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

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

10 November 2021 (*) (1)

(Community design – Invalidity proceedings – Registered Community design representing a label – Earlier design – Proof of disclosure – Article 7(1) of Regulation (EC) No 6/2002 – Evidence submitted after the expiry of the prescribed time limit – Board of Appeal’s discretion – Article 63(2) of Regulation No 6/2002 – Ground for invalidity – No individual character – Article 6 and Article 25(1)(b) of Regulation No 6/2002)

In Case T‑443/20,

Sanford LP, established in Atlanta, Georgia (United States), represented by J. Zecher, lawyer,

applicant,

v

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

defendant,

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

Avery Zweckform GmbH, established in Oberlaindern/Valley (Germany), represented by H. Förster, lawyer,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 15 May 2020 (Case R 2413/2018-3), relating to invalidity proceedings between Avery Zweckform and Sandford,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann (Rapporteur), President, U. Öberg and R. Mastroianni, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 13 July 2020,

having regard to the response of EUIPO lodged at the Court Registry on 29 October 2020,

having regard to the response of the intervener lodged at the Court Registry on 19 October 2020,

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 20 February 2004, the applicant, Sandford LP, filed an application for registration 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), for the Community design represented as follows:

2        The product in which the contested design is intended to be incorporated is in Class 19.08 of the Locarno Agreement of 8 October 1968 Establishing an International Classification for Industrial Designs, as amended, and corresponds to the following description: ‘Labels’.

3        The contested design was registered under No 141999-0002 and published in Community Designs Bulletin No 47/2004 of 15 June 2004.

4        On 24 February 2016, the intervener, Avery Zweckform GmbH, filed an application for a declaration of invalidity of the contested design, pursuant to Article 52 of Regulation No 6/2002.

5        The application for a declaration of invalidity was based on Article 25(1)(a) and (b) of Regulation No 6/2002. The intervener claimed that the contested design did not correspond to the definition of a design within the meaning of Article 3(a) of that regulation, lacked novelty and individual character within the meaning of Articles 5 and 6 of that regulation, and had the appearance of a label roll whose features were solely dictated by its technical function within the meaning of Article 8(1) of that regulation.

6        On 25 October 2018, the Cancellation Division rejected the application for a declaration of invalidity. It found that the representation of the contested design corresponded to the definition laid down in Article 3(a) of Regulation No 6/2002, that the applicant for a declaration of invalidity had not established that all the features of the appearance of the contested design were solely dictated by its technical function and that the evidence submitted to demonstrate disclosure of an earlier design was insufficient.

7        On 11 December 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Cancellation Division.

8        By decision of 15 May 2020 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the appeal and annulled the decision of the Cancellation Division. The Board of Appeal found, inter alia, that only some of the features of the contested design were dictated by the technical function of a printer label roll for the purposes of Article 8(1) of Regulation No 6/2002 and that, to that extent, the Cancellation Division had rightly rejected the application for a declaration of invalidity. The Board of Appeal found, however, that some of the additional evidence submitted to it had to be taken into account, that disclosure within the meaning of Article 7 of Regulation No 6/2002 of the earlier R5015 design before the relevant date had been proved and that, in view of the designer’s average degree of freedom in the present case and the definition of the informed user, the earlier R5015 design and the contested design produced the same overall impression on the informed user. In the absence of individual character of the contested design within the meaning of Article 6 of that regulation, the Board of Appeal therefore declared the contested design invalid.

  Forms of order sought

9        The applicant claims that the Court should:

–        annul the contested decision;

–        reject the application for a declaration of invalidity of the contested design;

–        order EUIPO to pay the costs, including the costs of the proceedings before the Board of Appeal.

10      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

  Law

11      The applicant relies, in essence, on three pleas in law, alleging, first, infringement of Article 63(2) of Regulation No 6/2002, in that certain evidence was submitted late to the Board of Appeal, second, infringement of Article 7(1) of that regulation, in that the earlier design was wrongly considered to have been disclosed, and, third, infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, in that the designs at issue were wrongly considered to produce the same overall impression on the informed user and the contested design was therefore wrongly considered to lack individual character.

 The first plea in law, alleging infringement of Article 63(2) of Regulation No 6/2002, in that certain evidence was submitted late to the Board of Appeal

12      The applicant submits that the Board of Appeal infringed Article 63(2) of Regulation No 6/2002 by declaring admissible certain evidence relating to the R5015 label rolls produced by the intervener for the first time at the stage of the appeal against the Cancellation Division’s decision.

13      EUIPO and the intervener dispute that line of argument.

14      Under Article 63(2) of Regulation No 6/2002, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

15      It is apparent from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 6/2002 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgment of 14 March 2018, Crocs v EUIPO – Gifi Diffusion (Footwear), T‑651/16, not published, EU:T:2018:137, paragraph 31).

16      In stating that EUIPO ‘may’, in such a case, decide to disregard evidence submitted late, Article 63(2) of Regulation No 6/2002 grants it a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (judgment of 14 March 2018, Footwear, T‑651/16, not published, EU:T:2018:137, paragraph 32).

17      As regards the exercise of that discretion by EUIPO for the purposes of the possible consideration of evidence submitted out of time, such consideration by EUIPO, where it is called upon to adjudicate in invalidity proceedings, is particularly likely to be justified where it considers, first, that the material submitted out of time is, on the face of it, likely to be relevant to the outcome of the application for a declaration of invalidity brought before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account. Such considerations are particularly likely to justify EUIPO’s taking into account of evidence which, although not submitted within the prescribed time limit, is submitted at a later stage of the proceedings by way of complement to the evidence submitted within that time limit (judgment of 14 March 2018, Footwear, T‑651/16, not published, EU:T:2018:137, paragraph 34).

18      In the present case, it is apparent from the information in the file, and in particular from paragraph 14 of the contested decision, that the intervener submitted Annexes 32 to 34 for the first time to the Board of Appeal, in order to demonstrate that the earlier design had been disclosed. In particular, Annex 32 contains an affidavit of 18 February 2019 by A, director of a company operating in the field of label printing, stating that that company had been producing R5015 label rolls for the intervener since 2003, and that affidavit was accompanied by invoices and representations of those rolls. Annexes 33 and 34 contain two affidavits, the first dated 11 February 2019, by B, a member of the board of directors of a company which produced flexible dies for the intervener from 1999 to 2003, and the second dated 19 February 2019 by C, a mechanical engineer for the intervener, containing, inter alia, representations of the 8853 label rolls used by the intervener and confirming A.’s statements.

19      The Board of Appeal considered it necessary to take into account the additional evidence submitted to it by the intervener. It found that the evidence was relevant and that it supported the evidence submitted to the Cancellation Division. In particular, the Board of Appeal noted that Annex 32 had been submitted in support of the disclosure of the R5015 label in Annex 8 which had been submitted in the application for a declaration of invalidity. It also stated that that evidence had been notified to the applicant, which had submitted observations on it, that there was no time limit for filing an application for a declaration of invalidity and that the consideration of that evidence could contribute to ensuring that a registered Community design, the validity of which could subsequently successfully be challenged by means of other invalidity proceedings, does not stay on the register. Lastly, it added that that evidence had been submitted in order to challenge the Cancellation Division’s decision that the evidence of disclosure was insufficient. The Board of Appeal therefore declared that the evidence was admissible.

20      It should be noted that, as the applicant itself acknowledges, the intervener submitted documents to the Cancellation Division, including an affidavit by C, in support of its application for a declaration of invalidity. However, the Cancellation Division found that the representations and documents provided did not substantiate the statements made by C. The Cancellation Division also found that the evidence submitted with the application for a declaration of invalidity was insufficient to establish disclosure, on the ground of a lack of clear identification of the earlier designs relied on and a lack of evidence concerning the sources and relevant dates of disclosure. It therefore concluded that disclosure of the earlier design could not be established.

21      Consequently, the annexes and representations submitted to the Board of Appeal are in addition to those already submitted to the Cancellation Division. Moreover, those annexes, which were subsequent to the Cancellation Division’s decision and, therefore, could not have been submitted previously, in particular enabled the intervener to respond to the Cancellation Division’s findings referred to in paragraph 20 above. Furthermore, even though, as the applicant submits, some representations of the label rolls produced in Annexes 32 and 34 differ from the contested design, the fact remains that they belonged to the same series of labels as the contested design (namely R5012-R5020). Those annexes were, therefore, relevant to the outcome of the dispute and could validly complement the evidence already submitted.

22      Furthermore, those annexes were submitted in the context of the statement of grounds of appeal of 25 February 2019. The Board of Appeal was therefore able to exercise its discretion objectively and by stating reasons as to whether to take those views into account (see, to that effect, judgment of 5 July 2017, Gamet v EUIPO – ‘Metal-Bud II’ Robert Gubała (Door handle), T‑306/16, not published, EU:T:2017:466, paragraph 22).

23      Lastly, the applicant is wrong to claim that the admissibility of those annexes infringed its right to be heard, since it was able to submit its observations in that regard in its pleadings before the Board of Appeal of 2 May and 6 September 2019, as the applicant itself acknowledges.

24      It follows that, by accepting in a reasoned manner that account should be taken of the additional annexes submitted to it, the Board of Appeal made appropriate use of the discretion conferred on it by Article 63(2) of Regulation No 6/2002 and the first plea in law must therefore be rejected.

 The second plea in law, alleging infringement of Article 7(1) of Regulation No 6/2002, in that the earlier design was wrongly considered to have been disclosed

25      In its second plea in law, the applicant states that the design of the R5015 label roll was wrongly classified as prior art and alleges infringement of Article 7(1) of Regulation No 6/2002, on the ground, in essence, that there was no disclosure of the R5015 label roll before the relevant date.

26      It alleges a translation error in respect of Annex 32 and submits that, contrary to what the Board of Appeal found, that annex showed that R5015 label rolls were produced only for the intervener. In addition, it submits that the invoices attached to Annex 32 did not show the production of R5015 labels, but the manufacture of a labelling tool designed to produce them. It adds that the orders do not prove disclosure of the label, but only that there were confidential manufacturing processes for producing it and confidential preparations for its disclosure, without any reference to a sale before the relevant date. The relationship between the intervener and A cannot therefore be described as use of the R5015 label in trade.

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

28      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 circles specialised in the sector concerned, operating within the European Union. The design is not, however, to be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

29      According to case-law, a design is deemed to have been made availableonce the party relying on that disclosure has proven the events constituting disclosure. In order to refute that presumption, the party challenging the disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those facts from becoming known in the normal course of business to the circles specialised 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).

30      Therefore, in order to establish that an earlier design has been disclosed, it is necessary to carry out an analysis in two stages, consisting in examining, in the first place, whether the evidence submitted in the application for a declaration of invalidity shows (i) facts constituting disclosure of a design and (ii) that that disclosure occurred earlier than the date of filing or priority of the design at issue and, in the second place, where the holder of the design at issue has claimed the contrary, whether those facts could reasonably become known in the normal course of business to the circles specialised in the sector concerned operating within the European Union, failing which a 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 (Display holder for vehicles), T‑74/18, EU:T:2019:417, paragraph 24).

31      Neither Regulation No 6/2002 nor Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Regulation No 6/2002 (OJ 2002 L 341, p. 28) specifies a mandatory format for the evidence that must be adduced by the applicant for the declaration of invalidity to prove the disclosure of the design prior to the date of filing of the application for registration of the contested design. The applicant for the declaration of invalidity is therefore free to choose the evidence it considers useful to submit to EUIPO in support of its application for a declaration of invalidity (judgments of 17 May 2018, Basil v EUIPO – Artex (Bicycle baskets), T‑760/16, EU:T:2018:277, paragraph 41, and of 12 March 2020, Gamma-A v EUIPO – Zivju pārstrādes uzņēmumu serviss (Packaging for foodstuffs), T‑353/19, not published, EU:T:2020:95, paragraph 21). Furthermore, EUIPO is obliged to examine all the evidence submitted to it in order to determine whether it actually proves disclosure of the earlier design (judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 21).

32      The disclosure of an earlier design cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual disclosure of the earlier design on the market. In addition, the evidence adduced by the applicant for the declaration of invalidity must be considered in its entirety. 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 the plausibility and the accuracy of the information which that document contains. It is necessary to take account of, inter alia, the origin of the document, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears to be sound and reliable (see judgment of 17 May 2018, Bicycle baskets, T‑760/16, EU:T:2018:277, paragraph 42 and the case-law cited).

33      As a preliminary point, it must be noted that, in the circumstances of the present case, the date to be taken into consideration for the purpose of assessing the priority of the disclosure is the date on which the application for registration of the contested design was filed, namely 20 February 2004.

34      In the present case, the Board of Appeal granted the intervener’s application for a declaration of invalidity on the ground that, although the Cancellation Division had been right to find that the evidence submitted to it was insufficient, the additional evidence submitted to the Board of Appeal, in particular Annexes 32 to 34, demonstrated that the earlier R5015 design had been made available to the public, within the meaning of Article 7(1) of Regulation No 6/2002.

35      In that regard, it is apparent from the information in the file that, before the Cancellation Division, the intervener had submitted, inter alia, evidence relating to sheet-cutting machines containing the image of a print mark (Annex 6), an affidavit by C (Annex 8) stating that the intervener had been using rectangular and squared print marks as early as 2003 and 2004, together with a brochure showing label rolls and labelling machines, and a European patent for tape printing apparatus.

36      The intervener submitted to the Board of Appeal, as additional evidence of disclosure, Annex 32, which contains an affidavit of 18 February 2019 by A, a director of a company operating in the field of label printing, together with a translation into English and a number of invoices, order confirmations and photographs. Annex 33 contains an affidavit of 11 February 2019 by B, a member of the board of directors of a company which manufactured flexible dies for the intervener for the purposes of producing label 8853 from 1999 to 2003. Annex 34 contains an affidavit of 19 February 2019 by C, a mechanical engineer for the intervener, containing, inter alia, representations of the 8853 label rolls used by the intervener and confirming A’s statements.

37      There is no need to examine further Annexes 33 and 34, since Annex 33 concerns a label template 8853 not taken into account in the contested decision and Annex 34, which is from a member of the intervener’s staff, confirms the content of Annex 32, which is the only annex taken into account by the contested decision.

38      It is apparent from A’s affidavit, as produced in the language of the proceedings, namely German, and from its translation into English in Annex 32, that A’s company had been producing, inter alia, R5015 label rolls for the intervener since 2003.

39      According to the applicant, the Board of Appeal erred in understanding the expression ‘inter alia’ used by A in his affidavit as applying to the intervener, whereas it applied to the goods, which is clear from the German version of that affidavit. The applicant infers from this that Annex 32 showed disclosure only with regard to the intervener.

40      It should be noted in that respect that what the expression ‘inter alia’ refers to may appear ambiguous in the two versions, namely English and German, of the affidavit.

41      However, as EUIPO states, even if it is considered that that affidavit shows only that the earlier R5015 design was made available to the company of which A is a director, its evidential value must be considered in the light of all the evidence produced, in accordance with the case-law referred to in paragraph 32 above.

42      In that regard, the affidavit is accompanied by, inter alia, two invoices No 232506 and No 232449 of 3 and 4 December 2003, relating to labelling tools, and in particular the R5015 design for two amounts of EUR 1 860, from A’s company and addressed to the intervener.

43      Similarly, it is apparent from Annex 2, attached to Annex 32, that an order of 24 November 2003 relating to, inter alia, 50 ‘R5015 Thermal label rolls’ was sent by the intervener to A’s company and that that delivery is dated 1 December 2003. The fact that that document is neither signed nor bears a stamp showing that the delivery was actually received cannot call into question or weaken its authenticity. Its probative value in relation to disclosure is characterised by the fact that it contains a number of items of information, including the contact details of the two contracting parties, a date, an order number, the precise description of the products concerned, including the product to which the earlier design was applied, and their specifications.

44      Moreover, the fact that it is stated on page 3 of that order form that the quantity is fictitious and the amount is set for testing does not prevent that order from being regarded as a disclosure. Disclosure does not impose any requirement that the earlier design must have been used for the manufacture or marketing of a product (see, to that effect, judgment of 21 May 2015, Umbrellas, T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 36). The fact, emphasised by the applicant, that there was no sale of labels, but merely assistance from A’s company in the intervener’s preparation of its own labels or earlier designs, does not preclude a finding of disclosure within the meaning of Article 7(1) of Regulation No 6/2002.

45      In addition, even if the invoices relate to labelling tools, as the applicant submits and as is apparent from the wording of those invoices, they expressly refer to the R5015 design, which, as EUIPO states, allows them to be regarded as relevant in the light of the criterion for disclosure of the design and as supporting the statement in the affidavit that that disclosure took place before the relevant date.

46      Therefore, in view of the submission of the affidavit, as supported by the two invoices No 232506 and No 232449 of 3 and 4 December 2003 and by the order of 24 November 2003, the Board of Appeal was right to find that disclosure of the earlier R5015 design before the relevant date had been proved.

47      The applicant’s argument that the relationship between A’s company and the intervener cannot be described as use of the R5015 label in trade, on the ground that it was a case of ‘confidential preparations’, must be rejected. The confidential or secret nature of the relationship between A’s company and the intervener, which would prevent a finding that the R5015 label was used, is not substantiated in any way.

48      Furthermore, in so far as, by its argument based on the fact that A’s company acts only for the intervener, the applicant is seeking to claim that the circles specialised in the sector concerned were not aware of the disclosure of the earlier design, it must be noted that, in accordance with the case-law referred to in paragraphs 29 and 30 above, once disclosure has been demonstrated, it is presumed to exist. It is therefore for the party challenging it to prove that the circumstances of the case could reasonably prevent the events constituting the disclosure in question from becoming known in the normal course of business to the circles specialised in the sector concerned (see, to that effect, judgment of 27 February 2020, Bog-Fran v EUIPO – Fabryki Mebli ‘Forte’ (Furniture), T‑159/19, not published, EU:T:2020:77, paragraphs 39 and 41).

49      Furthermore, the question of whether or not the fact that a design has been disclosed to a single undertaking in the sector concerned within the European Union is sufficient grounds for considering that the design could reasonably have become known in the normal course of business to the circles specialised in that sector, is an assessment that depends on the circumstances (see, to that effect, judgment of 13 February 2014, H. Gautzsch Großhandel (C‑479/12, EU:C:2014:75, paragraphs 35 and 36).

50      In the present case, it must be stated that the applicant has adduced no evidence whatsoever that the disclosure in question could not have become known to the circles specialised in the sector concerned.

51      It follows that, in the light of the intervener’s demonstration of the veracity of the facts constituting disclosure of the earlier design, the Board of Appeal was right to find that the earlier design had been disclosed before the date of filing of the contested design, for the purposes of Article 7(1) of Regulation No 6/2002.

52      The second plea in law must therefore be rejected.

 The third plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, in that the designs at issue were wrongly considered to produce the same overall impression on the informed user and that the contested design was therefore wrongly considered to lack individual character

53      By its third plea in law, the applicant submits that the Board of Appeal made an error of assessment in deciding that the contested design lacked individual character, in breach of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, on the ground, inter alia, that the differences between the designs at issue were wrongly ignored.

54      EUIPO and the intervener dispute that line of argument.

55      According to Article 6(1)(b) of Regulation No 6/2002, a registered Community design is to be 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 or, if a priority is claimed, the date of priority.

56      Article 6(2) of Regulation No 6/2002 also states that, in assessing that individual character, the degree of freedom of the designer in developing the design is to be taken into consideration.

57      Furthermore, it is apparent from recital 14 of Regulation No 6/2002 that, when there is an assessment as to whether a design has individual character, account should be taken of the nature of the product to which the design is applied or in which it is incorporated, and in particular, the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

58      The assessment of the individual character of a Community design is therefore carried out, in essence, in four stages. That examination consists in deciding upon, first, the sector to which the products in which the design is intended to be incorporated or to which it is intended to be applied belong; second, the informed user of those products in accordance with their purpose and, with reference to that informed user, the degree of awareness of the prior art and the level of attention to the similarities and the differences in the comparison of the designs; third, the designer’s degree of freedom in developing his or her design, the influence of which on individual character is in inverse proportion; and, fourth, taking that degree of freedom into account, the outcome of the comparison, direct if possible, of the overall impressions produced on the informed user by the contested design and by any earlier design which has been made available to the public, taken individually (see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 66 and the case-law cited; see also, to that effect, judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraphs 53, 55 and 59).

59      It is in the light of those principles that it is necessary to examine whether the Board of Appeal correctly concluded that the contested design lacked individual character when compared with the earlier design, in so far as it produced the same overall impression as the earlier design on the informed user.

60      As a preliminary point, it must be noted that, as stated in the contested decision, the designs at issue are intended to be incorporated into printer label rolls, which is not disputed by the parties. It is therefore appropriate to examine, in turn, the informed user, the degree of freedom of the designer, and to compare the overall impressions produced by the designs at issue.

 The informed user

61      The concept of informed user is not defined by Regulation No 6/2002. According to the case-law, that concept 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 in conflict, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring not to a user of average attention, but to a particularly observant one, either because of his or her personal experience or 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).

62      As regards more specifically the informed user’s level of attention, although the informed user is not the well-informed and reasonably observant and circumspect average consumer who normally perceives a design as a whole and does not proceed to analyse its various details, he or she is also not an expert or specialist capable of observing in detail the minimal differences that may exist between the designs in conflict. Thus, 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 degree of attention when using them (see judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 59 and the case-law cited).

63      In the present case, as the Board of Appeal found, the informed user, without being a designer or a technical expert, knows the various designs of printer label rolls from the product range available on the market, possesses a certain level of knowledge with regard to the features which those label rolls normally include and, as a result of his or her interest, shows a relatively high level of attention when using them, which is not disputed by the parties.

 The designer’s degree of freedom

64      According to case-law, the designer’s degree of freedom is established by, inter alia, the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (see judgment of 21 May 2015, Umbrellas, T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 56 (not published) and the case-law cited).

65      Therefore, 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 different overall impressions on an informed user. Conversely, the more restricted the designer’s freedom in developing a design, the more likely it is that minor differences between the designs at issue will be sufficient to produce different overall impressions on an informed user (judgment of 21 May 2015, Umbrellas, T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 57 (not published)).

66      In the present case, the Board of Appeal stated, in essence, that the designs at issue were intended to be incorporated into printer label rolls and that the degree of freedom with regard to the print marks and oval holes was limited by technical requirements, namely synchronisation and regulation of the printing process. Nevertheless, the Board of Appeal found that there was considerable freedom in relation to the colour of the strip, the shape, size and colour of the labels and the overall shape of the roll.

67      The degree of freedom of the designer of the contested design was therefore considered to be average, which is not disputed by the parties.

 Overall impression

68      It must be noted that 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 significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions (see judgment of 16 February 2017, Antrax It v EUIPO – Vasco Group (Thermosiphons for radiators), T‑828/14 and T‑829/14, EU:T:2017:87, paragraph 53 and the case-law cited).

69      The comparison of the overall impressions produced by the designs at issue must be synthetic and may not be limited to an analytic comparison of a list of similarities and differences. That comparison must take as a basis the characteristics disclosed in the contested design and must relate solely to the characteristics protected, without taking account of the characteristics, and particularly technical characteristics, excluded from the protection. The comparison must relate to the designs, in principle, as registered and the invalidity applicant cannot be required to produce a graphic representation of the design relied on, comparable to the representation in the application for registration of the design at issue (see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 84 and the case-law cited).

70      In the present case, as the Board of Appeal found, the designs at issue both have the features of the carrier roll, the yellowish strip, the white plain rectangular labels and the oval holes between each label. As regards the differences, they are limited to the size of the label, which is longer and narrower in the contested design than in the earlier R5015 design, the corresponding difference relating to the height of the roll and the number, position and size of the black print marks.

71      Although those differences cannot be regarded as immaterial, as the Board of Appeal stated, it was right to find that they were nevertheless insufficient to produce a different overall impression in the mind of the informed user.

72      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 earlier design cannot call into question that conclusion.

73      First, the applicant points to a contradiction in the contested decision on the ground that, in paragraph 53 of that decision, the Board of Appeal assumed that the informed user would consider that the print marks fulfilled a ‘primarily’ technical role, whereas, in paragraph 32 of the contested decision, it found that those print marks played a ‘solely’ technical role.

74      However, that argument must be rejected. Such a difference in the terms used has no bearing on the comparison of the overall impressions produced by the designs at issue, since the result of the categorisation of the technical role of the print marks, whether that be a solely or primarily technical role, is that the informed user will not focus his or her attention on those print marks and, therefore, they will not contribute to the appearance of the contested design. That argument cannot therefore lead to the annulment of the contested decision.

75      Moreover, as EUIPO argues, the two findings are made within different legal contexts. Thus, the conclusion relating to the solely technical nature of the print marks, in paragraph 32 of the contested decision, results from the application of the objective criterion referred to in Article 8(1) of Regulation No 6/2002, in the context of which the Board of Appeal concluded that the features of the appearance of the print marks on the label strips were dictated by their solely technical function, whereas the finding in paragraph 53 of the contested decision relates to the way in which the informed user will perceive those print marks and, in that context, the Board of Appeal was able to conclude, without contradicting itself, that the print marks fulfilled a primarily technical function.

76      Secondly, the applicant states that the designs at issue do not concern the labels, but the label rolls, and it submits that the Board of Appeal was wrong to ignore the differences between the print marks on the ground that they were situated on the back of the label strips.

77      It must be noted that paragraphs 49 to 51 of the contested decision set out the features of the designs at issue and refer to, inter alia, the label rolls. Furthermore, the Board of Appeal found, inter alia, that the designs at issue coincided in features of carrier rolls and, in its assessment of the overall impression, it did not focus solely on the labels, but considered the label rolls as a whole.

78      Furthermore, contrary to what the applicant claims, the Board of Appeal did take into account the back part of the label strip of the designs at issue, which, moreover, is represented in views No 3 and No 5 of the contested design and is referred to in respect of the features of those designs. Without ignoring those factors, the Board of Appeal, however, put their significance into context, in view of the fact that, for the informed user, they fulfilled a primarily technical function. The Board of Appeal did not therefore make an error of assessment in inferring from this that they did not contribute to the ‘appearance’ of the label itself, since those print marks were on the back of the strip. Furthermore, even if that conclusion concerns the labels, they form an integral part of the contested design, registered for ‘labels’, and such a finding is therefore relevant in the context of the comparison of the overall impressions produced by the designs at issue.

79      Thirdly, the applicant claims that the word and figurative elements were wrongly ignored. It refers in that regard to the word marks presented in a special font on the contested design (dymo) and on the earlier R5015 design (avery), and the figurative element in the shape of a triangle next to the word element ‘avery’, and maintains that those elements are decorative elements.

80      However, it must be stated that the word and figurative elements on the designs at issue are marks or distinctive signs affixed to the product to indicate its origin. Those elements do not have an ornamental or decorative function and do not constitute features of the product giving the goods concerned their appearance, for the purposes of Article 3(a) and (b) of Regulation No 6/2002. Those word and figurative elements are therefore irrelevant in the comparison of the overall impressions for the purposes of establishing the individual character of the contested design.

81      Furthermore and in any event, it must be noted that the comparison of the overall impression of the designs at issue must take as a basis the characteristics disclosed in the contested design and must relate solely to the characteristics protected, without taking account of the characteristics, and particularly technical characteristics, excluded from the protection (see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 84 and the case-law cited).

82      Therefore, even though those word and figurative elements could be regarded as relevant, it will be clear to the informed user that their purpose is to indicate the origin of the goods, with the result that, in the overall impression, that user will not attach importance to them and those elements will therefore, in the present case, be insufficient to alter the overall impression that he or she will have of the contested design.

83      Fourthly, the applicant submits that differences in the number of types, shape and in the arrangement of the print marks were wrongly ignored and that their shapes and lengths were wrongly considered to be merely technical.

84      It is apparent from the file that, in the contested design, on the back of each label, there are two types of print marks, some being rectangular and black, situated on the back of the strip, in a continuous equidistant sequence, and the others being square and larger, also in a continuous equidistant sequence, but at more spaced intervals, that is to say only one on the back of each label. In the earlier design, on the back of each label, there is a large rectangular black print mark, and two rectangular print marks, one medium and the other small, each of which appears only once, in an equidistant sequence.

85      It is therefore correct that there are certain differences as regards the print marks on the back of the label strip of each of the designs at issue, in particular in respect of their number, shape and length, and how they are arranged.

86      However, it is apparent from the contested decision that the Board of Appeal duly took into account those differences relating to the print marks. The differences were referred to, inter alia, in the summary of the features of the designs at issue and in the assessment carried out by the Board of Appeal with regard to their number, size and position. It is also apparent from paragraph 53 of the contested decision that the Board of Appeal took the view that those differences were not insignificant, even though it then found that they were insufficient to produce a different overall impression in the mind of the informed user.

87      Accordingly, the applicant’s argument that those differences were ignored must be rejected.

88      Fifthly, in so far as the applicant submits that those differences were incorrectly regarded as being insufficient to produce a different overall impression in the mind of the informed user, it must be held that the Board of Appeal put the effect of those prints marks on the informed user into context, in view of their technical function.

89      According to the applicant, the shapes and lengths of those print marks are not merely technical. It claims that the intervener bore the burden of proof in that regard. It adds that, since the European patent was silent as to the size and shape of the print marks, that patent could not be regarded as proving that they were purely functional in nature. The applicant also submits that the evidence adduced, in particular the designer’s affidavit, the probative value of which the applicant emphasises, demonstrated that the choice of the shape and length of the print marks was arbitrary. It concludes from this that the informed user will not overlook the print marks on the ground that they also have a technical function.

90      It must be noted that it is for the applicant to prove what it puts forward before the Court. In that regard, it is apparent from the file that the intervener submitted evidence to the Board of Appeal showing that the print marks, read by the printers’ sensors, were used to detect the start of the labels and therefore to initiate the printing process and control it by identifying and regulating the position, speed, timing and amount of material to be advanced. The technical nature of the print marks was established on the basis of, inter alia, an expert opinion, two European patents No 1718472 B1 and No 0934168 B1 in which the markings are the print marks, and an affidavit of 17 June 2016 by C, a mechanical engineer for the intervener, referring to a catalogue which was also submitted.

91      It is thus apparent from the information in the file that the technical function of the print marks has been established.

92      Sixthly, the fact, relied on by the applicant, that there are other designs for those print marks or that the European patents referred to indicate that the dimensions are given by way of example does not invalidate the finding that those print marks perform a technical function.

93      As regards the shape and length of the print marks, the Board of Appeal stated that it was apparent from the expert opinion submitted to it that the rectangular shape of the print marks was due to the scanning operation carried out by the sensors and that their position, spacing, shape (straight contours), width and length were determined by the printer’s sensor and the corresponding software control. Thus, even though those features linked to the shape and length of those print marks may vary, the fact remains that they must nevertheless correspond to the sensors of printers used and therefore have a technical function.

94      As regards the designer’s affidavit, produced by the applicant in Annex 18 to its application, it must be noted that the particulars in an affidavit made by a person linked, in any manner whatsoever, to the company relying on it must, in any event, be supported by other evidence (see, to that effect, judgment of 18 November 2015, Liu v OHIM – DSN Marketing (Case for a portable computer), T‑813/14, not published, EU:T:2015:868, paragraph 29).

95      In the present case, although the designer’s intention may be taken into account (see, to that effect, Opinion of Advocate General Saugmandsgaard Øe in DOCERAM, C‑395/16, EU:C:2017:779, point 67), the fact remains that that mere intention is not sufficient in itself to cast doubt on the fact that a feature of the appearance of a product also results from its technical function. Furthermore, and in any event, it also follows from that affidavit that the shape and size of the print marks may differ in so far as they correspond with the printers’ sensors, which is the technical function of those print marks.

96      It is therefore apparent from the information in the file that those features relating, inter alia, to the arrangement, shape and length of the print marks, which may influence the appearance of those print marks, are linked not to an aesthetic but a technical choice, which depends on the configuration of the printer with which the design at issue is required to function. Moreover, those features do not have a significant influence on the configuration and, therefore, on the shape and general appearance of the label roll design itself.

97      The Board of Appeal was therefore right to conclude that the informed user, aware of that technical function of the print marks on the back of the label strip and of the fact that printer labels were available in different sizes depending on their intended purpose, did not pay particular attention to the differences thus noted.

98      Seventhly and lastly, contrary to what the applicant claims with regard to the informed user’s attention, the Board of Appeal did not in any way exclude the print marks from its assessment relating to the overall impression of the designs at issue. It considered only that, because of his or her knowledge of printer label rolls and the corresponding printers, the informed user should be regarded as being aware of ‘the features of appearance that a label roll must possess in order to fulfil its intended purpose to interact with the printer’s sensor’ and that he or she would not therefore pay particular attention to the difference in the size of the labels.

99      It follows from all of the foregoing that the Board of Appeal did not make an error of assessment in finding that the designs at issue produced the same overall impression on the informed user, or in concluding therefore that the contested design lacked individual character, for the purposes of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 6 of that regulation, in view of the earlier design.

100    Consequently, the third plea in law raised by the applicant must be rejected as unfounded and, therefore, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim requesting that the Court reject the application for a declaration of invalidity of the contested design, since that head of claim depends on the action for annulment being upheld, so that it is made only in the event that the first head of claim succeeds (see, to that effect, judgment of 27 February 2019, Aytekin v EUIPO – Dienne Salotti (Dienne), T‑107/18, not published, EU:T:2019:114, paragraph 84 and the case-law cited).

 Costs

101    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.

102    Since the applicant has been unsuccessful, 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 Sanford LP to pay the costs.

Delivered in open court in Luxembourg on 10 November 2021.

*      Language of the case: English.

1 This judgment is published by extracts.

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