Unger Marketing International v EUIPO - Orben Wasseraufbereitung (Purificateurs d'eau) (Community design - Judgment) [2022] EUECJ T-325/20 (26 January 2022)

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(Community design – Invalidity proceedings – Design representing a water purifier – Ground for invalidity – Non-compliance with requirements for protection – Article 25(1)(b) of Regulation (EC) No 6/2002 – Features of appearance of a product solely dictated by its technical function – Article 8(1) of Regulation No 6/2002 – Declaration of invalidity)

Unger Marketing International, LLC, established in Bridgeport, Connecticut (United States), represented by C. Schulte, lawyer,

European Union Intellectual Property Office (EUIPO), represented by S. Hanne, D. Hanf and J. Ivanauskas, acting as Agents,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 26 February 2020 (Case R 740/2018‑3) relating to invalidity proceedings between Orben Wasseraufbereitung and Unger Marketing International,

composed of A. Marcoulli, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,

having regard to the response lodged at the Court Registry on 10 September 2020,

having regard to the order of 18 March 2021 rejecting the application to intervene lodged by the other party to the proceedings before the Board of Appeal pursuant to Article 173(1) of the Rules of Procedure of the General Court,

1 The applicant, Unger Marketing International, LLC, is the holder of the Community design for ‘water purifiers’ filed with the European Union Intellectual Property Office (EUIPO) on 10 October 2014 and registered on the same day under number 25554250002 pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

3 The goods to which the contested design is intended to be applied are in Class 23.01 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Water purifiers’.

4 On 28 September 2016, the other party to the proceedings before EUIPO filed, pursuant to Article 52 of Regulation No 6/2002, an application for a declaration of invalidity relating to the contested design on the basis of Article 25(1)(a) and (b) of Regulation No 6/2002. It submitted, in particular, that all the features of the contested design were dictated solely by their technical function and concluded that, in the light of Article 8(1) of Regulation No 6/2002, that design could not be eligible for protection.

5 By decision of 16 April 2018, the Invalidity Division found that the contested design was invalid pursuant to Article 25(1)(b) and Article 8(1) of Regulation No 6/2002.

6 On 18 April 2018, the applicant filed a notice of appeal with EUIPO pursuant to Articles 55 to 60 of Regulation No 6/2002, seeking annulment of the Invalidity Division’s decision.

7 By decision of 26 February 2020 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the decision of the Invalidity Division and dismissed the appeal. In essence, the Board of Appeal found that the contested design subsisted in features solely dictated by the technical function of the product to which it was intended to be applied, namely water purifiers, with the result that that design had to be declared invalid pursuant to Article 25(1)(b) in conjunction with Article 8(1) of Regulation No 6/2002.

– order EUIPO and the other party to the proceedings, if that other party is granted leave to intervene, to pay the costs.

10 The applicant raises two pleas in law, the first alleging infringement of Article 8(1) of Regulation No 6/2002, the second alleging infringement of Article 65(1)(f) of that regulation.

11 EUIPO states, as a preliminary point, that the documents annexed to the application in Annexes A.8 and A.14 to A.18 have been produced by the applicant for the first time before the Court. It submits that they may change the subject matter of the proceedings before the Board of Appeal and are therefore inadmissible pursuant to Article 188 of the Rules of Procedure of the General Court. As regards the substance, EUIPO disputes all the applicant’s arguments.

12 It is apparent 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 examine new pleas introduced before it or to review the facts in the light of evidence adduced for the first time before it. To allow the examination of those new pleas and to admit such evidence would be contrary to Article 188 of the Rules of Procedure, according to which the pleadings lodged by the parties in proceedings before the General 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).

13 When asked at the hearing about the plea of inadmissibility raised by EUIPO, the applicant confirmed that Annexes A.8 and A.14 to A.18 had been produced for the first time before the Court.

14 The documents produced for the first time before the Court, as referred to in paragraph 11 above, must thus 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).

15 Although the applicant formally raises, as its first plea in law, infringement of Article 8(1) of Regulation No 6/2002 alone, it is necessary to take the view that, in the light of the arguments in the application, submitted in the context of a dispute relating to invalidity proceedings, the applicant is seeking to raise a plea alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 8(1) of that regulation.

1. The first plea in law, alleging infringement of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 8(1) of that regulation

16 In support of its first plea in law, the applicant submits, in essence, that the Board of Appeal, in its application of Article 8(1) of Regulation No 6/2002, vitiated the contested decision by errors of law and of assessment by failing to follow the approach or to correctly apply the standards defined by the Court of Justice in the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172).

18 The applicant maintains that, first of all, the Board of Appeal erred in law by wrongly finding, contrary to recital 10 of Regulation No 6/2002, that, in order to be protected, the features of appearance of the product for which the contested design was intended must be the result of aesthetic considerations, whereas, in its view, it is sufficient, according to the case-law arising from the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), that the visual aspect has played some role in the choice of those features.

19 Next, according to the applicant, the Board of Appeal, in essence, erred in law in so far as it held that the fact that all the features of the contested design were set out in the detailed description in the international patent application No PCT/US2015/025386 filed by the applicant (‘the patent application’) was sufficient to exclude the contested design from protection under Article 8(1) of Regulation No 6/2002.

20 The applicant argues that the Board of Appeal thus proceeded automatically, whereas it should have taken account of the circumstances of the case and all the relevant evidence. In that regard, the Board of Appeal’s examination should have related, in particular, to the explanations provided in the patent application, but also to the existence of alternative designs or the designer’s intention.

21 Furthermore, the applicant asserts that, in its examination, the Board of Appeal erred in law by wrongly placing the burden of proof on the applicant.

22 Lastly, the applicant maintains that the Board of Appeal erred in its assessment of the facts of the case.

23 First, according to the applicant, the Board of Appeal wrongly considered that the five features of appearance of the product at issue it identified, namely those of a filled bag, roughly circular when viewed from the top and the bottom, and elliptical with a flattened bottom when viewed from the side, closed by laces, which create a multitude of pleats, were dictated solely by the technical function of that product.

24 Second, the applicant submits that the Board of Appeal failed to consider a sixth feature in its assessment of the appearance of the product at issue, namely that of the seam dividing the bag into a lower and an upper part.

25 Having briefly set out the applicant’s arguments, it must be borne in mind that, under Article 25(1)(b) of Regulation No 6/2002, a Community design may be declared invalid only if it does not fulfil the requirements of Articles 4 to 9 of that regulation.

26 Article 8(1) of Regulation No 6/2002 provides that a Community design may not subsist in features of appearance of a product which are solely dictated by its technical function.

27 In the light of Article 8(1) of Regulation No 6/2002, recital 10 thereof states as follows:

‘Technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality. Likewise, the interoperability of products of different makes should not be hindered by extending protection to the design of mechanical fittings. Consequently, those features of a design which are excluded from protection for those reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection.’

28 The Court, in the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172, paragraph 31), held, in particular, that Article 8(1) of Regulation No 6/2002 excluded protection, under the law on Community designs, for features of appearance of a product where considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect, had not played any role in the choice of those features, even if other designs fulfilling the same function exist.

29 The Court of Justice stated that, in order to determine whether the features of appearance of a product were exclusively dictated by its technical function, it had to be established that the technical function was the only factor which had determined those features, the existence of alternative designs not being decisive in that regard (judgment of 8 March 2018, DOCERAM, C‑395/16, EU:C:2018:172, paragraph 32).

30 According to the Court, assessment as to whether the features of appearance of a product are covered by Article 8(1) of Regulation No 6/2002 must be made having regard to all the objective circumstances relevant to each individual case. That assessment must be made, in particular, having regard to the design at issue, the objective circumstances indicative of the reasons which dictated the choice of features of appearance of the product concerned, or information on its use or the existence of alternative designs which fulfil the same technical function, provided that those circumstances, data, or information as to the existence of alternative designs are supported by reliable evidence (judgment of 8 March 2018, DOCERAM, C‑395/16, EU:C:2018:172, paragraphs 36 and 37).

31 Furthermore, it is apparent from Article 8(1) of Regulation No 6/2002, recital 10 of that regulation and the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), that the assessment of a design in the light of the abovementioned provision comprises the following steps: it is necessary, in the first place, to determine the technical function of the product concerned, in the second place, to analyse the features of appearance of that product within the meaning of Article 8(1) of Regulation No 6/2002 and, in the third place, to examine, in the light of all the relevant objective circumstances, whether those features are solely dictated by the technical function of the product concerned. In other words, it must be examined whether the need to fulfil that technical function is the only factor that determined the choice by the designer of those features, with considerations of another nature, in particular those related to the visual aspect of that product, having played no role in the choice of those features (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 98).

32 Lastly, in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function, within the meaning of Article 8(1) of Regulation No 6/2002, the court must take account of all the objective circumstances relevant to each individual case and, in that regard, there is no need to base those findings on the perception of an ‘objective observer’ (judgment of 8 March 2018, DOCERAM, C‑395/16, EU:C:2018:172, paragraph 38).

33 It is in the light of those factors that the arguments on which the applicant relies must be assessed.

(a) The first three parts of the first plea in law, relating to errors of law in the application of Article 8(1) of Regulation No 6/2002

34 The Court considers it necessary to examine, in the first place, the third part of the first plea in law, relating to the burden of proof, referred to in paragraph 21 above.

35 In accordance with Article 63(1) of Regulation No 6/2002, in proceedings relating to a declaration of invalidity, the Board of Appeal’s examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.

36 In accordance with the case-law set out in paragraph 30 above, the Board of Appeal’s assessment as to whether the features of appearance of a product are covered by Article 8(1) of Regulation No 6/2002 must be made having regard to the objective circumstances indicative of the reasons which dictated the choice of features of appearance of the product concerned, or information on its use or the existence of alternative designs, provided that those circumstances, data, or information as to the existence of alternative designs are supported by reliable evidence.

37 In that regard, it must be noted that, when an applicant for a declaration of invalidity refers to the ground of invalidity set out in Article 25(1)(b) of Regulation No 6/2002, it is for him or her to provide evidence to demonstrate that the contested design does not fulfil the requirements of Articles 4 to 9 of that regulation (judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 60).

38 In those circumstances, where Article 8(1) of Regulation No 6/2002 is referred to in invalidity proceedings, it is for the Board of Appeal to examine the evidence adduced by the applicant for a declaration of invalidity and then to compare it, where appropriate, with the evidence to the contrary adduced by the holder of the design at issue and thus to assess the reliability of all the evidence provided by each party to the proceedings, in order to rule on whether the features of appearance of the product at issue are solely dictated by its technical function.

39 In the present case, after noting that the parties did not dispute that the product at issue was a filter bag containing purification media and that it was used in pure water systems, the Board of Appeal stated that the function of such a bag was to make it possible easily to introduce purification media serving for water conditioning into a pure water system and to mitigate the leakage or the flow of untreated water.

40 On the basis of the evidence and observations submitted by the parties during the proceedings, the Board of Appeal found, in paragraph 22 of the contested decision, that the appearance of the product at issue had five features, namely that the bag was filled, that it was roughly circular when viewed from the top and the bottom, and elliptical with a flattened bottom when viewed from the side, that it was closed at the top with laces and that that lacing created a multitude of pleats.

41 Then, after having examined those features, in paragraphs 24 to 27 of the contested decision, on the basis of the patent application, which had been furnished by the other party to the proceedings in support of the application for a declaration of invalidity, the Board of Appeal concluded, in paragraph 28 of that decision, that ‘given that the evidence provided explains for each of the features of appearance [of the product] … its technical function, it would have been for the … holder [of the contested design] to demonstrate the aesthetic considerations that influenced the choice of features beyond [that] technical function’.

42 In that regard, the Board of Appeal analysed, in paragraphs 29 to 30 of the contested decision, the arguments and evidence submitted by the applicant, before confirming, following its examination, in paragraph 32 of the contested decision, its conclusion that all the features of the contested design were exclusively dictated by the function of the product for which that design was intended. On the basis of that finding, the Board of Appeal found, in paragraph 33 of the contested decision, that the contested design was invalid.

43 It is apparent from such reasoning that the Board of Appeal, throughout the various stages of its assessment, in the order set out in paragraph 31 above, ruled on the question whether the features of the filter bag were covered by Article 8(1) of Regulation No 6/2002 having regard to all the objective circumstances relevant to the case, in accordance with the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), cited in paragraph 30 above, basing its assessment on the evidence adduced by the parties, by examining, first of all, in accordance with the rules on the burden of proof set out in paragraph 37 above, the evidence adduced by the other party to the proceedings, and then comparing it with the arguments of the applicant.

44 In those circumstances, and in accordance with the examination referred to in paragraph 38 above, the Board of Appeal reached its conclusion, as stated in paragraph 23 of the contested decision and confirmed in paragraph 32 of that decision, that all the features of the product at issue were dictated by its technical function, after having allowed the applicant effectively to challenge the evidence adduced by the other party from which it was apparent that the conditions for the application of Article 8(1) were met. By thus stating that it was for the applicant to adduce evidence capable of calling that conclusion into question, the Board of Appeal did not place the burden of proof on the applicant, but merely drew the inferences it considered appropriate from its examination of the reliability of the evidence adduced by both parties to the proceedings. The applicant is therefore not entitled to complain that the Board of Appeal reversed the burden of proof to its detriment.

45 In the light of the foregoing, the third part of the first plea in law must be rejected.

(2) The first part of the first plea in law, alleging that the lack of aesthetic quality was taken into account, contrary to recital 10 of Regulation No 6/2002, as interpreted by the Court of Justice

46 As has been stated in paragraph 18 above, the applicant complains that the Board of Appeal was wrong to find that the contested design had to have an aesthetic quality in order to be eligible for registration, whereas, in the applicant’s view, it is sufficient that the visual aspect could have played some role.

47 According to recital 10 of Regulation No 6/2002, it does not follow from the exclusion of protection referred to in Article 8(1) of that regulation that a design must have an aesthetic quality. Thus, it is not essential for the appearance of the product in question to have an aesthetic aspect to be protected under that regulation (judgment of 8 March 2018, DOCERAM, C‑395/16, EU:C:2018:172, paragraph 23).

48 In the present case, it is apparent from paragraphs 28, 29 and 30 of the contested decision, as the applicant submits, that the Board of Appeal, in order to find that the features of appearance of the product at issue were solely dictated by their technical function, relied on the fact that the applicant had not demonstrated that ‘aesthetic considerations’ had influenced the choice of features beyond their technical function.

49 At the hearing, when questioned by the Court on that point, EUIPO stated that the aesthetic considerations taken into account by the Board of Appeal sought to ‘reinforce the visual aspect of the product and of the creation’, with the result that the concepts of ‘aesthetic consideration’ and ‘visual aspect’ were interchangeable.

50 That said, it must be noted, first of all, that the reasoning adopted by the Board of Appeal, as set out in paragraph 48 above, was first of all intended to refute the applicant’s arguments presented before it, consisting, specifically, in relying on allegedly aesthetic features of the contested design in order to justify the protection sought by the applicant.

51 The applicant thus claimed, as is apparent from the second indent of paragraph 11 of the contested decision, without this being disputed, that it had applied for ‘protection for the design that had the best aesthetics’ and maintained, as noted in the third indent of paragraph 13 of the contested decision, that the decision to keep the features of the contested design showed ‘an aesthetic surplus because the designer [had] to select from various shapes, some of which would [have] even [performed] technically better’.

52 Next, it should be noted that, in paragraph 29 of the contested decision, the Board of Appeal stated that the applicant had not shown that there were considerations other than technical ones that could have played a role in the appearance of those features. In paragraph 31 of that decision, the Board of Appeal referred to the existence of alternative shapes of filled bags, which it considered to be all equally dictated only by their technical function.

53 Lastly, in paragraph 32 of that decision, the Board of Appeal, in support of its assessment, referred to the statement of the designer of the product at issue, which in its view revealed that the designer had been very well aware of the technical function of each of the features of the contested design.

54 In those circumstances, it is apparent from the statement of reasons for the contested decision that the Board of Appeal took account of the lack of aesthetic considerations in rejecting the arguments relied on by the applicant itself during the proceedings, but did not refuse protection of the contested design on the ground that that design had no aesthetic quality.

55 The Board of Appeal, as EUIPO confirmed at the hearing, assessed, in the context of the application of Article 8(1) of Regulation No 6/2002, whether considerations other than technical ones, in particular those related to their visual aspect, could have played a role in the choice of the features of appearance of the product at issue. In that regard, the Board of Appeal concluded, in paragraph 32 of the contested decision, that ‘there [could] be no doubt that all the features of the contested [design had] been exclusively designed to secure technical effects and that the only concerns of the designer in their development [had been] of technical nature with no regard to the visual aspect’.

56 In thus concluding that the visual aspect had not been taken into account in the design process of the contested design, the Board of Appeal therefore did not take the view, contrary to recital 10 of Regulation No 6/2002, that it was necessary for the appearance of the filter bag to have an aesthetic quality in order to be eligible for protection under that regulation. The Board of Appeal cannot therefore have applied a ‘false approach of aesthetic considerations (rather than visual aspect)’. That applies a fortiori since aesthetic considerations, while not its exclusive component, are linked to the visual aspect of the appearance of the product to which the design at issue is to be applied.

57 In the light of all the foregoing, the first part of the first plea in law must be rejected.

(3) The second part of the first plea in law, alleging failure to examine all the circumstances of the case

58 The applicant submits, in essence, as has been stated in paragraphs 19 and 20 above, that the Board of Appeal did not examine all the circumstances of the case and the relevant evidence when it excluded the contested design from protection under Article 8(1) of Regulation No 6/2002. It starts from the premiss that the Board of Appeal proceeded automatically when it refused to grant protection to the contested design on the sole ground that all the features of appearance of the product at issue were set out in the patent application.

59 In the present case, as is apparent from paragraphs 41 and 42 above, the Board of Appeal began its analysis of the features of appearance of the product at issue on the basis of the explanations and graphic representations provided in the patent application, furnished by the other party to the proceedings in support of its application for a declaration of invalidity, and subsequently examined the applicant’s arguments submitted in the proceedings. In particular, it took into account, in its assessment, as is apparent from paragraph 30 of the contested decision, the applicant’s argument that the contested design had been chosen on account of its sleekness and simplicity, and examined the affidavit of its designer relied on by the applicant in support of the latter’s argument. In paragraph 31 of the contested decision, the Board of Appeal then also addressed the applicant’s argument alleging that there were several alternative designs for the contested design.

60 After examining the parties’ evidence and arguments, the Board of Appeal, as stated in paragraph 42 above, found, in essence, that those submitted by the applicant were not such as to call into question the Board of Appeal’s finding following the examination of the explanations in the patent application, and concluded from that, as is apparent from paragraphs 23 and 32 of the contested decision, that all the features of appearance of the product at issue were solely dictated by the technical function of that product.

61 In those circumstances, contrary to what the applicant claims, the Board of Appeal did not proceed automatically, by relying solely on the information contained in the patent application, but examined the circumstances of the case and all the parties’ evidence and arguments, and in particular the existence of alternative designs and the intention of the designer of the contested design, before finding, in paragraph 33 of the contested decision, that the contested design was invalid pursuant to Article 8(1) of Regulation No 6/2002.

62 That conclusion cannot be called into question by the fact that the applicant, as it submits, obtained a European patent which protects the technical features of the pure water system to which the product for which the contested design is intended belongs. Even if that fact were such as to avoid the ‘risk that the [contested design] would circumvent the requirements of patent law’, it is, in any event, irrelevant for the purpose of assessing the application of Article 8(1) of Regulation No 6/2002 that the Board of Appeal was able to make in the present case.

63 In the light of all the foregoing, the second part of the first plea in law must be rejected.

(b) The fourth part of the first plea in law, alleging errors in the assessment of the facts in the present case

64 The applicant submits, as stated in paragraph 23 above, that the Board of Appeal erred in its assessment of the five features of appearance of the product at issue and failed to take account of a sixth feature in its examination, as stated in paragraph 24 above.

65 It is common ground and not disputed, as stated in paragraph 40 above, that the features identified by the Board of Appeal are those of a filled bag, roughly circular when viewed from the top and the bottom, and elliptical with a flattened bottom when viewed from the side, the top of which is closed with laces which create a multitude of pleats. The applicant relies, however, on a sixth feature consisting of a seam dividing the bag into a lower and an upper part.

(1) The assessment of the first feature of appearance of the product at issue, namely that of a filled bag

66 It follows from paragraphs 23 and 24 of the contested decision that the Board of Appeal took the view that the filled bag served solely a technical function on the ground that, in accordance with the patent application, it contains a material in a compressed state (for example, purification media) which serves to filter water and forms a sealing engagement making it possible to reduce the flow of untreated water between the outer wall of the bag and the inner wall of the pure water system.

67 In order to dispute that assessment, the applicant relies, in essence, on the existence of alternative designs, which concern the rim of the filter bag or the state of the purification media, or refers to the existence of ‘alternate embodiments’ of resin bags.

68 It must, however, be borne in mind in that regard that, in accordance with the case-law cited in paragraph 28 above, protection for features of appearance of a product, under the law on Community designs, is excluded where considerations other than the need for the product to which the design at issue applies to fulfil its technical function have not played any role in the choice of those features, even if other designs fulfilling the same function exist.

69 If the existence of alternative designs fulfilling the same function as that of the product concerned was sufficient in itself to exclude the application of Article 8(1) of Regulation No 6/2002, a single economic operator would be able to obtain several registrations as a Community design of different possible forms of a product incorporating features of appearance of that product which are exclusively dictated by its technical function. That would enable such an operator to benefit, with regard to such a product, from exclusive protection which is, in practice, equivalent to that offered by a patent, but without being subject to the conditions applicable for obtaining the latter, which would prevent competitors offering a product incorporating certain functional features or limit the possible technical solutions, thereby depriving Article 8(1) of its full effectiveness (judgment of 8 March 2018, DOCERAM, C‑395/16, EU:C:2018:172, paragraph 30).

70 Therefore, the mere fact that there are ‘alternate embodiments’ of the filled bag, characterising the appearance of the product at issue, cannot, in and of itself, suffice to invalidate the Board of Appeal’s finding that such a feature is solely dictated by the technical function of that product.

71 Nor can that conclusion be called into question by the affidavit of the designer, whose intention, in choosing among various possible options that of the contested design on account of its ‘simple and sleek look’, even though such a design was not the most efficient in filtering water, shows, according to the applicant, that visual considerations have played some role in the choice of that feature.

72 In that regard, it must first of all be pointed out that the particulars in an affidavit made by a person linked, in any manner whatsoever, to the company relying on it must be supported by other evidence (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). In the present case, in order to demonstrate that considerations other than technical ones have played a role in the choice of the feature of the filled bag, the applicant relies, in support of that statement, on the mere fact that alternative designs exist, which is not, as has just been found, capable in itself of demonstrating that. The affidavit of the designer cannot, in the absence of evidence to support it, suffice to establish that the feature of the filled bag was chosen for anything other than its mere technical function.

73 In any event, the mere fact that such a feature would not provide the most efficient water purification solution does not mean that it has been chosen for its visual aspect.

74 In that regard, the characterisation of the contested design as sleek by its designer is a purely subjective claim and is not such as to reflect the objective circumstances indicative of the reasons that might have dictated the choice of the features of appearance of the product at issue. As regards such objective circumstances, the simplicity of the filled bag, referred to by the designer, cannot suffice to establish that the visual aspect of such a bag, altogether commonplace, played any role whatsoever in the choice to keep it, when the same could be said, as EUIPO rightly states, for almost any simple object.

75 That applies a fortiori since the designer himself explained in paragraph 8 of his affidavit that the contested design had been developed to ‘simplify the refilling/replacing of the filter media for these window cleaners and at the same time create a functional, cutting-edge design’, after the applicant had informed him that the replacement or refilling of rigid cartridges and loose resin were considered to be too complex, difficult and time-consuming. That statement thus highlights the technical considerations which dictated the choice of that design.

76 Lastly, the Board of Appeal, in accordance with the examination referred to in paragraph 38 above, took account of all the applicant’s arguments, in particular those relating to the existence of alternative designs and the affidavit and, as stated in paragraph 60 above, found that the applicant’s evidence and arguments, as follows from paragraphs 23 and 32 of the contested decision, were not such as to call into question its conclusion following the examination of the explanations in the patent application, furnished by the other party to the proceedings. Therefore, the applicant cannot claim that the Board of Appeal failed to state the reasons why it took the view that the visual aspects had not played a role in the choice of the features of appearance of the product at issue.

77 In the light of all the foregoing, the first complaint, alleging an error of assessment of the first feature of appearance of the product at issue, namely that of a filled bag, must be rejected.

(2) The assessment of the second and third features of appearance of the product at issue, namely, first, that it is roughly circular when viewed from the top and the bottom, and second, that it is elliptical with a flattened bottom when viewed from the side

78 In the present case, the Board of Appeal, on the basis of the content of the patent application, found, in paragraph 25 of the contested decision, that the roughly circular shape of the filled bag when viewed from the top and the bottom, and the elliptical shape with a flattened bottom when viewed from the side, were a direct consequence of the presence of an elastic, tubular bag. It concluded from that that they were dictated by the technical function of the filter bag which, on being filled, is to form a sealing engagement with the inner surface of the tank and thus to minimise the leakage or flow of untreated water between the outer dimension of the bag and the inner surface of the tank and the bottom of the bag and the surface of the first diffuser plate of that tank.

79 In that regard, the applicant relies, first of all, on arguments which it put forward in order to challenge the assessment of the first feature of appearance of the product at issue. Since it merely makes a reference in that regard, without adducing additional evidence, those arguments must be rejected on the same grounds as above.

80 Next, contrary to what the applicant claims, it is not apparent from the contested decision that the Board of Appeal automatically concluded that a feature was solely dictated by the technical function of the product at issue because it found that that feature fulfilled such a function.

81 As is apparent from its analysis of the arguments of the parties to the proceedings, as set out in paragraphs 41 to 43 and 60 above, it was only after finding that the applicant had not put forward any arguments capable of calling into question its assessment of the evidence adduced by the other party to the proceedings, from which the Board of Appeal inferred that each feature of appearance of the product at issue was explained by reference to its technical function, that the Board of Appeal concluded, taking into account all the items of evidence, that all the features of appearance of the product at issue were solely dictated by the technical function of the filter bag. The Board of Appeal therefore did not exclude the features at issue from protection on the sole ground that they fulfilled a technical function, but did so after also finding that the applicant had not been able to establish that considerations other than technical ones could have played a role in the choice of those features.

82 In that regard, contrary to what the applicant claims, the mere fact that the Board of Appeal stated, in paragraph 32 of the contested decision, that the designer of the contested design had been very well aware of the technical function of each of the features cannot call into question that conclusion and suffice to establish that the Board of Appeal excluded the features at issue from protection on the sole ground that they fulfilled a technical function.

83 In the light of the foregoing, the second complaint, alleging an error of assessment of the second and third features of appearance of the product at issue, must be rejected.

(3) The assessment of the fourth and fifth features, namely that of the top of a bag closed with laces, creating a multitude of pleats, and the failure to take account of a sixth feature, namely that of a seam dividing the bag into a lower and an upper part

84 On the basis of the patent application, the Board of Appeal found, in paragraphs 26 and 27 of the contested decision, that the top closing system using laces allowed the bag to be opened initially in order to be filled with the purification media and that the multitude of pleats created by the laces were merely the direct consequence of that closing system used to seal the bag after filling it. For those reasons, it considered that those features, as is apparent from paragraph 23 of the contested decision, were also solely dictated by the technical function of the filter bag.

85 In that regard, the applicant relies, first of all, on the ‘same arguments’, without specifying which arguments it is seeking to rely on. If it is to be understood that the applicant is relying on all the arguments submitted in support of its challenge of the assessment of the first three features of the contested design, those must, in the absence of further details, be rejected on the same grounds as those rejecting those first three complaints.

86 Next, the applicant asserts that, in accordance with what is stated in the patent application, the closing system at issue can be any closing device, which may be composed in different ways, namely, by one or more zip-ties, by knots, metal clips, welded or sewn seams, zippers, additional panels sewn thereto, hook-and-loop type fasteners, or any combinations of those various methods.

87 However, as is apparent from the case-law referred to in paragraphs 28 and 29 above, and supplemented in paragraph 69 above, the mere fact that there are alternative shapes for closing the filter bag cannot suffice to exclude the application of Article 8(1) of Regulation No 6/2002. Since the applicant has failed to provide evidence capable of showing that considerations other than technical ones could have played a role in the choice of the closing system using laces, it must be concluded that the Board of Appeal was right to take the view that, since it was apparent from the explanations in the patent application that that system makes it possible to ensure that the filter bag is watertight by sealing it, the fourth and fifth features were solely dictated by the technical function of the product at issue.

88 Furthermore, the applicant criticises the Board of Appeal for failing to take account of the seam dividing the filter bag into a lower part, with no pleats, and an upper part, the shape of which is tubular when open and covered by multiple pleats in a circular way when closed by the laces. In its view, the seam thus constitutes a major visual aspect of the contested design and the protected visual effect stems from the fact that ‘in fact, in the real product, the two parts [would] have different materials’.

89 In that regard, it is apparent from the file that, in order to challenge the ground based on the application of Article 8(1) of Regulation No 6/2002, the applicant has relied on the existence of a sixth feature of the contested design for the first time before the Court. It has not called into question, for the purposes of the application of that provision, the finding made as between the parties, during the proceedings before EUIPO, that the contested design consisted of the five features referred to in paragraph 40 above.

90 It is apparent from the contested decision, in particular paragraphs 11 and 15 thereof, that the applicant relied on the existence of a seam between the lower and the upper part of the contested design only in the context of its challenge of the ground for invalidity relied on by the other party on the basis of Article 25(1)(a) of Regulation No 6/2002, read in conjunction with Article 3(a) of that regulation. Moreover, as is apparent from paragraph 11 of the contested decision, the applicant did not call into question the Invalidity Division’s assessment that since the product at issue was not a solid construction, the horizontal line through its middle could move and was not easily visible in some of the views depicting the product at issue from different angles.

91 In addition, at the hearing, EUIPO confirmed that the applicant had not relied on that sixth feature during the proceedings before EUIPO, which the applicant does not dispute.

92 As noted in paragraph 12 above, 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, with the result that it is not the Court’s function to examine new pleas or arguments introduced before it.

93 Accordingly, and without it being necessary to rule on its merits, the argument alleging that the existence of a seam dividing the product at issue into a lower and an upper part was not taken into account for the purposes of the application of Article 8(1) of Regulation No 6/2002 must be rejected as inadmissible.

94 It follows from all the foregoing that none of the applicant’s arguments is capable of establishing the existence of errors in the Board of Appeal’s assessment when it applied Article 8(1) of Regulation No 6/2002.

95 In the light of all the foregoing, the fourth part of the first plea in law and, consequently, the first plea in its entirety, must be rejected.

2. Second plea in law, alleging infringement of Article 65(1)(f) of Regulation No 6/2002

96 The applicant submits that the Board of Appeal infringed Article 65(1)(f) of Regulation No 6/2002 on the ground that it did not regard the affidavit of the designer of the contested design as evidence.

97 EUIPO contends that the applicant’s plea is inadmissible because it is neither sufficiently precise nor sufficiently clear to assess its merits.

98 In accordance with Article 65(1)(f) of Regulation No 6/2002, statements in writing, sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up, form part of the means of giving or obtaining evidence in any proceedings before EUIPO.

99 The statements referred to in Article 65(1)(f) of Regulation No 6/2002 are part of the evidence adduced which the relevant department of EUIPO may commission one of its members to examine, in accordance with paragraph 2 of that article. That provision therefore does not concern statements that a party to the proceedings might produce, during the proceedings before EUIPO, on its own initiative. The second plea is therefore ineffective.

100 In addition, it is apparent from paragraph 30 of the contested decision that the Board of Appeal took into account and analysed the affidavit of the designer of the contested design, produced for the first time before the Board of Appeal, stating expressly in that regard that it was ‘appropriate to admit the new evidence at [that] stage, since it [complemented] the evidence already provided during the invalidity proceedings and [seemed], prima facie, likely to be relevant to the outcome of the invalidity case [before it]’. The fact that the Board of Appeal assessed that item of evidence differently from the applicant cannot mean that the Board of Appeal failed to take it into consideration.

101 In the light of the foregoing, the second plea in law must be rejected and, accordingly, the action must be dismissed.

102 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.

103 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Unger Marketing International v EUIPO - Orben Wasseraufbereitung (Purificateurs d'eau) (Community design - Judgment) [2022] EUECJ T-325/20 (26 January 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T32520.html Cite as: ECLI:EU:T:2022:23, [2022] EUECJ T-325/20, EU:T:2022:23

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