M&T 1997, a.s. v European Union Intellectual Property Office (T-654/22)

Contents

Judgment of the general Court (Seventh Chamber)10 April 2024^note(Community design — Invalidity proceedings — Registered Community design representing door and window handles — Earlier design — Ground for invalidity — Individual character — Article 25(1)(b) and Article 6 of Regulation (EC) No 6/2002)In Case T‑654/22,M&T 1997, a.s., established in Dobruška (Czech Republic), represented by T. Dobřichovský, lawyer,vEuropean Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez, acting as Agent,the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, beingVDS Czmyr Kowalik sp.k., established in Świętochłowice (Poland), represented by M. Witkowska and A. Pilecka, lawyers,THE GENERAL COURT (Seventh Chamber),composed of K. Kowalik-Bańczyk, President, I. Dimitrakopoulos (Rapporteur) and B. Ricziová, Judges,Registrar: G. Mitrev, Administrator,having regard to the written part of the procedure,further to the hearing on 12 October 2023,gives the following

JudgmentOnly the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.

1By its action under Article 263 TFEU, the applicant, M&T 1997, a.s., seeks the annulment and the alteration of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2022 (Case R 29/2022-3) (‘the contested decision’).…

Forms of order sought

9The applicant claims that the Court should:– annul the contested decision;– alter the contested decision in order to uphold the appeal and dismiss the application for a declaration of invalidity in its entirety;– order the intervener to pay the costs, including those incurred before EUIPO.

10EUIPO contends that the Court should:– dismiss the action;– order the applicant to pay the costs in the event that an oral hearing is convened.

11The intervener contends that the Court should:– dismiss the action;– order the applicant to pay the costs, including those incurred before the Board of Appeal.

Law

Substance…

13In the context of the first plea, the applicant, in essence, complains that the Board of Appeal erred in finding that the overall impression produced by the contested design on the informed user did not differ from that produced by the earlier design on that user and that, therefore, the contested design did not have individual character.

14That plea is divided into three parts, concerning, in essence, the Board of Appeal’s assessment relating, first, to the definition of the informed user, second, to the determination of the designer’s degree of freedom and, third, to the comparison of the overall impressions that the designs at issue produce on the informed user.…

The comparison of the overall impressions produced by the designs at issue

38The Board of Appeal found, in paragraphs 27 to 36 of the contested decision, that the contested design did not produce a different overall impression from that of the earlier design. In that regard, first, it noted that the two designs at issue showed a door handle consisting of a lever in a flat, rectangular shape, a grip in a cuboid shape of the same dimensions and proportions, and a thin profile. Second, it noted that the differences between the two designs at issue were limited only to the curvature of the edges, which were rounded in respect of the contested design, and to the shape of the neck, the transition of which was curved in the contested design and perpendicular in the earlier design, and that those differences were not sufficient to produce distinct overall impressions on the informed user, in particular in view of the designer’s high degree of freedom. The difference in curvature would not be immediately perceived by the informed user without an examination of the exact degree of angles. Furthermore, the difference in the neck, which is located at the back of the handle and not on the exposed side, does not play a decisive role in the overall impression. Third, the Board of Appeal rejected two other differences relied on by the applicant, namely a rosette shape and a shade of colour on the contested design, finding that the existence of the former could not be inferred from the lines of the contested design and that the second was not sufficient to offset the similarities of the designs at issue. Fourth, it found that the fact that the contested design obtained the ‘Red Dot’ award in 2013 was irrelevant for the assessment of the overall impression on the informed user under Article 6(1)(b) of Regulation No 6/2002.

39The applicant disputes that assessment, claiming that the Board of Appeal made several errors of assessment.…

49The overall impression produced on the informed user by a design must necessarily be determined in the light of the manner in which the product in question is normally used (see, to that effect, judgment of 4 February 2014, Gandia Blasco v OHIM – Sachi Premium-Outdoor Furniture (Cuboid Armchair), T‑339/12, not published, EU:T:2014:54, paragraph 26 and the case-law cited). In that context, account must be taken of the fact that the attention of the informed user is focused rather on the most visible and most important elements when using the product (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).

50In this respect, the importance of the visible features of the product is assessed on the basis of their impact not only on its appearance, but also on the ease with which it can be used (see, to that effect, judgments of 4 February 2014, Cuboid Armchair, T‑339/12, not published, EU:T:2014:54, paragraphs 26 and 30, and of 6 September 2023, Cayago Tec v EUIPO – iAqua (Shenzhen) (Personal watercraft, Speedboat), T‑377/22, not published, under appeal, EU:T:2023:504, paragraph 54).

51Furthermore, according to the case-law, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs which do not have significant differences produce the same overall impression on an informed user and, accordingly, the contested design does not display individual character. Conversely, if the designer has a low degree of freedom, that reinforces the conclusion that the sufficiently marked differences between the designs produce a dissimilar overall impression on the informed user and, accordingly, the contested design displays individual character (see judgment of 13 June 2019, Display holder for vehicles, T‑74/18, EU:T:2019:417, paragraph 76 and the case-law cited).

52It is therefore necessary to determine, in the present case, whether the differences between the two designs at issue are sufficiently marked to produce distinct overall impressions on the informed user.…

55Furthermore, as regards the elements which are, for their part, relevant to the comparison of the overall impressions produced by the designs at issue, it should be noted that, when the informed user uses a door handle with a grip in accordance with its normal use, he or she clasps its gripping area with the hand, which corresponds, in the present case, to the grip, in order to exert downward pressure so that the latch of the door slides and allows the door to be opened, which can then be pushed or pulled. Where the informed user approaches the door handle in order to use it normally, that user sees it from above. Accordingly, the most visible elements of the handle are those corresponding to the outward-facing parts of the handle, namely the front, side and top parts of the handle. As the Board of Appeal acknowledged in paragraphs 33 and 35 of the contested decision, the differences at the back, namely the curvature of the edges and the shape of the neck, will also be visible to the informed user and will not be overlooked by him or her. Moreover, as the applicant points out, the rounded curvature of the edges of the contested design is accompanied by a thinner and smoother appearance which the informed user will easily notice.

56Furthermore, the rounded and thinner shapes of the edges of the contested design constitute differences from the earlier design which will be perceived by the informed user as influencing the manipulation of the handle and are, therefore, important elements in relation to the overall impression produced by the contested design, in accordance with the considerations set out in paragraphs 49 and 50 above. Those aspects have an impact on the ease of use of the handle, since they correspond to the parts of it which come into direct contact with the hand of the informed user.

57Consequently, in accordance with the considerations set out in paragraph 49 above, the attention of the informed user is focused on all the elements set out in paragraphs 55 and 56 above.

58In the light of the information provided in paragraphs 55 and 56 above and the high level of attention of the informed user in the present case (see paragraph 22 above), it must be held that, contrary to what the Board of Appeal found in paragraph 35 of the contested decision, the differences in the angles of the grip and the neck are neither marginal nor minor variations of one and the same design. A more rounded shape generally results in a softening of the lines of the neck and grip, which has a significant effect both on the overall appearance and on the ease of use of the door handle. It is therefore an element which attracts the informed user’s attention.

59It follows from the foregoing that, although the designer’s freedom is high (see paragraph 35 above), those differences are sufficiently significant to produce a different overall impression of the designs at issue, contrary to the Board of Appeal’s analysis.…

Operative part

THE GENERAL COURT (Seventh Chamber)hereby:

1.Annuls the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2022 (Case R 29/2022-3);

2.Dismisses the action as to the remainder;

3.Orders each party to bear its own costs.

Delivered in open court in Luxembourg on 10 April 2024.