Facts

The US company, Sanford LP, is the owner of a Community Registered Design (CRD) represented as follows:

The design was registered in June 2004 in Class 19.08 covering “Labels”.

In February 2016, Avery Zweckform GmbH applied for a declaration of invalidity of the CRD. The Cancellation Division rejected the application. Avery appealed and the Third Board of Appeal upheld the appeal and annulled the Cancellation Division’s decision.

The BoA held that evidence submitted to it of an earlier design of R5015 labels proved that the design had been made available to the public before the relevant date of the CRD and that, in view of the designer’s average degree of freedom and the definition of informed user, the earlier design and the CRD produced the same overall impression on the informed user. Therefore, in the absence of individual character of the CRD under Article 6 of the Community Design Regulation (6/2002/EC), the BoA declared the CRD invalid.

Sanford appealed to the General Court. Sanford argued: (i) infringement of Article 63(2) of the 2002 Regulation in that evidence of the earlier design had been submitted late to the BoA; (ii) infringement of Article 7(1) of the 2002 Regulation in that the earlier design was wrongly considered to have been made available to the public; and (iii) infringement of Article 6 in that the BoA had been wrong to find that the designs produced the same overall impression and that the CRD therefore lacked individual character.

Decision

Evidence

Sanford said that evidence of the earlier R5015 label design, which had been produced for the first time at Avery’s appeal to the BoA, had wrongly been declared admissible.

The GC noted that, under Article 63(2), EUIPO can disregard facts or evidence that are not submitted in due time. Therefore, the BoA has a wide discretion as to the admissibility of evidence. The GC also noted that the fact of a possible earlier design being in play had, in fact, been raised before the Cancellation Division, but the evidence submitted in support had been insufficient and did not clearly identify the earlier design relied on.

In the GC’s view, the new evidence submitted by Avery to the BoA complemented the evidence already before the Cancellation Division and responded to the Cancellation Division’s findings. Further, the new evidence was of representations of label rolls that belonged to the same series of labels as the CRD, i.e., R5012-R5020, and was therefore relevant. Moreover, there was no time limit for filing a declaration of invalidity, and consideration of the evidence could contribute to ensuring that a CRD, the validity of which could be subsequently challenged by other invalidity proceedings, did not stay on the register.  The BoA had therefore made appropriate use of its discretion under Article 63(2) in finding the evidence admissible.

Disclosure

The filing date for the CRD was 20 February 2004. Therefore, the earlier design had to be proved to have been made available to the public before that date.

The additional evidence submitted by Avery to the BoA comprised an affidavit from a director of a company operating in the field of label printing, together with a translation into English, several invoices, orders and photographs, showing that the company had been producing, inter alia, R5015 label rolls for Avery since 2003.

Sanford said that the affidavit did not show that the R5015 design had been disclosed to Avery at the relevant time. The GC said that, even if that were correct, the affidavit had to be considered alongside the other evidence produced with it, which consisted of two invoices from the supplier company to Avery relating to labelling tools in connection with the R5015 label design, as well as an order dated November 2003 from Avery to the supplier company for 50 R5015 label rolls.

The GC said that although the order was a test order only and the sale was never actually made, that did not matter as far as disclosure of the R5015 design was concerned. Further, even though the invoices were in relation to labelling tools, rather than label rolls, they expressly referred to the R5015 label design. Therefore, they amounted to disclosure and supported the statement in the affidavit that disclosure had taken place in 2003, i.e., before the relevant date.

The GC also dismissed as unsubstantiated Sanford’s claim that the documents constituted “confidential preparations” between Avery and the supplier company and therefore were not made available to the public. It dismissed Sanford’s claim that, because the supplier company had interacted only with Avery, the circles specialised in the sector were not aware of the disclosure. The GC said that once disclosure has been demonstrated, it is presumed to exist, and Sanford had not proved that the disclosure had prevented the design from becoming known in the normal course of business to the specialist circles.

Accordingly, the BoA had been correct to find that the earlier design had been made available to the public before the relevant date for the purposes of Article 7(1) of the 2002 Regulation.

Overall impression and individual character

The GC dismissed all of Sanford’s arguments that the BoA had been wrong to find the same overall impression between the CRD and the earlier R5015 design. The GC said that:

1. although the BoA had seemingly contradicted itself when it said, first, that the informed user would think that the print marks on the back of the CRD label strip fulfilled a “primarily” technical role and then later in its decision, a “solely” technical role, the difference in terms used had no bearing on the comparison of the overall impression, since as a result of categorising them as technical, the informed user would not focus his/her attention on them and they did not contribute to the overall appearance of the design;
2. the BoA had not focussed solely on the labels as Sanford argued, but had considered the label rolls as a whole and had also taken account of the print on the back of the label strip;
3. the incorporation of the word “Dymo” on the CRD and the word “Avery” on the R5015 design were not decorative elements and did not constitute features of the appearance of the products but were signs affixed to the products to indicate origin and were therefore irrelevant to overall impression;
4. the BoA had duly considered the differences in the print marks on the back of the label strips and had decided that they were not insignificant; however, it had then found that they were insufficient to produce a different overall impression;
5. the BoA had been right to find that the print marks on the back of both strips were there solely to perform a technical function in relation to scanning and printing; their different arrangement, shape and length, which altered their appearance, were not linked to an aesthetic design choice, but to technical function; and
6. the BoA had not excluded the print marks from its assessment of overall impression when considering the informed user’s level of intention; it had just found that, because of the informed user’s knowledge of printer label rolls and corresponding printers, he/she should would be aware of the features of appearance that a label roll would have in order to fulfil its intended purpose of interacting with the printer’s sensor and that he/she would not therefore pay particular attention to the difference in the size of the labels.

Accordingly, the BoA had been right to find that the designs produced the same overall impression on the informed user and that, therefore, the CRD lacked individual character.

The appeal was dismissed, and the BoA’s decision was upheld. (Case T-443/20 Sanford LP v EUIPO EU:T:2021:767 (10 November 2021) — to read the judgment in full, click here).