The evidence provided in a proceeding is not enough to sustain the invalidity of a Community Design

Monday, 11 of November of 2019

On September 17, 2019, the General Court of the European Union issued an unnoticed but interesting decision, in which it ruled on an application for nullity of a Community design of a sponge.

The relevance of this ruling does not lie in the final decision on whether the design is valid or not, but in procedural questions that have been raised during the course of the procedure in relation to the burden of proof on the applicant for the invalidity of a Community design.

The Judgment delivered in Case T-532/18 gives rise to the registration by Refan Bulgaria OOD of a Community design in 2012, against which Aroma Essence Ltd filed an application for a declaration of invalidity, for lack of individual character and novelty under Articles 5 and 6 of Regulation 6/2002. That application was based on the existence of two identical and/or very similar earlier models, owned by the same Refan Bulgaria OOD, which had been declared invalid in two earlier decisions, and the decisions' pronouncements were designated for evidentiary purposes.

On the one hand, the Cancellation Division of the EUIPO declared the invalidity of the contested design for lack of individual character, on the basis of the existence of one of the earlier models. It also pointed out that, although its examination should, in principle, be limited to the facts, evidence and arguments put forward by the parties to the proceedings, the EUIPO may legitimately take into consideration well-known facts, such as the existence of two decisions declaring the invalidity of an identical and/or very similar design. On the contrary, the Board of Appeal of the EUIPO revoked that decision, in view of the fact that the applicant merely declared that the model should be declared invalid for the same reasons given in the previous decisions provided -without further explanation or motivation- stressing that the invalidity of previous designs for lack of novelty was not a well-known fact that should be taken into consideration ex officio by the EUIPO.

That debate was referred to the General Court, which recalls that Article 63(1) of the Regulation provides that the examination of the EUIPO in an invalidity action must be restricted to the grounds relied on by the parties and that, accordingly, the Office may base its decision only on the facts and evidence expressly submitted by the parties. It also points out that Article 52(2) of the Regulation provides that the application for a declaration of invalidity must be reasoned and supported by a statement of the grounds for invalidity as well as all the facts, evidence and observations submitted in support of that application.

Therefore, the Court concludes that it follows from these provisions that (i) it is for the applicant for invalidity to provide to the EUIPO all details relating to designs whose state of art is alleged, in order to demonstrate that the contested design cannot be validly registered; and (ii) it is exclusively for the applicant for invalidity to provide the evidence to support his claims, and that the EUIPO cannot substitute any kind of evidence neglect of the parties.

In the light of the foregoing, the General Court concludes that it is not sufficient for the applicant for a declaration of invalidity of the design to submit, for evidentiary purposes, previous decisions relating to the declaration of invalidity of identical and earlier designs, in so far as such action does not meet the requirements of reasoning and precision imposed by the Regulation. Indeed, although the decisions submitted contained the evidence which was taken into consideration in order to rule on the invalidity of earlier designs, it is none the less true that this reference to earlier decisions, without further clarification, does not satisfy the requirement to prove the existence of an earlier design identical to the contested one and, after all, the burden of proof on the applicant for the invalidity of a design.

On the other hand, the Court states that its decision is fully consistent with thejudgment of 28 June 2018, EUIPO v Puma (C-564/16 P), which takes into consideration previous decisions for the purpose of proving the reputation of the mark relied on, in so far as, in that procedure, the previous decisions were precisely identified, and the relevant extracts were expressly mentioned and summarized, as well as the list of evidence taken into account in those decisions.

All in all, this decision is interesting insofar as it shows that the basic procedural principles applied by the Spanish courts are fully applicable in the proceedings before the EUIPO, and in particular, those that reach the rank of fundamental right because they form part of the right to effective judicial protection, such as the principle of production of evidences, the principle of pleading, as well as the rights of defense, congruence and motivation of decisions.