Praha Alfa-Med v EUIPO - Rifetech () and installations pour le diagnostic medical ou de laboratoire) (Community design - Judgment) [2024] EUECJ T-614/23 (13 November 2024)

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( Community design - Invalidity proceedings - Registered Community design representing apparatus and installations for medical or laboratory diagnosis - Prior design - Obligation to state reasons - No individual character - No different overall impression - Informed user - Degree of freedom of the designer - Articles 4 to 6, Article 25(1)(b) and Article 62 of Regulation (EC) No 6/2002 )

Praha Alfa-Med s. r. o., established in Prague (Czech Republic), represented by M. Edelmann, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

composed, at the time of the deliberations, of M. Brkan, acting as President, I. Gâlea and T. Tóth (Rapporteur), Judges,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 By its action under Article 263 TFEU, the applicant, Praha Alfa-Med s. r. o., seeks the annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 June 2023 (Case R 2504/2022‑3) (‘the contested decision’).

2 On 16 November 2021, the other party to the proceedings before the Board of Appeal of EUIPO, Rifetech s. r. o., filed with EUIPO an application for a declaration of invalidity of the Community design registered following an application filed by the applicant on 26 July 2021 and represented in the following views:

3 The products in which the contested design is intended to be applied were in Class 24-01 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and corresponded to the following description: ‘Apparatus and installations for medical or laboratory diagnosis’.

4 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 25(1)(b) of Council Regulation No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) read in conjunction with the provisions of Article 4(1) of that regulation.

5 The application for a declaration of invalidity was based on a lack of novelty and individual character of the contested design in the light, in particular, of the prior design, which is represented in the following views:

6 On 19 October 2022, the Invalidity Division dismissed the application for a declaration of invalidity.

7 On 16 December 2022, the other party to the proceedings before the Board of Appeal of EUIPO filed a notice of appeal with EUIPO against the decision of the Invalidity Division.

8 By the contested decision, the Board of Appeal annulled the decision of the Invalidity Division and declared the contested design invalid on the ground that it lacked individual character within the meaning of Article 25(1)(b) of Regulation No 6/2002 read in conjunction with Article 6 of that regulation. More specifically, in the first place, the Board of appeal stated that the findings of the Invalidity Division’s decision concerning disclosure of the prior design were not disputed. In the second place, it indicated that it was common knowledge between the parties that the contested design was intended to be applied to apparatus and installations for medical or laboratory diagnosis, in particular, plasma generators. In the third place, it observed that the designer had some freedom as regards the size and shape of the control unit, the shape of the plasma tube and the shape of the legs, as well as the connection and the arrangement of those features. In the fourth place, it took the view that the relevant public was a person who habitually purchased plasma generators, put them to their intended use, possessed a certain degree of knowledge with regard to those features which those designs normally included and had become informed on the products in the designs, thus, an informed used with a relatively high level of attention. In the fifth place, after having assessed the similarities and differences of the designs at issue, the Board of Appeal found that the differences which existed between those designs were insufficient to produce a different overall impression on the part of the informed user. Consequently, the Board of Appeal concluded that the contested design had no individual character and that it was therefore not necessary to examine the other prior designs relied on by the other party to the proceedings before the Board of Appeal of EUIPO.

– order the applicant to pay the costs in the event that a hearing is convened.

11 The applicant relies, in essence, on two pleas in law, alleging, first, insufficient reasoning and, consequently, infringement of Article 62 of Regulation No 6/2002 and, second, an incorrect assessment as regards the lack of individual character of the contested design and, therefore, infringement of Article 25(1)(b) of that regulation read in conjunction with Article 6(1)(b) of the regulation.

The first plea, alleging insufficient reasoning and, consequently, infringement of Article 62 of Regulation No 6/2002

12 By its first plea, the applicant claims, in essence, that the Board of Appeal did not give sufficient reasons why it found that the graphic representations of the prior design, relied on by the other party to the proceedings before the Board of Appeal of EUIPO, were sufficiently precise and complete.

13 To that effect, the applicant submits that, before the Board of Appeal, it relied on the insufficiently precise nature of the prior design’s representation. In that regard, it states that it submitted photographs which showed that, in practice, the upper part of the prior design, consisting of a lamp, could be separated from its cuboid base and attached to a tripod.

15 In accordance with Article 62 of Regulation No 6/2002, decisions of EUIPO must be reasoned. That obligation to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally, and its purpose is twofold: first, to enable the persons concerned to ascertain the reasons for the measure taken in order to defend their rights and, second, to enable the European Union Courts to exercise their power to review the legality of the decision. The Boards of Appeal cannot, however, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see 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 15 and the case-law cited).

16 Moreover, it must be recalled that, according to settled case-law, the duty to state reasons is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue (see judgment of 10 September 2015, H&M Hennes & Mauritz v OHIM – Yves Saint Laurent (Handbags), T‑525/13, EU:T:2015:617, paragraph 16 and the case-law cited).

17 In the present case, the Board of Appeal, in paragraph 29 of the contested decision, stated that the comparison of the overall impressions produced by the designs at issue must be based on the contested design as registered and on the prior design as invoked and that it could take into account the evidence relating to the marketed products corresponding to those designs only for illustrative purposes to confirm or refute the conclusions already drawn from the representation of those designs, with the result that the applicant’s assertion that the prior design consists of a number of units must be rejected from the outset. In paragraph 36 of that decision, the Board of Appeal indicated that it could not ‘be deduced with certainty from the image that the legs of the prior design [stood] freely on the top of the control unit’ and added that ‘the fact that the lamp in the prior design might also be attached to a tripod cannot justify a different result, given the accessory nature of the tripod which [might] or [might] not be added to the plasma generator’.

18 Irrespective of whether or not such considerations are well founded, which, as is already stated in paragraph 16 above, is not concerned with the review of the duty to state reasons, it must be stated that the Board of Appeal set out in a sufficiently clear and unequivocal manner, in paragraphs 29 and 36 of the contested decision, the reasoning by which it found, first, that the photographs relied on by the applicant were not sufficient to call into question the graphic representation relied on by the other party to the proceedings before the Board of Appeal of EUIPO and, second, that the detachable nature of the lamp of the prior design was not such as to alter the similarity of its overall appearance with the contested design.

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

20 In the context of the second plea, the applicant claims, in essence, that the Board of Appeal incorrectly assessed, first, the degree of freedom of the designer and, second, the designs at issue, to find that the contested design lacked individual character.

22 Article 25(1) of Regulation No 6/2002 provides that a Community design may be declared invalid only in the cases referred to in that paragraph, inter alia, in the case (provided for in Article 25(1)(b) of that regulation) where it does not fulfil the requirements of Articles 4 to 9 of that regulation.

23 According to Article 6(1)(b) of Regulation No 6/2002, a registered Community design is to be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing the application for registration.

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

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

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

27 It is in the light of those factors, first, the sector to which the products in which the designs at issue are intended to be applied and the informed user of those designs, second, the designer’s degree of freedom and, third, the individual character of the contested design, which will be analysed in turn.

28 The Board of Appeal stated that the contested design was intended to be applied to apparatus and installations for medical or laboratory diagnosis, in particular, plasma generators. It found that the informed user was a person who purchased and used plasma generators and who has become informed on plasma generators by browsing through catalogues of such products or searching for them via any other means. According to the Board of Appeal, the informed user shows a relatively high degree of attention when using them.

29 It should be observed that those findings of the Board of Appeal are not disputed by the parties.

30 The Board of Appeal found, in paragraph 23 of the contested decision and on the basis of the images reproduced in paragraph 22 of that decision, that the designer had some freedom as regards the size and shape of the control unit (for example, rectangular, cuboid or round), the shape of the plasma tube (for example, one or two bulbs united between them or an elongated thin tube), the shape of the legs (a single elongated leg or two rectangles), as well as the connection and arrangement of those features (standalone or separate units). In paragraph 24 of that decision, the Board of Appeal, in essence, noted that the existence of that relative creative freedom was not called into question by the existence of constraints as a result of technical features, since the applicant did not adduce any evidence, in circumstances where the fact that a design follows a general design trend cannot be regarded as a factor which restricts the designer’s freedom.

31 The applicant claims that the cuboid shape of the control unit and the shape of the lamp consisting of two horizontally connected bulbs are common features of plasma generators which are predetermined by their technical functions, with the result that that shape is ‘completely common and standardized across the relevant market’.

32 In that respect, in the first place, the applicant argues that the Board of Appeal erred in finding that the control unit could be round or rectangular in shape, even though, as regards the round shape, the examples reproduced in paragraph 22 of the contested decision were not control units and the two-dimensional rectangular shape shown in the contested decision cannot correspond to the specific nature of a three-dimensional control unit.

33 In the second place, the applicant adds that the contested decision disregarded the descriptions of competing plasma generators and the resulting technical limitations related to those apparatus. It thus states that the ‘elongated thin tubes’ are intended for another use of the lamp and cannot be a substitution for the use of two bulbs, which allow the product to be used ‘hands-free’.

35 According to settled case-law, the designer’s degree of freedom in developing his or her design is established, inter alia, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (judgment of 10 November 2021, Sanford v EUIPO – Avery Zweckform (Labels), T‑443/20, EU:T:2021:767, paragraph 64 and the case-law cited, and 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 67).

36 However, the existence of certain trends in habitual lines, of commonly accepted habitual shapes and the existence of priority designs which include the same overall features as those of the designs at issue, do not constitute constraints related to features imposed by the technical function of a product or of an element of a product and do not meet the statutory requirements applicable to the products to which the designs at issue are applied (judgment of 29 October 2015, Roca Sanitario v OHIM – Villeroy & Boch (Single control handle faucet), T‑334/14, not published, EU:T:2015:817, paragraphs 48, 50 and 52).

37 In the present case, it must be observed that the evidence relied on by the applicant does not call into question the Board of Appeal’s finding, in paragraph 24 of the contested decision, according to which the applicant does not prove that there are technical constraints which would require their designer to systematically adopt a control unit with a cuboid shape or to which the lamp making up the device should be attached by two parallel arms. The applicant also did not substantiate its claim that the cuboid shape of the control unit and the shape of the lamp are more efficient and more economic.

38 It follows that the Board of Appeal could rightly find, in essence, in paragraphs 23 and 24 of the contested decision that, since the applicant had not proved that the technical requirements of the relevant technology had conferred a characteristic shape on the products, to which the contested design belonged and which has become common due to those requirements, the designer did not have restricted freedom but ‘a certain leeway with regard to the size and shape of the control unit’.

39 That finding is not called into question by the applicant’s argument that the Board of Appeal erred in having taken into consideration products of a round shape. Even supposing that the Board of Appeal erred in finding that the control units could be of a round shape, the series of photographs in paragraph 22 of the contested decision shows that plasma generators are not of a single shape, in particular, as regards the control unit, which may have a non-rectangular parallelepiped shape. Likewise, a lighting device may be composed of a single [bulb] or of two bulbs, be connected to a control unit by a single leg or be independent from that control unit.

40 As a preliminary point, regarding the taking into consideration of graphic representations relied on by the applicant, the Board of Appeal, in paragraph 29 of the contested decision, found that those graphic representations were not such as to refute the conclusions drawn from the overall impression produced by the graphic representations of the prior design.

41 As regards the comparison of the overall impressions produced by the designs at issue, the Board of Appeal, in paragraphs 33 to 38 of the contested decision, noted that the contested design and the prior design coincided on account, first, of the existence of a control unit in a cuboid shape, with a display panel on the left-hand side of that unit, second, of the existence of a transparent housing including a lamp consisting of two bulbs of the same size and arranged horizontally and, third, of the existence of two wide transparent legs which supported the housing containing the device’s lamp. Moreover, it found that the differences existing between the designs at issue in the present case and, in particular, those observed at the level of the control panels, those relating to the supports of the lamp and to the legs of the supports of that lamp, as well as the possible detachable nature of the prior design’s lamp were not sufficient to produce different overall impressions on the informed user.

43 In the first place, the applicant complains that the Board of Appeal found the graphic representations of the prior design to be of sufficient quality for the purposes of Articles 5 and 6 of Regulation No 6/2002, whereas those representations do not make it possible, according to the applicant, to establish whether the product represented consists of a single element and whether the lamp of that product is placed freely or is attached to the control unit. It argues that the contested design represents a standalone device, whereas the product represented in the prior design consists of separate elements which are not attached to each other, constituting a difference in size between the designs at issue which should have been taken into account by the Board of Appeal.

44 In the second place, the applicant submits, in essence, that the Board of Appeal erred in finding that the differences relating to the screens of each of the designs at issue were insufficient to produce a different overall impression. To that effect, it states that the control panel of the prior design differs substantially from that of the contested design, in that, unlike the contested design which consists solely of a display screen with digital buttons, the prior design consists not only of a display screen but also of a thumbwheel, a number of cube-shaped manual buttons and LED indicator lights.

46 According to settled case-law, the individual character of a design results from an overall impression of differences or lack of ‘déjà vu’, from the point of view of an informed user, in relation to the earlier design relied on, without taking account of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions (see judgment of 16 February 2017, Antrax It v EUIPO – Vasco Group (Thermosiphons for radiators for heating), T‑828/14 and T‑829/14, EU:T:2017:87, paragraph 53 and the case-law cited).

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

48 In addition, in the assessment of the overall impression of the designs at issue, it is not incorrect to take into account the products actually marketed and corresponding to those designs for the purpose of confirming or refuting the findings already made from the representation of those designs. It is, however, only appropriate to take into account the products actually marketed, for illustrative purposes when making the comparison of the overall impressions, to the extent that the products correspond to the designs as registered (see, to that effect, judgments of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 74, and of 10 November 2021, Eternit v EUIPO – Eternit Österreich (Building panels), T‑193/20, EU:T:2021:782, paragraphs 29 and 30).

49 Lastly, according to settled case-law, the relatively high level of attention of the informed user does not imply that he or she is able to distinguish, beyond the experience which he or she has gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product’s technical function from those which are arbitrary (see judgment of 15 October 2015, Promarc Technics v OHIM – PIS (Part of door), T‑251/14, not published, EU:T:2015:780, paragraph 49 and the case-law cited).

50 In the present case, it must be observed that, as the Board of Appeal correctly noted, the two designs at issue are similar in appearance as regards the existence, first, of a cuboid control unit, second, of a transparent housing including a lamp in the shape of two horizontally united bulbs of the same size and arranged identically and also of transparent vertically placed ‘wide legs’.

51 In the first place, the applicant criticises the Board of Appeal for having regarded as being sufficient the two graphic representations of the prior design relied on by the other party to the proceedings before the Board of Appeal of EUIPO, whereas they do not make it possible to establish that the product represented consists of a single element.

52 First, it must be borne in mind that, under the system laid down by Regulation No 6/2002, appearance is the decisive factor for a design and that the law on designs seeks to protect the appearance of a product and not its conception or its features. It follows that the individual character of a design must be assessed in the light of the appearance of the product represented by that design and not in the light of the technical features of the product as such (see judgment of 22 September 2021, T i D kontrolni sistemi v EUIPO – Sigmatron (Signalling apparatuses and devices), T‑503/20, not published, EU:T:2021:613, paragraph 55 and the case-law cited). Consequently, as the Board of Appeal correctly and, in essence, observed, in paragraph 29 of the contested decision, in addition to the fact that the comparison of the designs at issue must be based on the contested design as registered and on the prior design as invoked, the protection of designs is intended to protect the appearance of the product, with the result that the use of those products can serve only illustrative purposes.

53 Second, it must be recalled that the overall impression produced by a design, referred to in Article 6(1)(b) of Regulation No 6/2002, concerns a visual overall impression produced by the visible features of that design (see judgment of 22 September 2021, Signalling apparatuses and devices, T‑503/20, not published, EU:T:2021:613, paragraph 56 and the case-law cited).

54 The views which have not been provided can be taken into account only in so far as they may be deduced from the other views (see, to that effect, judgment of 21 May 2015, Senz Technologies v OHIM – Impliva (Umbrellas), T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 80 (not published)). Moreover, it should be emphasised that so far as the assessment of a design’s individual character for the purposes of Article 6 of Regulation No 6/2002 is concerned, the regulation does not require the graphic representation of a design in respect of which registration has been sought or that of a design which has already been made available to the public to include views reproducing the tool in question in all possible positions, so long as that graphic representation allows the shape and the features of the design to be identified (see judgment of 29 April 2020, Bergslagernas Järnvaru v EUIPO – Scheppach Fabrikation von Holzbearbeitungsmaschinen (Wood-splitting tool), T‑73/19, not published, EU:T:2020:157, paragraph 42 and the case-law cited).

55 Since the graphic representations of the prior design, on which the other party to the proceedings before the Board of Appeal of EUIPO relied in the administrative phase, do not make it possible to establish whether the product represented may be separated into a number of elements and whether the lamp of that product may be used separately from the control unit, the feature relied on by the applicant, according to which the product represented in the prior design consists of two separate elements, is not visible on the graphic representations of that design, such a feature cannot be taken into consideration in the comparison of the overall impressions produced by the designs at issue.

56 It follows that the Board of Appeal was entitled, without making an error of assessment, to find, in paragraph 36 of the contested decision, that the graphic representations of the prior design did not make it possible to deduce that the legs of that design stood freely on top of the control unit.

57 In the second place, as regards the control panels, it must be stated that those panels occupy a similar place on each of the designs at issue, namely to the left of those units, and are of equally similar size on each of those units.

58 The differences relied on by the applicant as regards those control panels, namely the presence of a recessed screen in the control unit, the smaller size than that of the contested design and the presence of manual buttons as regards the prior design, are not in themselves sufficient to create a dissimilar overall impression between the two designs at issue.

59 The finding referred to in paragraph 58 above is all the more justified given that the control panels have a technical function and therefore play a negligible role in the overall impression made on the informed user.

60 It follows that the Board of Appeal did not err in its assessment in finding that the differences existing at the level of the display panel were insufficient to produce a different overall impression between the two designs at issue and that the similarities existing between those designs meant that they produced a similar overall impression on the informed user.

61 In the light of the foregoing, the second plea must be rejected and, consequently, the action must be dismissed in its entirety.

62 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.

63 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Praha Alfa-Med v EUIPO - Rifetech () and installations pour le diagnostic medical ou de laboratoire) (Community design - Judgment) [2024] EUECJ T-614/23 (13 November 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T61423.html Cite as: [2024] EUECJ T-614/23, ECLI:EU:T:2024:799, EU:T:2024:799

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