21 June 2023 (*)

(Community design – Invalidity proceedings – Registered Community design representing a building block from a toy building set – Cross-claim – Request for alteration – No interest in bringing proceedings – Inadmissibility)

In Case T‑537/22,

Delta Sport Handelskontor GmbH,

established in Hamburg (Germany), represented by C. Klawitter and L.-E. Appel, lawyers,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by J. Ivanauskas, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Lego A/S,

established in Billund (Denmark), represented by V. von Bomhard and J. Fuhrmann, lawyers,

THE GENERAL COURT (Third Chamber),

composed of F. Schalin, President, P. Škvařilová-Pelzl and I. Nõmm (Rapporteur), Judges,

Registrar: V. Di Bucci,

having regard to the written part of the procedure,

makes the following

By its action under Article 263 TFEU, the applicant, Delta Sport Handelskontor GmbH, seeks the annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 May 2022 (Case R 1524/2021-3) (‘the contested decision’).

By its cross-claim, made pursuant to Article 182 of the Rules of Procedure of the General Court, the intervener, Lego A/S, seeks, in essence, the alteration of the grounds of the contested decision.

Background to the dispute

On 8 December 2016, the applicant filed with EUIPO an application for a declaration of invalidity of the registered Community design following an application filed on 2 February 2010 and represented in the following views:

The products to which the design, in respect of which a declaration of invalidity was sought, is intended to be applied fell within Class 21.01 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended, and corresponded to the following description: ‘Building blocks from a toy building set’.

The ground relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), read in conjunction with Articles 4 to 9 of that regulation. In particular, the applicant claimed that all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of the product and, for that reason, were excluded from protection pursuant to Article 8(1) of that regulation.

On 30 October 2017, the Invalidity Division rejected the application for a declaration of invalidity.

On 5 January 2018, the applicant filed a notice of appeal with EUIPO against the Invalidity Division’s decision.

By decision of 10 April 2019 (‘the earlier decision’), the Third Board of Appeal of EUIPO upheld the action for annulment of the Invalidity Division’s decision and made a declaration of the invalidity of the contested design on the ground that all the features of appearance of the product concerned by that design were solely dictated by the technical function of that product, within the meaning of Article 8(1) of Regulation No 6/2002.

In the first place, the Board of Appeal observed that the product concerned by the contested design was a building block that was part of a larger set of bricks and was intended to be assembled with other bricks of the set to build objects. The technical function that that brick must fulfil was, therefore, the capability of being assembled, with sufficient stability, with other bricks of the set in order to create a toy building.

In the second place, it identified the features of appearance of the product: namely (i) the row of studs on the upper face of the brick; (ii) the row of smaller circles on the lower face of the brick; (iii) the two rows of bigger circles on the lower face of the brick; (iv) the rectangular shape of the brick; (v) the thickness of the walls of the brick; and (vi) the cylindrical shape of the studs.

In the third place, the Board of Appeal found that the six features referred to above were solely dictated by the technical function of the building brick, namely assembly with, and disassembly from, the rest of the bricks of the set.

By an application lodged with the Registry of the General Court on 19 July 2019, the intervener lodged an action seeking the annulment of the earlier decision, which was registered as case T‑515/19.

By judgment of 24 March 2021, Lego v EUIPO – Delta Sport Handelskontor (Building block from a toy building set) (T‑515/19, not published, EU:T:2021:155), the Court annulled the earlier decision.

First, the Court held that the Board of Appeal had infringed Article 8(3) of Regulation No 6/2022 laying down an exception protecting modular systems, in that it had not assessed whether the contested design met the conditions of that article, which, moreover, the intervener had relied on before it.

Secondly, the Court held that the Board of Appeal had infringed Article 8(1) of Regulation No 6/2002 in that it had not identified all the features of appearance of the product concerned by the contested design, in particular the smooth surface of the upper face of the toy brick, and, a fortiori, did not establish that all of those features were solely dictated by the technical function of that product.

Following the annulment of the earlier decision, the Presidium of the Boards of Appeal of EUIPO referred the case to the Third Board of Appeal.

By the contested decision, the Board of Appeal dismissed the appeal on the ground that the application for invalidity was not substantiated. In particular, it found that even if all the features of appearance of the product concerned by the contested design, including the smooth surface of the upper face of the toy brick, were solely dictated by the technical function of that product, within the meaning of Article 8(1) of Regulation No 6/2022, the contested design could not be declared invalid as it benefited from the exception protecting modular systems referred to in Article 8(3) of that regulation.

Forms of order sought

In the cross-claim, the intervener claims, in essence, that the Court should:

–alter the contested decision, and reject the appeal brought by the applicant against the Invalidity Division’s decision of 30 October 2017 on the ground that Article 8(1) of Regulation No 6/2022 does not apply to all of the design features of the contested design;

–order the applicant and EUIPO to pay the costs.

In its response to the cross-claim, the applicant claims, in essence, that the Court should:

–dismiss the cross-claim;

–order the intervener to pay the costs.

In its plea of inadmissibility, EUIPO contends that the Court should:

–dismiss the cross-claim as inadmissible;

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

In its observations on the plea of inadmissibility, the intervener leaves it to the Court to determine whether the cross-claim is admissible. It submits, however, that the Court should reject the claim made by EUIPO in respect of costs.

Law

In accordance with Article 173(3) of the Rules of Procedure, in litigation relating to intellectual property rights the intervener has the same procedural rights as the main parties.

Pursuant to Article 182 of the Rules of Procedure, the parties to the proceedings before the Board of Appeal of EUIPO other than the applicant may submit, by a separate document, a cross-claim within the same time limit as that prescribed for the submission of a response.

Furthermore, under Article 130(1) of the Rules of Procedure, which applies to litigation relating to intellectual property rights by virtue of Article 191 of those rules, the defendant may request, by a separate document lodged within the time limit laid down in Article 81 of those rules, that the Court rule on the admissibility of the action without going to the substance of the case. Under Article 130(6) of the Rules of Procedure, the Court may decide whether or not to open the oral part of the procedure upon the application of the defendant.

In the present case, the intervener submitted a cross-claim, by a separate document lodged within the prescribed time limit, and EUIPO raised, also by a separate document lodged within the prescribed time limit, a plea of inadmissibility.

It should also be noted that, in its response to the cross-claim, the applicant submits, without formally raising an objection of inadmissibility, that that claim is inadmissible.

Since the Court considers that it has sufficient information from the documents in the file, it is not necessary to open the oral part of the procedure.

In support of its plea of inadmissibility, EUIPO submits that, first, by the cross-claim, the intervener seeks only to alter the reasoning of the contested decision, since the cross-claim cannot be regarded as seeking the annulment or alteration of the contested decision within the meaning of Article 184(1) of the Rules of Procedure. Secondly, the intervener does not have the necessary capacity for bringing a cross-claim against the contested decision as it lacks an interest in bringing proceedings given that the Board of Appeal upheld its submissions in their entirety when concluding that the contested design should not be declared invalid on the ground that it was protected on the basis of Article 8(3) of Regulation No 6/2002.

In its response to the cross-claim, the applicant advances, in essence, the same argument as EUIPO regarding the admissibility of that claim.

In its observations on the plea of inadmissibility, the intervener leaves it to the Court to determine the admissibility of the cross-claim, whilst indicating that, in its view, the case-law of the Court is not uniform on that issue.

In the present case, other than the request that the applicant and EUIPO be ordered to pay the costs, the cross-claim contains a single head of claim, by which the intervener seeks the alteration of the contested decision, by rejecting the appeal brought by the applicant against the Invalidity Division’s decision of 30 October 2017 on the ground that Article 8(1) of Regulation No 6/2022 does not apply to all of the design features of the contested design.

As a preliminary point, the sole head of claim in the cross-claim must be understood as seeking confirmation of the approach adopted by the contested decision, by having the Court alter the reasoning of that decision.

First, it should be observed that the provisions of Article 61(4) of Regulation No 6/2002 state that an action before the Court against a decision of a Board of Appeal of EUIPO is to be ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’.

According to settled case-law, an applicant’s interest in bringing proceedings is an essential prerequisite for any legal proceeding and must, in the light of the purpose of the action, exist at the time when the action is brought, failing which the action will be inadmissible. This presupposes that the action must be liable, if successful, to procure an advantage to the party bringing it (see order of 7 April 2022, Dr. August Wolff v EUIPO – Combe International (Vagisan), T‑679/20, not published, EU:T:2022:232, paragraph 21 and the case-law cited).

In the present case, the Board of Appeal dismissed the appeal brought by the applicant against the decision of the Invalidity Division of 30 October 2017, by which the request for a declaration of the invalidity of the contested design, of which the intervener is the rightholder, had been rejected. Thus, notwithstanding the fact that the intervener does not agree with all of the Board of Appeal’s findings, the Board of Appeal entirely upheld its claims, in that the contested design was not declared invalid.

In addition, the intervener’s argument that it could theoretically be adversely affected if the contested decision were annulled by the Court on a ground unconnected with the application of Article 8(1) of Regulation No 6/2002 must be rejected. In that regard, it suffices to recall that, if the interest which an applicant claims concerns a future legal situation, that applicant must demonstrate that the prejudice to that situation is already certain. Therefore, a party instituting an action cannot rely upon future and uncertain situations to justify its interest in bringing proceedings (see, to that effect, order of 16 September 2021, H&H v EUIPO – Giuliani (Swisse), T‑486/20, not published, EU:T:2021:619, paragraph 35 and the case-law cited).

It follows that, in the present case, the intervener has not established its interest in bringing proceedings for the purposes of the case-law referred to in paragraphs 34 and 36 above.

Furthermore, the intervener cannot successfully submit that, in certain judgments, referred to notably in paragraph 9 of the cross-claim, the Court took a different approach. Those judgments concern different situations from that at issue in this case and the intervener has failed to set out the reasons why they should be applied in the present case.

In the judgments of 29 January 2013, Fon Wireless v OHIM – nfon (nfon) (T‑283/11, not published, EU:T:2013:41, paragraph 33), and of 2 February 2022, Canisius v EUIPO – Beiersdorf (CCLABELLE VIENNA) (T‑694/20, not published, EU:T:2022:45, paragraph 58), the Court did not rule on the question of admissibility of an action, whether that be a principal action or a cross-claim, but on the treatment of the arguments presented by the intervener as an autonomous ground.

Similarly, the findings in the judgment of 6 October 2021, M/S. Indeutsch International v EUIPO – 135 Kirkstall (Representation of chevrons between two parallel lines) (T‑124/20, not published, EU:T:2021:668, paragraph 37) cannot be applied to the present case. In that judgment, the question of the admissibility of the intervener’s cross-claim was raised in a particular context in which the Board of Appeal had been criticised for having failed to rule on the ground of invalidity on the basis of an infringement of Article 7(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). As is clear from paragraph 48 of that judgment, it was imperative that the Board of Appeal examined that ground first before turning to the examination of Article 7(1)(b) of Regulation No 207/2009, which it failed to do. That particular situation, which was specific to the case which gave rise to that judgment, bears no relation to the circumstances of the present case.

Secondly, it is clear from Article 61(3) of Regulation No 6/2002 that, as regards actions brought against decisions of the Boards of Appeal ‘the Court of Justice has jurisdiction to annul or to alter the contested decision’. Likewise, Article 184(1) of the Rules of Procedure, which applies to litigation relating to intellectual property rights, provides that ‘the cross-claim shall seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application’.

Since the annulment of all or part of the decision of the Board of Appeal which is challenged before the Court constitutes a necessary prerequisite for the Court to be able to uphold an application to alter that decision, within the meaning of Article 61(3) of Regulation No 6/2002, it cannot uphold such an application in the absence of a head of claim seeking the annulment of that decision (see, by analogy, order of 20 December 2022, Piaggio & C. v EUIPO – Zhejiang Zhongneng Industry Group (Shape of a scooter), T‑19/22, not published, EU:T:2022:859, paragraph 33 and the case-law cited).

In the present case, however, it is clear from the cross-claim that, by that claim, the intervener does not challenge the lawfulness of the operative part of the contested decision by which the Board of Appeal rejected the applicant’s appeal against the Invalidity Division’s decision of 30 October 2017. On the contrary, the intervener itself emphasises in paragraph 7 of the cross-claim that it does not seek the annulment, or even partial annulment, of the contested decision, and thus seeks to avoid any change to the outcome of proceedings before the Board of Appeal.

In that context, it is impossible for the Court to interpret the sole head of claim in the cross-claim as meaning that it seeks the annulment as well as the alteration of the contested decision, as required by Article 61(3) of Regulation No 6/2002 and by Article 184(1) of the Rules of Procedure.

It follows from all of the foregoing that, since, first, the intervener does not have an interest in bringing proceedings and, second, the forms of order sought by the cross-claim do not seek the annulment as well as the alteration of the contested decision, the plea of inadmissibility raised by EUIPO must be upheld and, therefore, the cross-claim dismissed.

Costs

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

Since the intervener has been unsuccessful in the cross-claim, it must be ordered to pay the costs incurred by the applicant, in accordance with the forms of order sought by the latter relating to the cross-claim proceedings. It should be noted that, contrary to the intervener’s submission, that finding, which relates solely to the cross-claim proceedings, does not depend on the outcome of the main proceedings.

Conversely, since EUIPO has sought an order that the intervener pay its costs only in the event of the parties being summoned to attend a hearing, it is appropriate, since no hearing was convened, to decide that it must bear its own costs relating to the cross-claim proceedings.

On those grounds,

hereby orders:

1.The cross-claim is dismissed as being inadmissible.

2.Lego A/S shall bear its own costs and those incurred by Delta Sport Handelskontor GmbH relating to the cross-claim proceedings.

3.The European Union Intellectual Property Office (EUIPO) shall bear its own costs incurred in the cross-claim proceedings.

Luxembourg, 21 June 2023.

Registrar

President

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Language of the case: English.