Easy Sanitary Solutions v Group Nivelles returns to the CJEU (case C-419/22 P)

Kat readers interested in EU design law likely remember the textbook case concerning the validity of a design for a shower drain. This case, which reached the Court of Justice (CJEU) in 2017, discussed whether the same public shall be considered when examining novelty, and individual character a design, respectively.

This design is now returning to the CJEU, this time with a question of admissibility of additional prior art, which was produced after lodging the application for invalidity. While awaiting the decision, let us remember all the various rulings this design has went through.

The basis for the case is Community Design No 000107834-0025, which was registered by Easy Sanitary Solutions in 2004. The application stated that it was a design for a “shower drain” (to the upper right).

In 2009, the predecessor of Group Nivelles filed an application for invalidity of the design. The invalidity applicant, relying on Art. 25(1)(b) Design Regulation, claimed that the contested design is not new, devoid of individual character, and its features are dictated by their technical functions.

Group Nivelles relied on its earlier design No DM/059828. After a round of observations in the invalidity case, Group Nivelles also submitted excerpts from two Blücher product catalogues (to the bottom left). The Blücher catalogue shows a drain cover, which is used for industrial purposes when draining liquid waste. This drain cover was not, however, identical to design No DM/059828.

The Invalidity Division concluded that the contested design was invalid, as it was identical to the product shown in the Blücher catalogue. Easy Sanitary Solution appealed. The EUIPO’s Board of Appeal (BoA) annulled the decision, concluding that the contested design was not identical to the Group Nivelles’ product and thus was new. Group Nivelles appealed to the General Court (case T-15/13).

The General Court annulled the BoA’s decision. Surprisingly, the General Court found that while the contested design was not novel (as it was identical to the product from the catalogue), at the same time it did have individual character. In so finding, the General Court relied on the nature of the two products. While the earlier product was applied to a cover plate for an industrial drainage channel, the contested design was registered for a shower drain (typically used at one’s home).

Thus, an informed user of shower drains would not be aware of earlier designs for products, which are used for industrial purposes. A cover plate for an industrial drainage channel would not destroy the individual character of a shower drain. It would only be relevant when examining novelty, the test for which is cross-sectoral.

Though this ruling was sharply criticised by scholars and practitioners (including The IPKat’s post here), the General Court’s approach in fact reflected the one taken in the earlier drafts of the Design Regulation.

As Ruhl and Tolkmitt remind us, Member States had planned to use different categories of prior designs for examining novelty and for examining individual character. It would be then conceivable that a design would have individual character and not be new at the same time – as was found in the General Court’s ruling. This would in turn justify examining both novelty and individual character. This approach was not, however, maintained in the Design Regulation as finally adopted.

EUIPO and Easy Sanitary Solutions appealed to the CJEU (Joined Cases C-361/15 P and C-405/15 P). In 2017, the CJEU dismissed the appeal and maintained the General Court’s ruling to annul the BoA’s decision. However, the CJEU also pointed to several errors of law made by the General Court. The CJEU held that the General Court had erred in law when it required the informed user to be actually aware of the prior design. It thus disagreed with the approach by which there were different categories of the relevant public for establishing novelty and individual character, respectively. The appeal having nevertheless been dismissed, the case was referred back to the EUIPO.

In 2018, while reviewing the file, the Rapporteur of the BoA realised that the 2009 application for invalidity was based solely on the Group Nivelles’ design No DM/059828. The Blücher catalogue, against which the contested design was examined in 2009-2017, had not been indicated in the application for declaration of invalidity. This meant that the that the only relevant prior art is the design No DM/059828.

In 2020, the BoA issued its decision, now maintaining the validity of the contested design (case R 2664/2017-3). The BoA stated that accepting the Blücher catalogue as prior art would broaden the subject matter of the invalidity application and be inconsistent with Art. 63(2) Design Regulation.

If compared with design No DM/059828 (and not with the Blücher catalogue), the contested design presented significant differences. The BoA observed that the contested design “produces the overall impression of an elegant, essential and minimal shower drain with a decorated closed cover plate and lateral elongated slots”, while the prior design is characterised by more standardised features. The BoA concluded that the contested design possessed individual character and was valid.

Group Nivelles appealed to the General Court (case T-327/20). While the claimant also disagreed with the BoA’s findings on individual character, the essence of the case concerns the admissibility of the Blücher catalogue.

According to Group Nivelles, proceedings have already given rise to a final decision, namely the decision of the Invalidity Division and that of BoA from 2012. These two procedures led to the conclusion that all the facts and all the evidence had been taken into consideration. In subsequent proceedings, the question of the admissibility of the facts and the evidence produced by the parties was not raised or called into question (para. 31 of case T-327/20).

This argument was rejected by the General Court. First, the General Court reminded that the CJEU’s ruling to annul the BoA decision has an ex tunc effect, which means that the 2012 BoA decision “never existed” and has by no means become final.

Second, EUIPO must only examine the earlier designs identified in the invalidity application. Accepting additional designs would run against the legitimate interest of the design holder in being part to a dispute, the subject of which is clear from the outset.

Group Nivelles has appealed the decision to the CJEU (case C-419/22 P). No additional information is available on the grounds for appealing, but it surely concerns the admissibility of additional prior art, which was produced after lodging the application for invalidity. In the meantime, the contentious design will expire in just one year.