judgment of the general court (sixth chamber) · 2015. 9. 11. · yves saint laurent sas,...

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JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

10 September 2015 (*)

(Community design — Invalidity proceedings — Registered Community design representinghandbags — Earlier design — Ground for invalidity — Individual character — Article 6 of

Regulation (EC) No 6/2002 — Obligation to state reasons)

In Case T-526/13,

H&M Hennes & Mauritz BV & Co. KG, established in Hamburg (Germany), represented byH. Hartwig and A. von Mühlendahl, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before theGeneral Court, being

Yves Saint Laurent SAS, established in Paris (France), represented by N. Decker, lawyer,

ACTION brought against the decision of the Third Board of Appeal of OHIM of 8 July 2013(Case R 208/2012-3), relating to invalidity proceedings between H&M Hennes & Mauritz BV &Co. KG and Yves Saint Laurent SAS,

THE GENERAL COURT (Sixth Chamber),

composed of S. Frimodt Nielsen, President, F. Dehousse and A.M. Collins (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 30 September 2013,

having regard to the response of OHIM lodged at the Court Registry on 20 January 2014,

having regard to the response of the intervener lodged at the Court Registry on 24 January 2014,

having regard to the fact that no application for a hearing was submitted by the parties within theperiod of one month from notification of closure of the written procedure, and having thereforedecided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oralprocedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,

gives the following

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Judgment

Background to the dispute

1 On 30 October 2006, the intervener, Yves Saint Laurent SAS, filed an application for registration ofa Community design (‘the contested design’) with the Office for Harmonisation in the InternalMarket (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 6/2002 of12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

2 The contested design, which is intended to be applied to ‘handbags’ in Class 03-01 of the LocarnoAgreement Establishing an International Classification for Industrial Designs of 8 October 1968, asamended, is represented according to six views as follows:



3 The contested design was registered under the number 613294-0002 and published in CommunityDesigns Bulletin No 135/2006 of 28 November 2006.

4 On 3 April 2009, the applicant, H&M Hennes & Mauritz BV & Co. KG, filed with OHIM anapplication for a declaration of invalidity in respect of the contested design, based on Articles 4 to 9of Regulation No 6/2002 and on Article 25(1)(c) to (f) or (g) of that regulation. In its application fora declaration of invalidity, the applicant confined itself to claiming that the contested design had noindividual character within the meaning of Article 6 of that regulation.

5 In support of its application for a declaration of invalidity, the intervener invoked, in order tosubstantiate the alleged lack of individual character of the contested design, the earlier designreproduced below:



6 By decision of 4 November 2011, the Cancellation Division rejected that application for adeclaration of invalidity.

7 On 25 January 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 55 to 60of Regulation No 6/2002, against the decision of the Cancellation Division.



8 By decision of 8 July 2013 (‘the contested decision’), the Third Board of Appeal of OHIMdismissed the appeal. After finding that the documents submitted by the applicant were capable ofproving that the handbag which was the subject-matter of the earlier design had been made availableto the public, the Board of Appeal examined the individual character of the contested design. Itdefined the informed user of that design as an informed woman, who was interested, as a possibleuser, in handbags. According to the Board of Appeal, the two designs at issue had characteristics incommon, in particular their upper contours and their handles in the form of straps attached to thebody of the bags by a system of rings reinforced by rivets, but the differences as regards the shape,structure and surface finish played a decisive role in the overall impression produced by thosegoods. In that regard, the Board of Appeal found that the degree of freedom of the designer washigh, but that, in the present case, it did not, from the point of view of the informed user, cancel outthe significant differences in shape, structure and surface finish which differentiated the two bags.

Forms of order sought

9 The applicant claims that the Court should:

– annul the contested decision;

– declare the contested design invalid;

– order the intervener to pay the costs, including those incurred by the applicant before theBoard of Appeal.

10 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

11 The intervener contends that the Court should:

– reject Annex A.6 to the application as inadmissible;

– dismiss the action;

– confirm the contested decision;

– declare the contested design valid;

– order the applicant to pay the costs, including those incurred by the intervener before OHIM.

Law

12 In support of the action, the applicant relies, in essence, on a single plea in law, alleginginfringement of Article 6 of Regulation No 6/2002, which is divided into two parts. By the first part,it submits that it was erroneously concluded, and without sufficient reasons being given, in thecontested decision that the high degree of freedom of the designer did not have any impact on thefinding that the designs at issue produced a different overall impression on the informed user. By thesecond part, it claims that it was erroneously concluded in the contested decision, even though it



accepted that the designer had a high degree of freedom, that the differences between the designs atissue were significant enough to create a different overall impression.

13 In the context of the first part of the single plea, the applicant claims that the statement of reasonsfor the contested decision is insufficient. The Court deems it appropriate to examine that claimseparately before analysing the arguments on the substance.

14 OHIM and the intervener dispute the applicant’s arguments.

The claim that the statement of reasons is insufficient

15 It must be borne in mind that, under Article 62 of Regulation No 6/2002, decisions of OHIM muststate the reasons on which they are based. That duty to state reasons has the same scope as thatunder Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shownclearly and unequivocally. That duty has two purposes: to allow interested parties to know thejustification for the measure taken so as to enable them to protect their rights and to enable theCourts of the European Union to exercise their power to review the legality of the decision. TheBoards of Appeal cannot, however, be required to provide an account that follows exhaustively andone by one all the lines of reasoning articulated by the parties before them. The reasoning maytherefore be implicit, on condition that it enables the persons concerned to know the reasons for theBoard of Appeal’s decision and provides the competent Court with sufficient material for it toexercise its review (see judgment of 25 April 2013 in Bell & Ross v OHIM — KIN (Wristwatchcase), T-80/10, EU:T:2013:214, paragraph 37 and the case-law cited).

16 It must also be borne in mind that the duty to state reasons in decisions is an essential proceduralrequirement 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. The reasoning of a decisionconsists in a formal statement of the grounds on which that decision is based. If those groundscontain errors, those errors will affect the substantive legality of the decision, but not the statementof reasons in it, which may be adequate even though it sets out reasons which are incorrect (seejudgment in Wristwatch case, cited in paragraph 15 above, EU:T:2013:214, paragraph 38 and thecase-law cited).

17 In the present case, it is apparent from the contested decision that the Board of Appeal found thatthe differences between the designs at issue were so marked that the degree of freedom of thedesigner could not affect the finding as regards the different overall impressions produced by thosedesigns. First of all, the Board of Appeal found, in paragraph 42 of the contested decision, that ‘thetwo bag designs [at issue] [did] indeed have features in common[,] but [that], for the reasons that[had] already been stated [in paragraphs 30 to 34], the differences as regards the shape, structure andsurface finish of the bags [were] those that [had] a decisive influence on the overall impression fromthe point of view of the informed user’. Next, it pointed out, in paragraph 44 of the contesteddecision, that the degree of freedom of the designer was a factor which had to be taken into accountwhen assessing the individual character of the design in accordance with Article 6(2) of RegulationNo 6/2002 and served to reinforce or moderate the user’s perception in that regard. Lastly, itacknowledged, in paragraph 45 of that decision, that the designer’s degree of freedom, in thecontext of fashion items like handbags, was high, before stating that ‘that acknowledgment [couldnot] automatically imply, contrary to what the [applicant] seem[ed] to state, that the [contested]handbag [design] produced[ed] the same overall impression as the handbag which [was] the subject-matter of the earlier design’. It stated that ‘the starting point for the assessment of that overallimpression, pursuant to Article 6(1) of [Regulation No 6/2002 was] the informed user’, that, ‘in thepresent case, that high degree of freedom [would] not in any way cancel out, from the point of view



of the informed user, the significant differences in shape, structure and surface finish whichdifferentiate[d] the two bags’ and that, ‘[i]n the case in point, therefore, the high degree of freedomof the designer [was] in no way incompatible … with the finding that the two bags produce[d] adifferent overall impression’.

18 It follows that, contrary to what the applicant claims, the Board of Appeal set out in a sufficientlyclear and unequivocal manner the reasoning by which it found that, in the present case, the highdegree of freedom of the designer did not have any impact on the finding that the designs at issueproduced a different overall impression on the informed user. The claim that the statement ofreasons is insufficient must therefore be rejected as unfounded.

The merits

19 As both parts of the single plea in law concern alleged errors made by the Board of Appeal in theapplication of Article 6 of Regulation No 6/2002 to the present case, the Court considers that it isappropriate to examine them together.

20 Under Article 6(1)(b) of Regulation No 6/2002, a registered Community design is to be consideredto have individual character if the overall impression it produces on the informed user differs fromthe overall impression produced on such a user by any design which has been made available to thepublic before the date of filing the application for registration or, if a priority is claimed, the date ofpriority. Article 6(2) of that regulation states that, in assessing individual character, the degree offreedom of the designer in developing the design is to be taken into consideration.

21 It is apparent from recital 14 in the preamble to Regulation No 6/2002 that, when assessing whethera design has individual character, account should be taken of the nature of the product to which thedesign is applied or in which it is incorporated, and in particular the industrial sector to which itbelongs and the degree of freedom of the designer in developing the design. In the present case, thecontested design, like the earlier design, represents a handbag.

22 Furthermore, it is apparent from Article 6(1)(b) of Regulation No 6/2002 and settled case-law thatthe assessment of whether a design has individual character is determined by the overall impressionthat it produces on the informed user (see judgment of 25 October 2013 in Merlin and Others vOHIM — Dusyma (Game), T-231/10, EU:T:2013:560, paragraph 28 and the case-law cited).

23 In the present case, the Board of Appeal defined the concept of the informed user, in relation towhom the individual character of the contested design must be assessed, as an informed womanwho is interested, as a possible user, in handbags.

24 As regards the level of attention of the informed user, it must be borne in mind, in line with whatthe Board of Appeal stated, that, according to the case-law, the concept of the informed user may beunderstood as referring, not to a user of average attention, but to a particularly observant one, eitherbecause of his personal experience or his extensive knowledge of the sector in question (judgmentof 20 October 2011 in PepsiCo v Grupo Promer Mon Graphic, C-281/10 P, ECR, EU:C:2011:679,paragraph 53).

25 It is also apparent from the case-law that, although the informed user is not the well-informed andreasonably observant and circumspect average consumer who normally perceives a design as awhole and does not proceed to analyse its various details, he is also not an expert or specialistcapable of observing in detail the minimal differences that may exist between the designs at issue.Thus, the qualifier ‘informed’ suggests that, without being a designer or a technical expert, the user



knows the various designs which exist in the sector concerned, possesses a certain degree ofknowledge with regard to the features which those designs normally include, and, as a result of hisinterest in the products concerned, shows a relatively high degree of attention when he uses them(judgment in PepsiCo v Grupo Promer Mon Graphic, cited in paragraph 24 above, EU:C:2011:679,paragraph 59).

26 The Board of Appeal found that the informed user in the present case was neither an averagepurchaser of handbags nor a particularly attentive expert, but someone in between who is familiarwith the product in accordance with the level of attention established by the case-law cited inparagraphs 24 and 25 above.

27 The applicant does not dispute the Board of Appeal’s findings regarding the definition and the levelof attention of the informed user, which must be confirmed.

28 As regards the degree of freedom of the designer of a design, it is apparent from the case-law thatthat is determined, inter alia, by the constraints of the features imposed by the technical function ofthe product or an element thereof, or by statutory requirements applicable to the product. Thoseconstraints result in a standardisation of certain features, which will thus be common to the designsapplied to the product concerned (judgment of 9 September 2011 in Kwang Yang Motor v OHIM —Honda Giken Kogyo (Internal combustion engine), T-11/08, EU:T:2011:447, paragraph 32, andjudgment in Wristwatch case, cited in paragraph 15 above, EU:T:2013:214, paragraph 112).

29 Therefore, the greater the designer’s freedom in developing a design, the less likely it is that minordifferences between the designs at issue will be sufficient to produce different overall impressionson an informed user. Conversely, the more the designer’s freedom in developing a design isrestricted, the more likely it is that minor differences between the designs at issue will be sufficientto produce different overall impressions on an informed user. Consequently, if the designer enjoys ahigh degree of freedom in developing a design, that reinforces the conclusion that designs that donot have significant differences produce the same overall impression on an informed user(judgments in Internal combustion engine, cited in paragraph 28 above, EU:T:2011:447,paragraph 33, and Wristwatch case, cited in paragraph 15 above, EU:T:2013:214, paragraph 113).

30 In the present case, the Board of Appeal correctly found that, in the context of fashion items likehandbags, the designer’s degree of freedom was high. Moreover, the applicant does not contest thatassessment. However, it submits, in essence, that the Board of Appeal erred inasmuch as the‘freedom of the designer’ test should have been an integral part of the analysis of the individualcharacter of the contested design and that the Board of Appeal inverted the steps involved in thatanalysis. Accordingly, the applicant maintains that the Board of Appeal’s approach of, first,comparing the two designs at issue in order to conclude that they did not produce the same overallimpression on the informed user and, second, examining the argument relating to the freedom of thedesigner, is incorrect. Furthermore, it takes the view that the differences between the designs at issueare not significant enough to produce a different overall impression on the informed user.

31 First, it must be stated that a ‘two-step test’, such as advocated by the applicant, is not required byeither the applicable legislation or the case-law.

32 The text of Article 6 of Regulation No 6/2002, concerning the assessment of individual character,lays down, in paragraph 1 thereof, the criterion of the overall impression produced by the designs atissue and states, in paragraph 2, that the degree of freedom of the designer must be taken intoconsideration for those purposes (see paragraph 20 above). It is apparent from those provisions, andin particular from Article 6(1)(b) of Regulation No 6/2002, that the assessment of the individual



character of a Community design is the result, in essence, of a four-stage examination. Thatexamination consists in deciding upon, first, the sector to which the products in which the design isintended to be incorporated or to which it is intended to be applied belong; second, the informeduser 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 in the comparison, direct ifpossible, of the designs; third, the designer’s degree of freedom in developing his design; and,fourth, the outcome of the comparison of the designs at issue, taking into account the sector inquestion, the designer’s degree of freedom and the overall impressions produced on the informeduser by the contested design and by any earlier design which has been made available to the public(see, to that effect, judgment of 7 November 2013 in Budziewska v OHIM — Puma (Boundingfeline), T-666/11, EU:T:2013:584, paragraph 21 and the case-law cited).

33 As is apparent from the case-law and from the case-law cited in paragraph 29 above and referred toby the applicant itself, the factor relating to the designer’s degree of freedom may ‘reinforce’ (or, acontrario, moderate) the conclusion as regards the overall impression produced by each design atissue. It is not apparent either from the alleged pattern which the applicant identifies in the case-lawor even from the extract from the judgment of the Bundesgerichtshof (Federal Court of Justice,Germany) reproduced in paragraph 29 of the application that the assessment of the designer’sdegree of freedom constitutes a preliminary and abstract step in the comparison of the overallimpression produced by each design at issue.

34 It is also necessary to reject all of the claims relating to paragraph 44 of the contested decision thatthe applicant puts forward in paragraph 33 of the application. Those claims are based, in part, on amisreading of that paragraph and are, in any event, unsubstantiated. The Board of Appeal stated thefollowing in paragraph 44 of the contested decision:

‘As regards the degree of freedom of the designer, the Board notes that it is indeed a factor whichmust be taken into consideration pursuant to Article 6(2) of [Regulation No 6/2002] when assessingindividual character. … However, no “reciprocity” exists either in itself or automatically. In thejudgment [in Internal combustion engine, cited in paragraph 28 above, EU:T:2011:447] which the[applicant] cites in support of its argument, the General Court stated that if the designer enjoys ahigh degree of freedom in developing a design, that “reinforces” the conclusion that designs that donot have significant differences produce the same overall impression on an informed user … Thedegree of freedom cannot therefore, on its own, give rise to an outcome as regards the assessment ofindividual character. That assessment must be based on the overall impression as Article 6(1) of[Regulation No 6/2002] states. Although it is certainly true, therefore, that the degree of freedom ofthe designer must be taken into consideration, the starting point for the assessment of the individualcharacter of a design must, in any event, be the perception of the informed user. In other words, thedegree of freedom of the designer must serve to temper the judgment — in the sense, as the GeneralCourt states, of “reinforcing” it or, on the contrary, of moderating it — arrived at on the basis of theperception of the informed user. The degree of freedom of the designer is therefore not, contrary towhat the [applicant] seems to state, the starting point for the assessment of individual character but,as Article 6(2) of [Regulation No 6/2002] states, an aspect which must be “taken into consideration”when analysing the perception of the informed user.’

35 The Board of Appeal did not err in stating that the factor relating to the freedom of the designercould not on its own determine the assessment of the individual character of a design, but that itwas, however, a factor which had to be taken into consideration in that assessment. Consequently, itcorrectly found that that factor was a factor which made it possible to moderate the assessment ofthe individual character of the contested design, rather than an independent factor which determinedhow different two designs have to be for one of them to have individual character.


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36 Second, as regards the comparison of the overall impressions produced by the contested design andby the earlier design, the Board of Appeal stated, in paragraph 30 of the contested decision, thatthey differed as to three features which decisively influenced their overall visual appearance, namelythe overall shape, structure and surface finish of the bag.

37 First of all, it pointed out that the body of the contested design had a perceptibly rectangular shape,on account of the presence of three straight lines that marked the sides and the base of the bag,which gave the impression of a relatively angular object. By contrast, the body of the earlier designhad, according to the Board of Appeal, curved sides and a curved base and its silhouette wasdominated by an impression of roundness. Second, the Board of Appeal took the view that the bodyof the contested design looks as if it is made from a single piece of leather without any visibledivision or seams except for on a short length at the lower corners. By contrast, the front and backof the earlier design were, according to the Board of Appeal, divided into three sections by seams,namely a curved upper section delimited by a collar and two lower sections of equal size delimitedby a vertical seam. Third, the Board of Appeal stated that the surface finish of the contested designwas totally smooth, apart from two faint seams at the lower corners. By contrast, the surface of theearlier design was, according to the Board of Appeal, covered with pronounced and raiseddecorative motifs, namely a collar edged with gatherings in the upper part of the bag, a verticalseam dividing the bag into two sections and pleats at the bottom of the bag. In respect of each ofthose three factors, the Board of Appeal concluded that the differences between the designs at issuewere significant and therefore such as to markedly influence the overall impression of the informeduser. In the case of the contested design, the Board of Appeal found that the impression producedwould be that of a bag design characterised by classic lines and a formal simplicity whereas, in thecase of the earlier design, the impression would be that of a more ‘worked’ bag, characterised bycurves, the surface of which is adorned with ornamental motifs.

38 As regards the features that are common to the two designs at issue, namely their upper contour andthe presence of a handle in the form of a strap or straps attached to the body by a system of ringsreinforced by rivets, the Board of Appeal took the view that they did not suffice to confer on them,in the eyes of an informed user, the same overall impression. It stated in particular that the way inwhich those rings were used in the two bags was very different in that they were very visible and letlight through in the contested design, which was not the case with regard to the earlier design, thisbeing a detail which would be obvious to the informed user.

39 In that regard, it must be borne in mind that the assessment of the overall impression produced by adesign on the informed user includes the manner in which the product represented by that design isused (see judgment of 21 November 2013 in El Hogar Perfecto del Siglo XXI v OHIM — WenfInternational Advisers (Corkscrew), T-337/12, ECR, EU:T:2013:601, paragraph 46 and the case-law cited). In the present case, it must be pointed out that the straps and the handle of the designs atissue manifestly lend themselves to different uses inasmuch as the contested design represents a bagto be carried solely by hand, whereas the earlier design represents a bag to be carried on theshoulder.

40 In that context and in the light of the foregoing considerations, it must be held that the differencesbetween the designs at issue are significant and that the similarities between them are insignificantin the overall impression which they produce. Consequently, the Board of Appeal’s assessment mustbe confirmed inasmuch as it found that the contested design produced an overall impression on theinformed user which was different from that produced by the earlier design.

41 The foregoing assessment cannot be called into question by the applicant’s claims.



42 By a first claim, alleging that there was no contextual analysis of the features of the bags at issue,the applicant submits that the Board of Appeal did not examine the similarities between the designsat issue, identify the differences between them or analyse whether those differences or similaritieswere minor, average or major, in order, having regard to the high degree of freedom of the designer,to draw conclusions in respect of the overall impression produced. That claim must be rejected ashaving no factual basis on account of the considerations set out in paragraphs 36 to 38 above, whichdescribe the progressive stages of the analysis carried out by the Board of Appeal in paragraphs 30to 42 of the contested decision.

43 By a second claim, the applicant submits that the differences between the designs at issue, whilenot insignificant, are not, however, significant enough to create a different overall impression on theinformed user. According to the applicant, the contested decision is silent in that respect anddisregards the criteria established by the case-law.

44 It must be stated that that claim, assuming that it is admissible, is wholly unfounded. First, it isclear from paragraphs 37 to 42 of the contested decision that the Board of Appeal carefullyexamined the elements common to both of the designs at issue before concluding that thedifferences between them prevailed in the overall impression produced, a finding which has beenconfirmed by the Court (see paragraph 40 above). Second, as is apparent from paragraph 42 above,the Board of Appeal correctly applied the criteria established by the case-law in the present case.

45 The action must therefore be dismissed in its entirety, without it being necessary to rule on theadmissibility of the third head of claim submitted by the applicant and the admissibility of the thirdand fourth heads of claim submitted by the intervener, as well as the admissibility of an annex to theapplication, which the intervener calls into question.

Costs

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

47 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance withthe forms of order sought by OHIM and the intervener.

48 In addition, the intervener has contended that the applicant should be ordered to pay the costswhich it incurred in the proceedings before OHIM. In that regard, it must be borne in mind that,under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for thepurposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs.However, that is not the case with regard to the costs incurred for the purposes of proceedingsbefore the Cancellation Division. Accordingly, the intervener’s request that the applicant, havingbeen unsuccessful, be ordered to pay the costs of the administrative proceedings before OHIM canbe allowed only as regards the costs necessarily incurred by the intervener for the purposes of theproceedings before the Board of Appeal (see judgment in Wristwatch case, cited in paragraph 15above, EU:T:2013:214, paragraph 164 and the case-law cited).

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:



1. Dismisses the action;

2. Orders H&M Hennes & Mauritz BV & Co. KG to pay the costs, including thoseincurred by Yves Saint Laurent SAS in the course of the proceedings before the Board ofAppeal of the Office for Harmonisation in the Internal Market (Trade Marks andDesigns) (OHIM).

Frimodt Nielsen Dehousse Collins

Delivered in open court in Luxembourg on 10 September 2015.

[Signatures]

* Language of the case: English.

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