ADS L. Kowalik, B. Włodarczyk s.c. v European Union Intellectual Property Office (T-611/21)

Contents

Judgment of the General Court (Second Chamber)30 November 2022^note(Community design — Invalidity proceedings — Registered Community design representing an accessory for wireless remote controls — Ground for invalidity — Features of appearance of a product dictated solely by its technical function — Article 8(1) and Article 25(1)(b) of Regulation (EC) No 6/2002 — Facts or evidence submitted for the first time before the Board of Appeal — Article 63(2) of Regulation No 6/2002 — Obligation to state reasons — Article 41(1) and (2)(c) of the Charter of Fundamental Rights)In Case T‑611/21,ADS L. Kowalik, B. Włodarczyk s.c., established in Sosnowiec (Poland), represented by M. Oleksyn, lawyer,vEuropean Union Intellectual Property Office (EUIPO), represented by M. Chylińska and J. Ivanauskas, acting as Agents,the other party to the proceedings before the Board of Appeal of EUIPO beingESSAtech, established in Přistoupim (Czech Republic),THE GENERAL COURT (Second Chamber),composed, at the time of the deliberations, of V. Tomljenović, President, I. Nõmm and D. Kukovec (Rapporteur), Judges,Registrar: M. Zwozdziak-Carbonne, Administrator,having regard to the written part of the procedure,further to the hearing on 11 July 2022,gives the following

Judgment

1By its action under Article 263 TFEU, the applicant, ADS L. Kowalik, B. Włodarczyk s.c., seeks the annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 July 2021 (Case R 1070/2020-3) (‘the contested decision’).

Background to the dispute

2On 7 December 2017, the applicant filed an application for registration of a Community trade mark with EUIPO, pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

3The Community design in respect of which registration was sought and which is contested in the present case is represented in the following view:

4The products to which the design is intended to be applied are in Class 14.03 of the Locarno Agreement of 8 October 1968 Establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Remote controls [wireless] (Accessories for -)’.

5The contested design was registered on 7 December 2017 as Community design under No 4539 302-0001 and published in Community Designs Bulletin No 2018/044 of 5 March 2018.

6On 20 May 2019, the other party to the proceedings before the Board of Appeal of EUIPO, ESSAtech, filed an application for a declaration of invalidity in respect of the contested design, pursuant to Article 52 of Regulation No 6/2002.

7The ground relied on in support of the application for a declaration of invalidity was that referred to in Article 25(1)(b) of Regulation No 6/2002, in conjunction with Article 8(1) and (2) of that regulation.

8On 6 April 2020, the Invalidity Division rejected the application for a declaration of invalidity.

9On 27 May 2020, the other party to the proceedings before the Board of Appeal of EUIPO filed an appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Invalidity Division.

10By the contested decision, the Third Board of Appeal of EUIPO allowed the appeal, annulled the decision of the Invalidity Division and declared the contested design invalid.

11In that regard, the Board of Appeal pointed out, first, that the technical function of the product at issue, which is a device intended to be placed on the battery of a remote control for battery-operated electronic devices, was to allow the battery power supply to be cut off when it was not in use. Second, it established that the features of appearance of the product at issue were as follows: two circular plates coloured gold and brown, a strip connecting the two circular plates and a printed circuit board situated on one side of one of the plates composed of electronic components. Third, it held that all those features were dictated solely by the technical function of the product at issue, and so the contested design should be declared invalid in accordance with Article 25(1)(b), in conjunction with Article 8(1), of Regulation No 6/2002.

Forms of order sought

12The applicant claims, in essence, that the Court should:– annul the contested decision;– order EUIPO and the other party to the proceedings before the Board of Appeal of EUIPO to pay the costs, including those incurred before EUIPO.

13EUIPO contends that the Court should:– dismiss the action;– order the applicant to pay the costs.

Law

Admissibility of the documents submitted for the first time before the Court

14The applicant requests the Court to declare the screenshots of a website appearing in Annexes A.4 to A.6 to the application admissible as evidence. In its view, those documents prove the existence of alternatives to the products covered by the design at issue and a serious restriction of creative freedom.

15EUIPO contests the admissibility of Annexes A.4 to A.6 to the application on the grounds that the documents appearing in them were submitted for the first time before the Court.

16Clearly, as is evident from the case file, the documents appearing in Annexes A.4 to A.6 to the application were not submitted to EUIPO but were produced for the first time before the Court.

17It follows from the case-law that, having regard to the wording of Article 61 of Regulation No 6/2002, the Court’s review of the legality of a decision of the Board of Appeal must relate to the issues of law raised before the Board of Appeal. Therefore, it is not the Court’s function to review the facts in the light of evidence adduced for the first time before it. To admit such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, which provides that the pleadings lodged by the parties in proceedings before the Court may not change the subject matter of the proceedings before the Board of Appeal (see, to that effect, judgment of 23 October 2013, Viejo Valle v OHIM – Établissements Coquet (Cup and saucer with grooves and soup dish with grooves), T‑566/11 and T‑567/11, EU:T:2013:549, paragraph 63 and the case-law cited).

18It follows therefore that the documents produced before the Court for the first time must be excluded without it being necessary to assess their probative value (see, to that effect, judgment of 18 March 2010, Grupo Promer Mon Graphic v OHIM – PepsiCo (Representation of a circular promotional item), T‑9/07, EU:T:2010:96, paragraph 24 and the case-law cited).

19Consequently, the documents appearing in Annexes A.4 to A.6 to the application cannot be taken into consideration and must therefore be regarded as inadmissible.

Merits of the pleas

20In support of the action, the applicant puts forward, in essence, two pleas. The first plea alleges infringement of Article 8(1), together with Article 25(1)(b), of Regulation No 6/2002, and infringement of Article 41(2)(c), together with Article 41(1), of the Charter of Fundamental Rights of the European Union (‘the Charter’). The second plea alleges infringement of Article 63(1), together with Article 63(2), of Regulation No 6/2002, and infringement of Article 41(2)(c), together with Article 41(1), of the Charter.

21It is appropriate to begin the examination of the action by analysing the second plea.

22In the second plea, the applicant alleges that the Board of Appeal did not properly carry out the processing of the evidence and arguments that were submitted by the invalidity applicant for the first time before the Board of Appeal, namely Annexes Nos 1 to 4 to the statement setting out the grounds of the appeal lodged before that board.

23In the first place, according to the applicant, the Board of Appeal, in essence, infringed Article 63(1), together with Article 63(2), of Regulation No 6/2002. In the second place, the applicant alleges infringement of Article 41(2)(c), together with Article 41(1), of the Charter.

24EUIPO contests the applicant’s arguments.

25EUIPO contends, in the first place, that the Board of Appeal properly exercised its discretion to admit the evidence submitted by the other party to the proceedings before it, the conditions laid down in Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018, supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), being met in the present case. In the second place, it points out that, since the applicant had not contested such admission, that board was under no obligation to provide express reasons for the admission.

26In the present case, it is clear from the documents in the case that, in the context of the appeal brought before the Board of Appeal against the decision of the Invalidity Division, the invalidity applicant submitted a statement setting out the grounds of its appeal, together with Annexes Nos 1 to 4. Those annexes contained the following evidence:– images of circular printed circuit boards, and hyperlinks to their sources (Annex No 1);– a hyperlink to a video available on the YouTube webiste, and images showing the use of the product (Annex No 2);– images of earlier designs, and hyperlinks to their sources (Annex No 3);– a description of the product (Annex No 4).

27As is clear from the documents in the case and as the parties accept, Annexes Nos 1 to 4 to the statement setting out the grounds of the appeal lodged before the Board of Appeal contain facts or evidence submitted for the first time before that board. In that written statement, the invalidity applicant also submitted in that connection additional arguments which did not appear in the application for a declaration of invalidity.

28In that regard, it should be noted that Article 63(1) of Regulation No 6/2002 states that ‘in proceedings before it [EUIPO] shall examine the facts of its own motion’ and ‘however, in proceedings relating to a declaration of invalidity, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’. Moreover, Article 63(2) of that regulation provides that ‘[EUIPO] may disregard facts or evidence which are not submitted in due time by the parties concerned’.

29It follows from the wording of Article 63(2) of Regulation No 6/2002 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 out of time (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 15; see also, by analogy, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 42).

30In making clear that EUIPO ‘may’, in such a case, decide to disregard such evidence, that provision grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see, to that effect, judgment of 5 July 2017, Door handle, T‑306/16, not published, EU:T:2017:466, paragraph 16 and the case-law cited).

31As regards exercise of the Board of Appeal’s discretion, for the purposes of possibly taking into account facts or evidence submitted for the first time before it, it should be noted that taking them into account is likely to be justified where the conditions laid down in Article 27(4) of Delegated Regulation 2018/625 are met.

32In particular, Article 27(4) of Delegated Regulation 2018/625 provides:‘In accordance with Article 95(2) of Regulation … 2017/1001, the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:(a) they are, on the face of it, likely to be relevant for the outcome of the case; and(b) they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’

33Delegated Regulation 2018/625 is applicable in the field of Community designs, since, under Article 108 of Regulation No 6/2002, the provisions of that delegated regulation, relating to proceedings before the Boards of Appeal, are also applicable to appeals against the decisions referred to in Article 55 of that regulation (judgment of 24 March 2021, Lego v EUIPO – Delta Sport Handelskontor (Building block from a toy building set), T‑515/19, not published, EU:T:2021:155, paragraph 44). The latter article refers inter alia to decisions of the Invalidity Divisions, as in the present case.

34It must also be observed that the content of Article 63(2) of Regulation No 6/2002 is identical to that of Article 95(2) of Regulation 2017/1001, which is expressly referred to in Article 27(4) of Delegated Regulation 2018/625.

35It follows that the conditions laid down in Article 27(4) of Delegated Regulation 2018/625 apply mutatis mutandis to Article 63(2) of Regulation No 6/2002. Thus, the possibility for the Board of Appeal to take into account facts or evidence submitted for the first time before it, pursuant to Article 63(2) of that regulation, is governed by Article 27(4) of that delegated regulation (see, by analogy, judgment of 6 October 2021, Kondyterska korporatsiia ‘Roshen’ v EUIPO – Krasnyj Octyabr (Representation of a lobster), T‑254/20, not published, EU:T:2021:650, paragraphs 55 and 56).

36According to case-law, it is for the Court to assess whether the Board of Appeal in fact exercised the broad discretion conferred on it for the purpose of deciding, in a reasoned manner and taking due account of all the relevant circumstances, whether it was necessary to take account of the facts or evidence produced for the first time before it in order to deliver its decision. It is, furthermore, for the Court to verify that the Board of Appeal made correct use of the discretion conferred on it by Article 63(2) of Regulation No 6/2002 (see judgment of 5 July 2017, Door handle, T‑306/16, not published, EU:T:2017:466, paragraph 18 and the case-law cited). In the light of paragraph 35 above, the latter provision should be applied together with Article 27(4) of Delegated Regulation 2018/625.

37As is clear from the case-law relating to Article 63(2) of Regulation No 6/2002, cited in paragraphs 30 and 36 above, the Board of Appeal must exercise its discretion provided for in that provision for the purpose of deciding, giving reasons for its decision in that regard, whether it is necessary to take account of the facts or evidence produced for the first time before it. That obligation is also provided for in the case-law relating to Article 27(4) of Delegated Regulation 2018/625, according to which, if the board accepts and relies on such material, it must necessarily state, in accordance with Article 62 of that regulation, the reasons which led it to take the view that the conditions laid down in Article 27(4)(b) of Delegated Regulation 2018/625 were satisfied (see, to that effect and by analogy, judgment of 30 June 2021, Skyliners v EUIPO – Sky (SKYLINERS), T‑15/20, not published, EU:T:2021:401, paragraph 80).

38In that regard, it must be observed that the Board of Appeal’s obligation to exercise its discretion provided for in Article 63(2) of Regulation No 6/2002, for the purpose of deciding, giving reasons for its decision in that regard, whether it is necessary to take account of the facts or evidence submitted for the first time before it, originates from the obligation of the administration to give reasons for its decisions.

39Moreover, examination by the Board of Appeal of the question of admission of the facts or evidence submitted for the first time before it constitutes an obligatory preliminary stage to the possible analysis by it of that evidence in the context of the examination of the merits of the appeal brought before it.

40Hence, as regards both the analysis of the question of the admission of the facts or evidence submitted for the first time before the Board of Appeal and examination of the substance of the issues, the contested decision must comply with the requirements of the obligation to state reasons, which is laid down, inter alia, in Article 41 of the Charter, entitled ‘Right to good administration’, and, specifically, in paragraphs 1 and 2(c) of that article, infringements of which are also claimed by the applicant.

41In that regard, it should be noted that Article 41(1) of the Charter provides that ‘every person has the right to have his or her affairs handled impartially, fairly and within a reasonable time by the institutions, bodies, offices and agencies of the Union’. Article 41(2)(c) states that ‘this right includes: … the obligation of the administration to give reasons for its decisions’.

42The obligation to state reasons, which also stems from Article 62 of Regulation No 6/2002, has, according to case-law, two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision concerned (judgment of 16 February 2017, Antrax It v EUIPO – Vasco Group (Thermosiphons for radiators for heating), T‑828/14 and T‑829/14, EU:T:2017:87, paragraph 82).

43The question whether the statement of reasons for a decision satisfies those requirements must be assessed with reference not only to its wording but also to its context and the entire body of legal rules governing the matter in question (judgment of 9 February 2017, Mast-Jägermeister v EUIPO (Beakers), T‑16/16, EU:T:2017:68, paragraph 58).

44It must be observed that the obligation to state reasons is intended to prevent also the adoption of arbitrary decisions. Thus, it has a self-disciplinary effect, in so far as, being obliged to state the reasons for a decision, the author of the decision is also obliged to ensure that those reasons are relevant, consistent and sufficiently specific.

45Therefore, where the Board of Appeal exercises the discretion conferred on it by Article 63(2) of Regulation No 6/2002, it is required to give reasons for its decision as to the admission of the facts or evidence submitted for the first time before it, stating in particular whether, in view of the conditions laid down in Article 27(4) of Delegated Regulation 2018/625, that evidence may be accepted. It is therefore necessary to verify, in the present case, whether the board has complied with that obligation.

46In the present case, even though the Board of Appeal did not expressly establish, in the contested decision, the admission of the facts or evidence submitted in Annexes Nos 1 to 4 to the statement setting out the grounds of the appeal brought before the Board of Appeal, it must be held that that evidence was taken into account, implicitly but necessarily, by the board. First, not only was some of the evidence submitted in those annexes referred to in the presentation of the pleas and arguments of the parties appearing in paragraph 15 of the contested decision, the fact that they were taken into account is also to be deduced from the references, in the statement of reasons for that decision, to all the facts, arguments and evidence presented to that board. Second, both the applicant and EUIPO are in agreement in their written pleadings on such admission.

47It is clear that the statement of reasons for the contested decision does not contain any evidence concerning the reasons why the Board of Appeal admitted the facts or evidence produced by the invalidity applicant for the first time before it.

48Hence, the Court is not in a position to examine whether the Board of Appeal applied Article 27(4) of Regulation 2018/625 and whether the two requirements laid down in that provision were met before the admission of the facts or evidence submitted for the first time before it. In particular, it cannot verify whether the board examined, first, the relevance of that evidence, at first sight, for the dispute and, second, any valid reasons for its late submission. It is therefore impossible for the Court to ascertain the justification for such admission and to assess the merits of the contested decision on that point.

49Similarly, since the contested decision fails to give the reasons for the admission of the facts or evidence submitted for the first time before the Board of Appeal, the parties are unable to ascertain the justification for such admission in order to protect their rights.

50Therefore, it must be held that, since the contested decision is vitiated by a failure to state reasons with regard to the admission of the facts or evidence submitted for the first time before the Board of Appeal, that board did not comply with the requirements stemming from Article 63(2) of Regulation No 6/2002 and Article 41(2)(c), in conjunction with Article 41(1), of the Charter.

51That finding cannot be called in question by the arguments put forward by EUIPO.

52In the first place, it is necessary to reject EUIPO’s argument that, since the applicant had not contested before the Board of Appeal the admission of the facts or evidence that had been submitted for the first time before the board, the latter was not required expressly to give reasons for their admission.

53First, it is clear from case-law that reasons may be implicit provided they allow the persons concerned to know the reasons why the decision of the Board of Appeal was adopted and the court having jurisdiction to have sufficient evidence in order to carry out its review (judgment of 25 April 2013, Bell & Ross v OHIM – KIN (Wristwatch case), T‑80/10, not published, EU:T:2013:214, paragraph 37). However, as was found in paragraphs 48 and 49 above, that is not so in the present case.

54Second, as was stated in paragraph 45 above, where the Board of Appeal exercises the discretion conferred on it by Article 63(2) of Regulation No 6/2002, it is required to give reasons for its decision as to the admission of the facts or evidence submitted for the first time before it, stating in particular whether, in view of the conditions laid down in Article 27(4) of Delegated Regulation 2018/625, that evidence may be accepted.

55Therefore, the examination of EUIPO’s argument referred to in paragraph 52 above must be carried out in the light of the existence of an obligation for the Board of Appeal to state in particular whether, in the light of the conditions laid down in Article 27(4) of Delegated Regulation 2018/625, the facts or evidence submitted for the first time before it may be accepted.

56Under Article 63(1) of Regulation No 6/2002, EUIPO’s examination of the facts is restricted, in proceedings relating to a declaration of invalidity, as in the present case, to the facts, evidence and arguments provided by the parties and the relief sought.

57However, Article 63(1) of Regulation No 6/2002 does not exempt a Board of Appeal from examining and stating reasons for the admission of the facts or evidence submitted for the first time before the board under Article 27(4) of Delegated Regulation 2018/625 on the grounds that the applicant has not contested the admissibility of that evidence.

58Under Article 27(2) of Delegated Regulation 2018/625, the Board of Appeal must examine of its own motion matters of law not raised by the parties where they concern essential procedural requirements or where it is necessary to resolve them in order to ensure a correct application of Regulation No 6/2002 having regard to the facts, evidence and arguments presented by the parties (see, to that effect and by analogy, judgments of 10 June 2020, L. Oliva Torras v EUIPO – Mecánica del Frío (Vehicle couplings), T‑100/19, EU:T:2020:255, paragraphs 70 to 72, and of 13 October 2021, Škoda Investment v EUIPO – Škoda Auto (Representation of an arrow with wing), T‑712/20, EU:T:2021:700, paragraph 24).

59In the present case, the question of whether the facts or evidence submitted for the first time before the Board of Appeal may be admitted under Article 27(4) of Delegated Regulation 2018/625 constitutes a matter that concerns the correct application of Regulation No 6/2002 having regard to the facts, evidence and arguments presented by the parties, within the meaning of paragraph 2 thereof. The Board of Appeal must therefore examine that matter of its own motion and state the reasons for its reply.

60Therefore, contrary to what EUIPO contends, admission of the facts or evidence submitted for the first time before the Board of Appeal under Article 27(4) of Delegated Regulation 2018/625 – whilst stating the reasons for so doing in the contested decision – is not exempt from examination by that board solely because the applicant did not contest such admission at the stage of the proceedings before the board.

61Third, that finding is supported by the objective pursued by Article 27(4) of Delegated Regulation 2018/625.

62Article 27(4) of Delegated Regulation 2018/625 seeks, inter alia, to ensure the proper conduct and effectiveness of proceedings before EUIPO by providing the parties with an incentive to respect the time limits imposed on them (see, to that effect, judgment of 19 January 2022, Masterbuilders, Heiermann, Schmidtmann v EUIPO – Cirillo (POMODORO), T‑76/21, not published, EU:T:2022:16, paragraph 37 and the case-law cited).

63Article 27(4) of Delegated Regulation 2018/625 therefore pursues an objective of general interest. In those circumstances and since that provision is not restricted to protecting solely the interest of the parties concerned, examination of compliance with the rules governing the admission of evidence is not at the discretion of those parties.

64EUIPO’s argument referred to in paragraph 52 above, by making the content of the statement of reasons of the contested decision as regards examination under Article 27(4) of Delegated Regulation 2018/625 dependent on whether the admission of the facts or evidence submitted for the first time before the Board of Appeal was or was not contested during the proceedings before the board, leaves it to the parties to examine whether the rules governing the admission of evidence laid down in that provision have been complied with. Nonetheless, that board’s obligation to comply with the law, in particular in the context of review of the admission of evidence in the light of the regulatory requirements and the requirement to state reasons, cannot be dependent on the parties requesting it to carry out such a review.

65Fourth, it must be observed that, as is clear from the case-law relating to Article 27(4) of Delegated Regulation 2018/625, it is for the party presenting that evidence to justify why the evidence is being submitted at that stage of the proceedings and demonstrate that submission during the proceedings before the Invalidity Division was impossible (see, by analogy, judgment of 6 October 2021, Representation of a lobster, T‑254/20, not published, EU:T:2021:650, paragraph 59 and the case-law cited).

66By its argument recalled in paragraph 52 above, EUIPO attempts to call in question the allocation of the burden of proof defined in the case-law cited in paragraph 65 above, seeking to make the content of the contested decision as regards the examination under Article 27(4) of Delegated Regulation 2018/625 dependent on whether the admission of the facts or evidence submitted for the first time before the Board of Appeal was or was not contested during the proceedings before that board. Nonetheless, the obligation of that board to comply with the law, in particular in the context of review of the admission of evidence in the light of the regulatory requirements and the requirement to state reasons, cannot be dependent on the parties requesting it to carry out such a review.

67Similarly, EUIPO’s contention amounts to requiring parties before the Board of Appeal to ensure that the latter complies with its procedural obligations within the meaning of Article 27(2) of Delegated Regulation 2018/625, which are binding and subject to review by EUIPO of its own motion.

68Consequently, it must be held that, irrespective of the fact that the applicant did not contest the admission of the facts or evidence submitted for the first time before the Board of Appeal, the latter was in any event bound, under Article 63(2) of Regulation No 6/2002, together with Article 27(4) of Delegated Regulation 2018/625, to examine such admission and state the reasons which led it to admit that evidence.

69In the second place, EUIPO’s arguments intended to show that the conditions laid down in Article 27(4) of Delegated Regulation 2018/625 were met in the present case cannot be accepted.

70In that regard, it must be recalled that, according to case-law, the statement of reasons for a decision must appear in the actual body of that decision and may not be made by means of subsequent explanations provided by EUIPO, save in exceptional circumstances which, in the absence of any urgency, are not present. It follows that the decision must, in principle, be self-sufficient and that the reasons on which it is based cannot be stated in written or oral explanations given subsequently when the decision in question is already the subject of proceedings brought before the EU Courts (see judgment of 12 December 2017, Sony Computer Entertainment Europe v EUIPO – Vieta Audio (Vita), T‑35/16, not published, EU:T:2017:886, paragraph 57 and the case-law cited; see also, to that effect, judgment of 14 March 2018, Gifi Diffusion v EUIPO – Crocs (Footwear), T‑424/16, not published, EU:T:2018:136, paragraph 34 and the case-law cited).

71In the present case, in the absence of any urgency, the exceptional circumstances allowing EUIPO to provide subsequent explanations to supplement the reasons for the contested decision are not present. In any event, the explanations provided in the present case cannot be regarded as supplementing an existing statement of reasons, since they constitute an entirely new statement.

72Moreover, according to case-law, deficiencies in the reasons on which the contested decision is based are in themselves sufficient to justify annulment of the contested decision (see, to that effect, judgment of 2 April 1998, Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraph 78). The Court therefore finds that the error on the part of the Board of Appeal, referred to in paragraph 50 above, leads to annulment of the contested decision.

73Furthermore, that finding cannot be called in question by the case-law according to which applicants have no legitimate interest in pleading infringement of the obligation to state reasons in a case where it is already certain that following the annulment of the contested decision, an identical decision will be adopted (judgments of 29 September 1976, Morello v Commission, 9/76, EU:C:1976:129, paragraph 11, and of 3 December 2003, Audi v OHIM (TDI), T‑16/02, EU:T:2003:327, paragraphs 97 and 98).

74First, it cannot be ruled out that the Board of Appeal’s examination of the conditions laid down in Article 27(4) of Regulation 2018/625 could result in it not admitting the facts or evidence submitted for the first time before it. In that regard, however, it is not for the Court to replace EUIPO in assessing the evidence in question (see, to that effect, judgment of 28 September 2016, European Food v EUIPO – Société des produits Nestlé (FITNESS), T‑476/15, EU:T:2016:568, paragraph 68 and the case-law cited).

75Second, nor can it be ruled out that, if the Board of Appeal were to decide not to admit the facts or evidence submitted for the first time before it, the result of the contested decision would be different. In that regard, it must be observed that, in the response, EUIPO accepts that that evidence served to support the board’s findings regarding the assessment of the technical function of the features of appearance of the product at issue.

76Consequently, it must be held that, following the annulment of the contested decision, an identical decision will not necessarily be adopted.

77The applicant’s second plea must therefore be accepted, without there being any need to examine the other arguments it puts forward in support of that plea, in particular those relating to infringement of Article 63(1) of Regulation No 6/2002.

78In the light of the above, the action must be upheld and, consequently, the contested decision must be annulled, without there being any need to examine the first plea.

Costs

79Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

80The applicant claims that EUIPO should be ordered to pay the costs relating to the proceedings before the General Court and before EUIPO.

81Since EUIPO has been unsuccessful, it must be ordered to pay, in addition to its own costs, those incurred by the applicant relating to the proceedings before the General Court.

82As regards the costs relating to the invalidity proceedings before the Invalidity Division and the appeal proceedings before the Board of Appeal, it must be observed that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. That does not apply, however, to costs incurred for the purposes of the proceedings before the Invalidity Division.

83Therefore, the applicant’s request that EUIPO should be ordered to pay the costs relating to the proceedings before the Invalidity Division and before the Board of Appeal can be allowed only as regards the costs necessarily incurred for the purposes of the proceedings before the Board of Appeal. Accordingly, EUIPO is ordered to pay the costs incurred in connection with the latter proceedings and those relating to the proceedings before the Court.

Operative part

On those grounds,THE GENERAL COURT (Second Chamber)hereby:

1.Annuls the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 July 2021 (Case R 1070/2020-3);

2.Orders EUIPO to pay the costs incurred in the context of the proceedings both before the Board of Appeal of EUIPO and before the General Court.

Delivered in open court in Luxembourg on 30 November 2022.