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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> deluxe holding v EUIPO - Piffany Copenhagen (Bougies electriques) (Community design - Judgment) [2025] EUECJ T-1158/23 (12 March 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T115823.html Cite as: [2025] EUECJ T-1158/23 |
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JUDGMENT OF THE GENERAL COURT (Third Chamber)
12 March 2025 (*)
( Community design - Invalidity proceedings - Registered Community design representing electric candles - Ground for invalidity - Lack of individual character - Degree of freedom of the designer - No different overall impression - Articles 4 and 6 and Article 25(1)(b) of Regulation (EC) No 6/2002 - Rights of the defence - Scope of the examination carried out by the Board of Appeal )
In Case T‑1158/23,
deluxe holding ApS, established in Kolding (Denmark), represented by J. Løje, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Piffany Copenhagen ApS, established in Helsinge (Denmark), represented by J. Petersen, lawyer,
THE GENERAL COURT (Third Chamber),
composed of P. Škvařilová-Pelzl (Rapporteur), President, I. Nõmm and D. Kukovec, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 3 December 2024,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, deluxe holding ApS, seeks annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 October 2023 (Case R 810/2022-3) (‘the contested decision’).
Background to the dispute
2 On 3 April 2021, the intervener, Piffany Copenhagen ApS, submitted to EUIPO, pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), an application for a declaration of invalidity of the registered Community design resulting from an application filed on 10 March 2020 which is represented in the following five views:
3 The goods to which the design, invalidity of which was sought, is intended to be applied fall within Class 26-04 within the meaning of the Locarno Agreement of 8 October 1968 Establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: ‘Electric candles [lighting]’.
4 The ground relied on in support of the application for a declaration of invalidity was that referred to in Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Articles 4 and 6 of that regulation. The intervener submitted, inter alia, that the contested design lacked individual character in relation to the two prior designs for electric candles, ‘UYUNI’ (‘prior design D1’) and ‘SOMPEX’ (‘prior design D2’), previously disclosed and represented as follows:
– prior design D1:
– prior design D2:
5 By decision of 21 March 2022, the Invalidity Division upheld the application for a declaration of invalidity on the ground that the contested design lacked individual character, within the meaning of Article 6 of Regulation No 6/2002, in relation to prior design D2. More specifically, the Invalidity Division considered, first, that there was no evidence of disclosure of prior design D1, within the meaning of Article 7(1) of Regulation No 6/2002, unlike prior design D2, for which it considered that there was sufficient evidence of disclosure. Secondly, it held, in essence, that there was a high degree of freedom of design, since there were no technical or other restrictions resulting from the function of the product, and that the evidence adduced by the proprietor of prior design D2 was insufficient to establish that the state of the art in the field of electric candles was saturated. Thirdly, the Invalidity Division considered that the contested design and prior design D2 produced similar overall impressions on the informed user.
6 On 11 May 2022, the applicant brought an action under Articles 55 to 60 of Regulation No 6/2002 against the decision of the Invalidity Division.
7 By the contested decision, the Third Board of Appeal dismissed the appeal. It considered, as a preliminary remark, in paragraph 21 of the contested decision, that it was impossible to examine the appeal solely on the basis of prior design D2, which, in its view, did not make it possible to discern all the details of its upper part, and that it was appropriate to begin its examination on the basis of prior design D1. In the present case, first, the Board of Appeal held, contrary to the view of the Invalidity Division, that the disclosure of prior design D1 was proved by the new evidence submitted for the first time before it. Secondly, in paragraph 37 of the contested decision, it held that the freedom of the designer in developing electric candles was high. Thirdly, in paragraph 51 of the contested decision, the Board of Appeal concluded that the contested design lacked individual character, since a comparison of the contested design with prior design D1 would show that the overall impressions produced by the two designs at issue differed only in their upper parts, which consisted of a circular depression with a resin disc and a flat part respectively. In that regard, the Board of Appeal argued that that difference, covering a minor part of the designs at issue, would not be such as to individualise them sufficiently in relation to their common features, even if the market for electric candles were saturated and an informed user would be more sensitive to the differences in detail of the designs at issue. Fourthly, having found that the contested design lacked individual character in relation to prior design D1, the Board of Appeal considered that there was no longer any need to rule on the novelty of the latter or of prior design D2.
Forms of order sought
8 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
9 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
10 The intervener contends that the Court should dismiss the action.
11 At the hearing, the intervener added to the form of order it sought by requesting that the applicant be ordered to pay the costs.
Law
12 In support of its action, the applicant puts forward, in essence, two pleas in law alleging, first, infringement of Article 6(1) and (2) of Regulation No 6/2002 and, secondly, breach of its rights of defence.
13 The Court considers that it is necessary to begin by examining the second plea in law.
The second plea in law, alleging breach of the applicant’s rights of defence
14 The applicant complains, in essence, that the Board of Appeal based the contested decision on prior design D1 instead of prior design D2, preventing it from anticipating the grounds of examination adopted in that decision and from effectively preparing its defence. According to the applicant, the fact that it chose to base its examination on a prior design different from that adopted by the Invalidity Division, and thereby adopted a different line of reasoning, should have led the Board of Appeal to remit the case to the Invalidity Division, in accordance with Article 60(1) of Regulation No 6/2002. In so doing, the Board of Appeal breached its rights of defence and, more specifically, its right to be heard.
15 EUIPO contests the applicant’s arguments.
16 Under Article 60(1) of Regulation No 6/2002, the Board of Appeal may either exercise the powers of the department which took the contested decision or remit the case to that department for further prosecution. It follows from that provision and from the scheme of that regulation that in ruling on an appeal the Board of Appeal has the same powers as the department which was responsible for the decision appealed and that its examination concerns the dispute as a whole as it stands on the date of its ruling (see judgment of 25 April 2013, Bell & Ross v OHIM – KIN (Wristwatch case), T‑80/10, not published, EU:T:2013:214, paragraph 43 and the case-law cited).
17 It is also clear from that provision, as well as from well-established case-law, that there is continuity in terms of their functions between the different departments of EUIPO, namely the examiner, the Opposition Division, the Administration of Trade Marks and Designs and Legal Division and the Invalidity Division, on the one hand, and the Boards of Appeal, on the other (see judgments of 25 April 2013, Wristwatch case, T‑80/10, not published, EU:T:2013:214, paragraph 44 and the case-law cited, and of 24 May 2023, Glaxo Group v EUIPO – Cipla Europe (Shape of an inhaler), T‑477/21, not published, EU:T:2023:280, paragraph 45 and the case-law cited).
18 It follows from that functional continuity that, in the review of decisions taken by the bodies of EUIPO hearing the application at first instance that the Boards of Appeal must undertake, the Boards of Appeal are required to base their decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the department which heard the application at first instance or in the appeal (see judgments of 23 September 2003, Henkel v OHIM – LHS (UK) (KLEENCARE), T‑308/01, EU:T:2003:241, paragraph 32 and the case-law cited, and of 10 July 2006, La Baronia de Turis v OHIM – Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, EU:T:2006:197, paragraph 58 and the case-law cited).
19 It follows that, by virtue of the effect of the action brought before it, the Board of Appeal is called upon to carry out a full re-examination of the merits of the application for a declaration of invalidity, both in law and in fact (see, to that effect, judgment of 14 June 2011, Sphere Time v OHIM – Punch (Watch attached to a lanyard), T‑68/10, EU:T:2011:269, paragraph 13).
20 The review by the Boards of Appeal is therefore not confined to a review of the legality of the contested decision, but, given the devolved nature of the appeal procedure, entails a new assessment of the whole dispute, the Boards of Appeal being required to examine in full the initial application and to take account of the evidence submitted in due time (judgment of 10 July 2006, LA BARONNIE, T‑323/03, EU:T:2006:197, paragraph 59).
21 In the present case, first, it is not disputed that prior design D1 and the ground of invalidity referred to in Article 25(1)(b) of Regulation No 6/2002 were relied on by the intervener during the proceedings before the Invalidity Division. Thus, prior design D1 formed part of the subject matter of the dispute in the same way as prior design D2.
22 Secondly, it is apparent from the EUIPO file, from Annexes A.8 to A.11 to the application and from paragraph 15 of the contested decision that the Rapporteur of the Board of Appeal sent a communication to the parties, on the basis of Article 59(2) of Regulation No 6/2002, in which he informed them that, in the context of a preliminary examination, it appeared, in essence, to be difficult, if not impossible, to examine the appeal on the basis of prior design D2 alone. In that respect, the Rapporteur invited the parties to submit their observations on the consideration and disclosure of prior design D1, which they did in their written submissions.
23 Thirdly, the Board of Appeal, in accordance with the case-law cited in paragraphs 16 to 20 above, did not err in law in deciding to begin the examination of the appeal with prior design D1. Furthermore, it is apparent from paragraphs 23 to 33 of the contested decision that the Board of Appeal rightly took into account, in the context of that examination, all the evidence before it, including the evidence submitted for the first time before it, in order to examine the ground of invalidity relied on in relation to prior design D1.
24 Fourthly and furthermore, it should be borne in mind that the Board of Appeal is free to exercise its discretion, in accordance with Article 60(1) of Regulation No 6/2002, and to decide whether to carry out a full review or to remit the case to the body which adopted the decision contested before it.
25 In those circumstances, the applicant’s argument that the Board of Appeal should have remitted the case to the Invalidity Division must be rejected, since it exercised its discretion in deciding to re-examine the appeal starting with prior design D1. Furthermore, as EUIPO correctly points out, the applicant’s argument that the Board of Appeal should have remitted the case to the Invalidity Division is unfounded, since the applicant did not request such a remittal before the Board of Appeal and argued at length on the application for a declaration of invalidity in so far as it was based on prior design D1.
26 It follows from the foregoing that the Board of Appeal allowed the applicant to be sufficiently heard, to prepare its defence effectively and to put forward all its arguments. Accordingly, the Board of Appeal did not err in law in commencing its examination of the appeal with prior design D1 and, consequently, did not infringe Article 60(1) of Regulation No 6/2002 or breach the applicant’s rights of defence.
27 The second plea in law must therefore be rejected as unfounded.
The first plea in law, alleging infringement of Article 6(1) and (2) of Regulation No 6/2002
28 By its first plea, which is, in essence, divided into two parts, the applicant alleges infringement of Article 6(1) and (2) of Regulation No 6/2002. By the first part, alleging infringement of Article 6(2) of that regulation, the applicant complains that the Board of Appeal held that the degree of freedom of the designer was high. By the second part, alleging infringement of Article 6(1) of that regulation, the applicant complains that the Board of Appeal found that the contested design lacked individual character.
29 As a preliminary point, it should be recalled that Article 25(1)(b) of Regulation No 6/2002 provides that a Community design may be declared invalid only if it does not satisfy the conditions set out in Articles 4 to 9 of that regulation. Under Article 4(1) of that regulation, a design is to be protected to the extent that it is new and has individual character (judgment of 24 September 2019, Piaggio & C. v EUIPO – Zhejiang Zhongneng Industry Group (Mopeds), T‑219/18, EU:T:2019:681, paragraphs 24 and 25).
The first part, alleging infringement of Article 6(2) of Regulation No 6/2002
30 The applicant complains that the Board of Appeal committed an error of assessment in concluding, in paragraph 37 of the contested decision, that the degree of freedom of the designer of electric candles was high. According to the applicant, users of electric candles would expect candles of a traditional shape, consisting essentially of an elongated cylindrical body and a teardrop-shaped flame, which would therefore limit the designer’s freedom. Furthermore, even if the applicant accepts that, from a technical point of view, it is possible to create electric candles of unusual shapes, that should not, in its view, be a factor taken into account in determining the designer’s degree of freedom, since those shapes run counter to consumer expectations and are devoid of any economic value.
31 EUIPO, supported by the intervener, contests, in essence, the applicant’s arguments.
32 The designer’s degree of freedom in developing a design is defined on the basis, in particular, of constraints linked to the features imposed by the technical function of the product or of a component of the product, or of the legal requirements applicable to the product to which the design is applied. Those constraints lead to a standardisation of certain features, which then become common to the designs applied to the product concerned (see, to that effect, judgment of 13 November 2012, Antrax It v OHIM – THC (Radiators for heating), T‑83/11 and T‑84/11, EU:T:2012:592, paragraph 44 and the case-law cited).
33 Therefore, the greater the designer’s freedom in developing a design, the less likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression on an informed user. Conversely, the more the designer’s freedom in developing a design is restricted, the more likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs being compared which do not have significant differences produce the same overall impression on an informed user (see judgment of 13 November 2012, Radiators for heating, T‑83/11 and T‑84/11, EU:T:2012:592, paragraph 45 and the case-law cited).
34 In the first place, it should be noted that the Board of Appeal held, in paragraph 37 of the contested decision, that the degree of freedom of the designer of electric candles was limited, in essence, only in so far as those products must be equipped with an electrical source enabling the candle to light up.
35 In that regard and in the second place, the fact that a product requires the presence of certain features does not necessarily imply restricted freedom of design, where there is scope for variations in the shape, size or positioning of those features and in the overall appearance of the product itself (see, to that effect, judgment of 14 June 2011, Watch attached to a lanyard, T‑68/10, EU:T:2011:269, paragraphs 68 and 69).
36 In the present case, the Board of Appeal rightly considered, in paragraph 38 of the contested decision, that the high degree of freedom of the designer of electric candles was characterised by the presence on the market of numerous versions of the contested design, which varied in shape, colour and material. As is apparent from paragraphs 37 and 50 of the contested decision, the Board of Appeal relied in particular on various representations of electric candles, extracts from the registrations of various Community or international designs of electric candles and screenshots of search engines in order to establish the prior state of the art, all of which were submitted by the applicant itself. Furthermore, none of the applicant’s arguments call into question the Board of Appeal’s assessment that the degree of creative freedom is high and is limited only by the requirement that the electric candles be equipped with an electrical source enabling them to be lit.
37 In the third place, a general trend or consumer expectations cannot constitute a prescriptive constraint necessarily limiting the freedom of a designer, since it is precisely that freedom of the designer which enables him or her to discover new forms or new trends, or to innovate within the framework of an existing trend (see, to that effect, judgment of 1 December 2021, Jieyang Defa Industry v EUIPO – Mattel (Doll’s head), T‑84/21, not published, EU:T:2021:844, paragraph 38 and the case-law cited).
38 In the present case, contrary to the applicant’s claim, there is no reason to regard the expectations of end users as normative constraints capable of limiting the degree of creative freedom. It would therefore be wrong to consider that the designer’s freedom would be conditioned by the need to create electric candles that resemble exclusively classical and realistic candles, consisting of a white cylinder topped by a black wick with a teardrop-shaped flame. Accordingly, the Board of Appeal rightly considered, in paragraphs 37 and 38 of the contested decision, that the possibility of creating unusual shapes of electric candles which diverge from the traditional shape of candles is the decisive factor in assessing the degree of creative freedom, so that the freedom of the designer in developing electric candles is high. Consequently, there is no need to call into question the assessments made by the Board of Appeal, which are well founded.
39 In the fourth place, the question whether or not a design follows a general trend in design is irrelevant in the context of the examination of the individual character of the design concerned, which consists in ascertaining whether the overall impression produced by the design differs from the overall impressions produced by previously disclosed designs, irrespective of aesthetic or commercial considerations. It follows that the degree of freedom of the designer cannot depend on the existence of such a tendency (see, to that effect, judgment of 7 February 2019, Eglo Leuchten v EUIPO – Briloner Leuchten (Light), T‑767/17, not published, EU:T:2019:67, paragraph 29 and the case-law cited).
40 Like the Board of Appeal in paragraph 38 of the contested decision, it must be noted that, in view of the fact that there were many different electric candles of different shapes, colours and materials, the cylindrical shape of the body, the wick and the flame, irrespective of the fact that those elements were typical of those designs, were the result of the designer’s choice and not of a technical constraint or a legal requirement capable of restricting freedom of design. Those elements, even assuming that they must necessarily be incorporated into the design of electric candles, had no bearing on the high degree of freedom that the designer of electric candles had with regard to their shape, the number of wicks and flames, the different degrees of combustion or the representation of melted wax, as well as the shape of the candle, its size, contours, material, colours and decoration.
41 In the light of the foregoing, the Board of Appeal concluded, without committing an error of assessment, that the designer of electric candles enjoyed a high degree of freedom, in accordance with the case-law cited in paragraphs 32, 33 and 35 above.
42 Therefore, the first part of the first plea in law must be rejected as unfounded.
The second part, alleging infringement of Article 6(1) of Regulation No 6/2002
43 The applicant complains, in essence, that the Board of Appeal erred in finding that the contested design did not have individual character within the meaning of Article 6(1) of Regulation No 6/2002.
44 More specifically, it complains that the Board of Appeal, first, erred in its assessment of the knowledge of the informed user by failing to take account of the purpose of Regulation No 6/2002, according to which, where the market shows that a design is in demand, the economic value of that design may merit protection against unfair imitation and free-riding by competitors. The Board of Appeal allegedly failed to take into account the conditions of the market in which the product covered by the contested design is marketed. More particularly, the applicant claims that the contested design has been particularly successful in the market for electric candles, thanks to the reflective disc placed under the artificial wick which resembles melted wax, a feature which explains the commercial success of the contested design and which differentiates it from prior design D1.
45 Furthermore, secondly, the Board of Appeal erred in its assessment of the individual character of the contested design and of the informed user. The applicant claims that the Board of Appeal, on the one hand, assessed the individual character of the contested design very strictly, so that such an assessment would make it impossible to obtain design protection for all electric candles, and, on the other hand, committed an error of assessment by failing to take into account, in essence, the saturated state of the art in the sector concerned and the nature of the product to which the contested design was applied. According to the applicant, the informed user in that sector would be looking for electric candles with the most realistic appearance and resembling traditional candles, and would pay particular attention to design choices which reproduce, for example, the combustion stages.
46 Thirdly, the applicant complains that the Board of Appeal erred in its assessment, in paragraphs 45 and 46 of the contested decision, in finding that, despite the differences found between the designs at issue in their upper parts, those differences were not sufficiently pronounced to create distinct overall impressions. In its view, the reflective resin disc is of particular importance to the overall impression which the informed user will form of the contested design.
47 Fourthly, the applicant claims that the market for electric candles is saturated. In essence, it submits that, in those circumstances, the informed user pays particular attention to even minor design features which would differentiate the contested design from the prior state of the art. In that respect, it submits that the main difference between the contested design and prior design D1 is in their upper part, relating to the combustion stage, which will produce an overall impression of difference.
48 Fifthly, the applicant complains, in essence, that the Board of Appeal erred in law by basing its decision on an erroneous statement of well-known facts, as regards its underlying perception of market conditions and of the informed user of electric candles. In support of its arguments, the applicant adduces for the first time before the Court evidence in Annexes A.17 and A.18 and Annexes A.23 to A.33 to the application. In its view, that evidence, the purpose of which was to challenge the accuracy of well-known facts, should, in order to ensure respect for its rights of defence and to be heard, be declared admissible and taken into account in the context of the examination of the present plea.
49 EUIPO, supported by the intervener, contests the applicant’s arguments.
50 It follows from the wording of Article 6(1)(b) of Regulation No 6/2002 that individual character must be assessed, in the case of a registered Community design, by reference to the overall impression produced on the informed user. That impression must be different from that produced by any design made available to the public before the date of filing of the application for registration or, if a priority has been claimed, before the date of priority. Article 6(2) of that regulation specifies that, in assessing individual character, the degree of freedom of the designer in developing that design is to be taken into consideration.
51 The individual character of a design results from an overall impression of difference, or lack of ‘déjà vu’, from the point of view of an informed user, in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently marked to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked to produce dissimilar overall impressions (see judgment of 17 May 2018, Basil v EUIPO – Artex (Bicycle baskets), T‑760/16, EU:T:2018:277, paragraph 77 and the case-law cited).
52 In the assessment of the individual character of a design in relation to any previous presence in the design corpus, account must be taken of the nature of the product to which the design applies or in which it is incorporated, in particular the industrial sector to which it belongs (see recital 14 of Regulation No 6/2002), the degree of freedom of the designer in developing the design, whether there is saturation of the state of the art, which could be capable of making the informed user more attentive to the differences in the designs compared, and also the manner in which the product at issue is used, in particular according to the manner in which it is normally handled when used (see judgment of 17 May 2018, Bicycle baskets, T‑760/16, EU:T:2018:277, paragraph 78 and the case-law cited).
53 Finally, when assessing the individual character of a design, the point of view of the informed user must also be taken into account. According to settled case-law, an informed user is a person who is particularly observant and who has some awareness of the previous state of the art, that is to say, the corpus of designs relating to the product in question that had been made available to the public on the date of filing of the contested design or, as appropriate, on the date of priority claimed (see judgment of 29 October 2015, Roca Sanitario v OHIM – Villeroy & Boch (Single control handle faucet), T‑334/14, not published, EU:T:2015:817, paragraph 18 and the case-law cited).
54 As a preliminary point, it should be observed, first, that the Board of Appeal rightly examined, in paragraphs 23 to 33 of the contested decision, in a complete and reasoned manner, the disclosure of prior design D1, which is, moreover, not contested, taking into account all the elements submitted by the parties before the Invalidity Division and those submitted for the first time before the Board of Appeal. Secondly, as noted by the Board of Appeal in paragraph 34 of the contested decision, it is common ground between the parties that the contested design is intended to be applied to electric candles. Thirdly, as is apparent from an examination of the first part of the first plea in law (see paragraphs 30 to 42 above), the degree of freedom of the designer of electric candles is high.
55 In the first place, concerning the concept of ‘informed user’, it must be understood as lying somewhere between that of ‘average consumer’, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and ‘sectoral expert’, who is an expert with detailed technical expertise. Thus, the concept of ‘informed user’ may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his or her personal experience or because of his or her extensive knowledge of the sector in question (judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic, C‑281/10 P, EU:C:2011:679, paragraph 53).
56 In that regard, it was without committing an error of assessment that, in paragraph 39 of the contested decision, the Board of Appeal defined an informed user of electric candles as a user who was familiar with the various designs existing in the electric candle sector, who had a certain degree of knowledge as to the features of those electric candles and who exercised a high degree of care when using them.
57 In the second place, 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 features disclosed in the contested design and must relate solely to the features protected, without taking account of the features, in particular technical features, excluded from the protection (see judgment of 21 April 2021, Bibita Group v EUIPO – Benkomers (Beverage bottle), T‑326/20, EU:T:2021:208, paragraph 61 and the case-law cited).
58 Moreover, differences will be insignificant in the overall impression produced by the designs at issue where they are not sufficiently pronounced to distinguish the goods at issue in the perception of the informed user or to offset the similarities found between those designs (see judgment of 21 April 2021, Beverage bottle, T‑326/20, EU:T:2021:208, paragraph 63 and the case-law cited).
59 Furthermore, despite the high level of attention of the informed user, the latter will not notice the minor differences which may exist between the designs at issue (see, to that effect, judgment of 8 July 2020, Glimarpol v EUIPO – Metar (Pneumatic power tools), T‑748/18, not published, EU:T:2020:321, paragraph 62 and the case-law cited).
60 In the present case, the Board of Appeal noted, in paragraph 45 of the contested decision, that the designs at issue coincided in their features of an elongated cylindrical body of white colour, with a teardrop-shaped flame connected to a thin black wick. Thus, first, it rightly found that those designs differed only in their upper part, which contained a circular depression with a resin disc in the contested design, whereas in prior design D1 the upper part was flat, a finding which, moreover, is not disputed.
61 Secondly, in paragraph 46 of the contested decision, the Board of Appeal considered that that difference, although not negligible, was of secondary importance in the context of the common features of the designs at issue. In that regard, it must be observed that, when the designs at issue are placed side by side, they produce an overall impression such that their differences can be detected by the informed user only after close examination, going beyond the concept of ‘overall impression’ within the meaning of Article 6(1) of Regulation No 6/2002 and clarified by the case-law cited in paragraph 57 above.
62 Thirdly, as is apparent from the discussion in paragraphs 32 to 41 above, the Board of Appeal was entitled to consider, in paragraph 46 of the contested decision, that the choice of the shape of the body and the flame was a matter for the designer’s high degree of freedom. That assessment confirms the secondary nature of the differences between the designs at issue, since they coincide on common features which are the result of a choice resulting from creative freedom, which is, in the present case, of a high degree. In that sense, the differences between those designs consist of a minor detail in the overall impression produced by them. In that context and contrary to the applicant’s contention, the informed user will not pay particular attention to the representation of the combustion stage of candles in the designs.
63 In the third place, according to the case-law, the comparison of the overall impressions produced by the designs at issue must, in principle, relate to those designs as registered and, consequently, as they appear in the register (see, to that effect, judgment of 10 November 2021, Eternit v EUIPO – Eternit Österreich (Building panels), T‑193/20, EU:T:2021:782, paragraph 72).
64 In that regard, if the applicant submits that the Board of Appeal should have taken into account the commercial success of one of the features of the contested design, it follows from the case-law cited in paragraph 63 above that the overall impression of a design is that produced by that design as registered. Consequently, the commercial success of a feature of the contested design cannot be taken into account in that context. In addition, secondly, even if we take the most favourable view of the applicant, as the Board of Appeal did in paragraph 50 of the contested decision, on the assumption that the market for electric candles would be saturated, the Board of Appeal rightly concluded that the market for electric candles would be saturated, that board rightly concluded that the mere difference in the circular depression with a resin disc in the contested design, in contrast to prior design D1, is not sufficient, on its own, to alter the similar overall impressions produced by the designs at issue on the informed user. Thirdly, therefore, the Board of Appeal considered, in the contested decision, without committing an error of assessment, that the designs at issue produced a similar overall impression by virtue of their coincidence in terms of the cylindrical body and the teardrop-shaped flame connected to a thin black wick, having regard also to the high degree of creative freedom that exists in the electric candle sector.
65 Thus, the Board of Appeal did not commit an error of assessment in concluding, in the contested decision, that the contested design lacked individual character in relation to prior design D1.
66 In those circumstances, it must be held that the Board of Appeal did not rely on well-known facts but carried out a full and concrete examination of the action brought before it. The applicant’s argument that that board relied on an erroneous statement of well-known facts is therefore factually lacking. Consequently, the evidence submitted by the applicant and the intervener for the first time before the Court in order to contest the accuracy of those well-known facts is irrelevant.
67 It follows from the foregoing that the second part of the first plea in law is unfounded and must be rejected without there being any need to rule on the admissibility of the evidence adduced for the first time before the Court in support of it. Accordingly, the first plea in law is rejected and, consequently, the action as a whole.
Costs
68 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.
69 In its written pleadings before the Court, the intervener did not claim that the applicant should be ordered to pay the costs. It nevertheless indicated at the hearing that it was seeking an order that the applicant pay the costs.
70 According to case-law, it is open to the parties to apply for costs subsequently, even at the hearing, although they did not do so in their written pleadings before the Court (see, to that effect, judgment of 13 May 2015, Group Nivelles v OHIM – Easy Sanitairy Solutions (Shower drainage channel), T‑15/13, EU:T:2015:281, paragraph 142).
71 In those circumstances, since a hearing took place and the applicant has been unsuccessful, it must be ordered to pay the costs of EUIPO and of the intervener, in accordance with the form of order sought by them.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders deluxe holding ApS to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and Piffany Copenhagen ApS.
Škvařilová-Pelzl | Nõmm | Kukovec |
Delivered in open court in Luxembourg on 12 March 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
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