protected, without taking account of characteristics excluded from the protection (see 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).

70      Moreover, although the informed user has a certain degree of awareness as regards the various designs which exist in the sector concerned and displays a relatively high level of attention, the informed user does not observe minor differences that may exist between the designs at issue. That user is not an expert or a specialist, such as a person skilled in the art, who is capable of observing those minor differences (see paragraph 64 above).

71      Accordingly, even if, as the applicant maintains, the informed user stands directly in front of the wood-splitting tool when using it and looks directly at the teeth when placing a piece of wood on a tooth, that user will not be capable of recognising, without a ‘closer inspection’, the differences between the rounded teeth of the contested design and the shorter, pointed teeth of the earlier design. Moreover, it cannot be excluded that, when using the wood-splitting tool, the informed user will not concentrate on the teeth and their physical characteristics, but rather on the piece of wood, paying particular attention to making sure that it is properly placed on the body of the tool and cut properly by the blade.

72      The same considerations apply concerning the differences described meticulously and in great detail by the applicant concerning the blade and handle of the designs at issue and the shape of the hinge. In particular, regarding the difference relating to the shape of the hinge, the Board of Appeal did not err in stating that it was unlikely to alter the overall impression produced by the designs at issue, given that it was located at the back of the base, near the support (or ‘stem’) and that, as a result, it was not highly visible.

73      Accordingly, those differences cannot dispel the impression of déjà vu which emerges from the designs at issue, in view of their common elements, which are among their most visible and important elements. Indeed, such differences are insufficiently marked to produce, by themselves, a dissimilar overall impression on the informed user, taking into account the low degree of restriction of the freedom of the designer in developing the design. They are therefore not such as to confer individual character on the contested design.

74      Lastly, regarding the difference relating to the presence or lack of a circular safety device, it must be pointed out that, as was correctly noted by the Board of Appeal, this is a characteristic concerning the safety of the tool in question. As the applicant itself acknowledges, the device in question has a functional aspect, in so far as it enables the two parts of the tool to be kept together when not in use, so as to avoid any undesired contact with the teeth or the blade. Even assuming that, as the applicant claims, that device is not perceived by the informed user as purely functional, inter alia because of its rounded basic geometric shape, it must be held that, in view of the very small size of that device in relation to the common elements of the tool in question, it will not, contrary to the applicant’s assertions, be perceived as a striking design element, likely to be recognised as one of the distinctive characteristics of the contested design. In particular, the contested design will not be perceived by the informed user as comprising three elements instead of two because of the presence of that device. Indeed, that device is so small in relation to the other, common elements of the designs at issue that, in the context of an overall assessment of the impression produced by those designs, it remains, as was correctly noted by EUIPO in paragraph 38 of its response, a necessarily secondary element.

75      That finding cannot be called into question by the fact that wood-splitting tools, as illustrated by the contested design, are generally installed in the living room or in another living space, or in any other easily accessible position close to the fireplace. Indeed, as has been specified in paragraph 58 above, the perception of the informed user, and thus the extent of the protection of the design, is not dependent on how often a user is faced with the type of product concerned in real life. Accordingly, the mere fact of being faced with a particular design with some frequency does not make the informed user more or less attentive, as that user’s level of attention is already, by its very nature, relatively high (see, to that effect, judgment of 21 May 2015, Umbrellas, T‑22/13 and T‑23/13, EU:T:2015:310, paragraphs 51 and 52 (not published) and the case-law cited).

76      Consequently, contrary to the applicant’s assertions, the safety device does not play an important role in the overall impression produced by the designs at issue.

77      Accordingly, having regard to all of the foregoing, it must be found that the Board of Appeal did not err in considering that the differences between the designs at issue had a relatively low weight in the overall impression produced by those designs, which was dominated by the very similar appearance of a base with several teeth and a lever with a blade and a handle.

78      It follows that the second complaint of the second part must be rejected. Consequently, the second part of the second plea must be rejected as unfounded and, accordingly, the second plea in law must be rejected in its entirety.

79      As none of the pleas in law raised by the applicant in support of its claims is well founded, the action must be dismissed in its entirety.

 Costs

80      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. 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 (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Bergslagernas Järnvaruaktiebolag to pay the costs.

Delivered in open court in Luxembourg on 29 April 2020.

1      Language of the case: English.

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