ECLI:EU:T:2026:423

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JUDGMENT OF THE GENERAL COURT (First Chamber)

1 July 2026 (*)

( EU design – Invalidity proceedings – Registered EU design representing a lampshade – Earlier designs appearing in Swiss and United States patent specifications – Grounds for invalidity – Individual character – Elements of patent specifications containing the earlier designs to be taken into account when assessing the overall impression – Article 6 and Article 25(1)(b) of Regulation (EC) No 6/2002 )

In Case T‑40/25,

DecoTrend GmbH, established in Weiden in der Oberpfalz (Germany), represented by C. Klawitter, lawyer,

applicant,

European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez, acting as Agent,

defendant,

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

B.K.Licht GmbH & Co. KG, established in Munich (Germany), represented by M.‑H. Hoffmann, lawyer,

THE GENERAL COURT (First Chamber),

composed of E. Buttigieg, President, J. Schwarcz and E. Tichy-Fisslberger (Rapporteur), Judges,

Registrar: V. Di Bucci,

having regard to the written part of the procedure,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

1 By its action under Article 263 TFEU, the applicant, DecoTrend GmbH, seeks the annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 November 2024 (Case R 102/2023‑3) (‘the contested decision’).

Background to the dispute

2 On 12 January 2022, the intervener, B.K.Licht GmbH & Co. KG, filed with EUIPO an application for a declaration of invalidity of the EU design, registered under No 4 031 201‑0004 following an application filed on 3 June 2017. The latter is represented in the following views:


View 4.1	View 4.2

View 4.3	View 4.4

3 The goods to which the design, in respect of which a declaration of invalidity was sought, is intended to be applied were in Classes 26‑04 and 26‑05 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and corresponded, for each of those classes, to the following description:

– Class 26‑04: ‘Strings of lights’;

– Class 26‑05: ‘Lampshades’.

4 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), in the version prior to the entry into force of Regulation (EU) 2024/2822 of the European Parliament and of the Council of 23 October 2024 (OJ L, 2024/2822), read in conjunction with Article 6 of Regulation No 6/2002.

5 In the form by which the intervener filed the application for a declaration of invalidity, it had stated that that application was based on patent specification No CH 132 939, filed with the Federal Institute of Intellectual Property (IPI) (Switzerland) and disclosed on 16 July 1929. It had also stated that its application for a declaration of invalidity contained several annexes, including Annex 2 concerning the ground relied on in support of that application (see paragraph 4 above). Annex 2 corresponded to that patent specification, which included five illustrations, in particular the following, which was identified therein as ‘Fig. 1’ (‘earlier design D1’):

Image not found

6 More specifically, in the form referred to in paragraph 5 above, the intervener had also stated that the reasons for its application appeared in its five annexes, namely in a file bearing the name ‘Begruendung Nichtigkeitsantrag.pdf’ (statement of reasons for the application for a declaration of invalidity; ‘the statement of reasons’), and in Annexes 1, 3, 4 and 5.

7 In point II of the statement of reasons, the intervener stated as follows:

‘The contested design lacks individual character because it produces the same overall impression as an earlier design. As Annex 2, we attach Swiss patent specification No 132 939. … Figure 1 [(Fig. 1)] in that patent specification depicts the shape of the star-shaped lampshade and therefore constitutes an earlier design, within the meaning of Article 6 of [Regulation No 6/2002]. The overall impression produced by that earlier design corresponds to that produced by the contested design.’

8 In point III of the statement of reasons, the intervener stated the following:

‘As Annex 4, we attach a copy of the United States patent specification No 1 653 206 … That specification was published on 20 December 1927. Figure 1 in that specification constitutes another earlier design. That patent specification is from the same inventor as the Swiss patent specification. The representation in Figure 1 of the United States patent specification is very similar, but not entirely identical. However, here too, a star is depicted, the overall impression of which corresponds to that of the contested design.’

9 Figure 1 (‘Fig. 1’), included in the United States patent specification referred to in paragraph 8 above (‘earlier design D2’), is the following:

Image not found

10 On 17 November 2022, the Cancellation Division dismissed the application for a declaration of invalidity.

11 On 16 January 2023, the intervener filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

12 By the contested decision, the Board of Appeal upheld the appeal, annulled the Cancellation Division’s decision and remitted the case to it, for the purposes of continuing the invalidity proceedings. The Board of Appeal found, inter alia, that the Cancellation Division had incorrectly based the comparison of the overall impression produced by the contested design, on the one hand, and that produced by the earlier designs, on the other, on elements of the patent specifications referred to in paragraph 8 above other than the earlier designs, namely the written presentation of the invention and the other illustrations that appeared in those patent specifications (paragraphs 40 to 43 and 50 of the contested decision). According to the Board of Appeal, the Cancellation Division should have carried out that comparison, as regards earlier design D1 and earlier design D2, exclusively on the basis of those designs, since they were the only illustrations relied on by the intervener in its application for a declaration of invalidity. Whereas earlier design D1 and earlier design D2 were identical, with the exception of some slight differences in shades of grey, the other illustrations also appearing in the patent specifications at issue differed significantly from those earlier designs (paragraphs 46, 47 and 50 of the contested decision). Earlier design D1 and earlier design D2 were legible without there being any need to use the other elements of the patent specifications at issue, namely the written presentation of the invention and the other illustrations contained therein. Those earlier designs showing a multi-pointed star should have been taken into consideration for the purposes of the comparison with the contested design (paragraphs 48 and 49 of the contested decision). Thus, the Cancellation Division’s decision was vitiated by a ‘serious procedural irregularity’, with the result that it had to be annulled and the case remitted to the Cancellation Division (paragraphs 51 to 53 of the contested decision).

Forms of order sought

13 The applicant claims that the Court should:

– annul the contested decision;

– order EUIPO and, if appropriate, the intervener to pay the costs.

14 EUIPO contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs in the event that a hearing is held.

15 The intervener contends that the Court should:

– dismiss the action and declare the contested design invalid;

– in the alternative, dismiss the action and remit the case to the Cancellation Division;

– order the applicant to pay all the costs of the invalidity proceedings.

Law

16 The applicant relies, in essence, on two pleas in law, alleging, first, an error of law in that the Board of Appeal found that the assessment of the individual character of the contested design had to be carried out in relation only to earlier design D1 and earlier design D2, without taking into account the other elements of the patent specifications at issue, namely the written presentation of the invention and the other illustrations contained therein, and, secondly, an error of law in so far as the Board of Appeal found (i) that neither of the designs at issue had concave indentations or curved protrusions and (ii) that it was not apparent from earlier design D1 or earlier design D2 that they were foldable.

The reference to the pleadings lodged before EUIPO

17 First of all, in so far as, in paragraph 63 of the application, the applicant refers to the pleadings that it had submitted during the proceedings before EUIPO, it must be borne in mind that an application, in so far as it refers to such documents, is inadmissible to the extent that the general references in it cannot be linked to the pleas and arguments put forward in that application itself (see judgment of 31 January 2019, Thun v EUIPO (Fish), T‑604/17, not published, EU:T:2019:42, paragraph 46 and the case-law cited).

18 In the present case, the applicant merely makes a general reference to all the documents that it had submitted during the proceedings before EUIPO, without, however, indicating which specific passages of those documents support any particular plea or argument set out in the application. Since that general reference cannot therefore be linked to the pleas in law and arguments developed in the application, the application is inadmissible in so far as the applicant makes that general reference therein.

The first plea in law, alleging an error of law in that the Board of Appeal found that the assessment of the individual character of the contested design had to be carried out in relation only to the earlier designs

19 By the first plea, the applicant submits, in essence, that the Board of Appeal erred in law in finding that the assessment of the individual character of the contested design had to be carried out in relation only to earlier design D1 and earlier design D2. According to the applicant, like the Cancellation Division, the Board of Appeal should also have taken into account the other elements of the two patent specifications at issue in which those earlier designs appear, namely the written presentation of the invention and the other illustrations contained therein.

20 The applicant claims that, in support of the application for a declaration of invalidity, the intervener relied not only on earlier design D1 and earlier design D2, but on the Swiss and United States patents referred to in paragraphs 7 and 8 above, the specifications of which it submitted as Annexes 2 and 4 to that application. However, those specifications contain not only both earlier design D1 and earlier design D2, but also other graphic representations of the invention at issue. Those earlier designs are not sufficient to explain the invention covered by the patent specifications at issue. As the Cancellation Division correctly did, it is necessary to add the name and description of the invention, as well as the corresponding graphic representations clarifying the purpose of that invention and its description, in particular as a result of the ‘letter designations’ affixed to earlier design D1 and earlier design D2, which in turn refer to the presentation of the invention, thus enabling the graphic representations to be understood.

21 According to the applicant, any design and any earlier right relied on in opposition to the registration of a design must be subject to interpretation, in particular in order to determine, in a clear and unambiguous manner, the overall impression. If the earlier right relied on against the registration of a design is an industrial intellectual property right, as are the patents at issue, recourse must be had to the perception of specifically trained experts and not to that of an informed user. Specifically, in the case of an industrial intellectual property right, it is necessary for ‘that for which the applicant [for invalidity] claims protection, which may be invoked against the protection of a design, to be clear and unequivocal’. In that context, a detailed examination of the earlier right is necessary. If that earlier right is a patent, the representations of the subject matter protected by it should not be read in isolation, but always in the context of the other elements of the patent specification concerned.

22 Thus, it is clear from the patent specifications at issue that they are intended to protect a ‘foldable light-emitting star’ or a ‘foldable lantern’ and that the object thus referred to, because it is foldable, must have a particular shape. Earlier design D1 and earlier design D2 do not in themselves enable the invention protected by the patents at issue to be fully understood and it is necessary to consult the related patent specifications in order to interpret and determine the contents of the shape represented by those designs. Those earlier designs are not independent of the description or of all the other graphic representations contained in the patent specifications at issue.

23 EUIPO and the intervener dispute the applicant’s arguments.

24 Under Article 52(1) of Regulation No 6/2002, subject to Article 25(2), (3), (4) and (5) of that regulation, any natural or legal person, as well as a public authority empowered to do so, may submit to EUIPO an application for a declaration of invalidity of a registered EU design.

25 Under Article 25(1)(b) of Regulation No 6/2002, an EU design may be declared invalid if it does not fulfil the requirements of Articles 4 to 9 of that regulation.

26 In that regard, Article 4(1) of Regulation No 6/2002 states that a design is to be protected by an EU design, if it is new and has individual character.

27 It is apparent from the wording of Article 6(1)(b) of Regulation No 6/2002 that, in the case of a registered EU design, the individual character must be assessed having regard to the overall impression produced on the informed user, which 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 is claimed, the date of priority. Article 6(2) of Regulation No 6/2002 states that in assessing individual character, the degree of freedom of the designer in developing the design is to be taken into consideration.

28 As is clear from the case-law, 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 significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions (see judgment of 7 November 2013, Budziewska v OHIM – Puma (Bounding feline), T‑666/11, not published, EU:T:2013:584, paragraph 29 and the case-law cited).

29 According to Article 7(1) of Regulation No 6/2002, for the purposes of applying, inter alia, Article 6 of that regulation, a design is to be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed before the date referred to, in particular in Article 6(1)(b) of that regulation, except where those events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union.

30 In the present case, by its application for a declaration of invalidity of the contested design, which is a registered EU design (see paragraph 2 above), the intervener submits that, contrary to Article 4(1) and Article 6 of Regulation No 6/2002, the contested design does not, on the date of filing of the application for registration, have individual character in relation to certain designs already made available to the public (see paragraph 4 above).

31 In that context, it has already been held that, according to Article 28(1)(b)(v) of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Regulation No 6/2002 (OJ 2002 L 341, p. 28), where an application for a declaration of invalidity of a registered EU design is based on the fact that the design does not fulfil the requirements set out in Articles 5 and 6 of Regulation No 6/2002, the application for a declaration of invalidity must contain information on, and a reproduction of, the prior designs capable of forming an obstacle to establishing the novelty or individual character of the registered EU design, as well as documents proving the existence of those earlier designs (judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 58). It is for the applicant for a declaration of invalidity to provide evidence to demonstrate the truth of the ground for invalidity set out in Article 25(1)(b) of Regulation No 6/2002, namely evidence to demonstrate that the contested design does not fulfil the requirements of Articles 4 to 9 of that regulation (judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraphs 59 and 60).

32 It is also clear from the case-law that the reference to the overall impression produced on the informed user by ‘any design’ which has been made available to the public indicates that Article 6 of Regulation No 6/2002 must be interpreted as meaning that the assessment as to whether a design has individual character must be conducted in relation to one or more specific, individualised, determined and identified designs from among all the designs which have been made available to the public previously (judgment of 19 June 2014, Karen Millen Fashions, C‑345/13, EU:C:2014:2013, paragraph 25; see, by analogy, judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 61).

33 It should be noted, moreover, that Article 3(a) of Regulation No 6/2002 defines ‘design’ as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture [or] materials of the product itself [or] its ornamentation’. It follows that, in the context of the system set out by Regulation No 6/2002, appearance is the decisive factor of a design (judgments of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 62; of 8 March 2018, DOCERAM, C‑395/16, EU:C:2018:172, paragraph 25; and of 28 October 2021, Ferrari, C‑123/20, EU:C:2021:889, paragraph 30).

34 It is therefore essential that the adjudicating bodies of EUIPO have an image of the earlier design that makes it possible to see the appearance of the product in which the design is incorporated or to which it is intended to be applied and to identify the earlier design precisely and with certainty, so that they may, in accordance with Articles 5 to 7 of Regulation No 6/2002, assess the novelty and individual character of the contested design and carry out a comparison of the designs at issue as part of that assessment. It is a prerequisite of an examination whether the contested design does in fact lack novelty or individual character that a specific and defined earlier design is available (judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 64).

35 It is for the party who lodged the application for a declaration of invalidity to provide EUIPO with the necessary information and, in particular, to identify and reproduce precisely and entirely the design that is allegedly earlier in order to demonstrate that the contested design cannot be validly registered (judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 65).

36 Consequently, in the present case, it was for the intervener, as the party that had applied for a declaration of invalidity of the contested design, to identify and reproduce precisely and entirely the earlier designs on which it intended to base its application for a declaration of invalidity, so that EUIPO could verify its claims that the contested design did not have individual character within the meaning of Article 6(1) of Regulation No 6/2002.

37 To that end, as noted in paragraphs 5 and 8 above, the intervener referred, in its application for a declaration of invalidity, above all to a Swiss patent specification and also referred to a United States patent specification. It is common ground between the parties that those two patent specifications relate to the same invention and that they are, at least in substance, identical.

38 However, it must be borne in mind that it is apparent from Article 52(1) of the Convention on the Grant of European Patents, signed in Munich (Germany) on 5 October 1973, and from Article 27(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (OJ 1994 L 336, p. 214), constituting Annex 1C to the Agreement establishing the World Trade Organization (WTO), signed in Marrakesh (Morocco) on 15 April 1994 and approved by Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1), that a patent can be obtained for any invention, product or process, in all fields of technology, provided that it is new, involves an inventive step and is susceptible of industrial application. Under Article 52(2)(b) of that convention, aesthetic creations are not to be regarded as inventions within the meaning of Article 52(1) of that convention. In addition, Article 56 of that convention provides that an invention is to be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

39 Thus, EUIPO is correct to point out that a patent protects not the appearance of a product, but an invention, and submits that the illustrations in patent specifications are presented only as examples and show one or more forms of that invention. Those illustrations may therefore also show different appearances of the same product, or even different products, capable of giving concrete expression to the protected invention and the advantages and disadvantages of which are explained in those specifications. Consequently, the illustrations in a patent specification do not necessarily concern the same design. It is therefore for an applicant for a declaration of invalidity who refers to a patent specification in order to challenge the individual character of a registered EU design to identify precisely, among the illustrations in such a specification, the earlier designs on which it relies in support of its application.

40 By contrast, in the light of the wording of Article 6(1)(b) of Regulation No 6/2002 – from which it follows unequivocally that only other designs that have previously been made available to the public may prevent the individual character of a registered EU design – a patent or a patent specification, previously made available to the public, cannot be relied on as such to deny the individual character of a registered EU design. As the intervener, in essence, submits, only illustrations in a patent specification can call into question the individual character of a contested design, in so far as the examination of whether such a design has such a character presupposes a comparison of its appearance with that of a specific product (see, to that effect, judgment of 21 May 2015, Senz Technologies v OHIM – Impliva (Umbrellas), T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 24 (not published)). Although those illustrations represent different embodiments of a product in accordance with the invention covered by the patent at issue, it is for the applicant for a declaration of invalidity to identify precisely, among those illustrations, the designs on which it intends to rely as earlier designs within the meaning of Article 6(1)(b) of Regulation No 6/2002.

41 In the present case, it is clear from the passages cited in paragraphs 7 and 8 above, and in particular from points II and III of the statement of reasons, that the intervener considered that only the two Figures 1 included in the patent specifications at issue constituted earlier designs within the meaning of Article 6 of Regulation No 6/2002. As EUIPO and the intervener correctly submit, it was only in relation to those illustrations that the intervener claimed that the overall impression that they produced corresponded to that produced by the contested design, to the extent that only those illustrations constituted earlier design D1 and earlier design D2 in the present case (see paragraphs 5 and 9 above). Thus, the intervener identified precisely the earlier designs on which it relied in support of the application for a declaration of invalidity.

42 It follows that it is necessary to reject the applicant’s arguments by which it claims that the intervener not only relied, in support of the application for a declaration of invalidity, on earlier design D1 and earlier design D2, but, more generally, on the patent specifications at issue in which they appear and therefore also on the other illustrations and description of the invention present there.

43 In those circumstances, contrary to what the applicant claims, it is in no way necessary to consider the invention protected by the patents at issue, since those patents are not relied on by the intervener – and, in any event, are not as such relevant (see paragraph 40 above) – as earlier designs within the meaning of Article 6 of Regulation No 6/2002.

44 For the same reason, the applicant’s argument that it is necessary to rely on the perception of specifically trained experts to determine the overall impression produced by the patents in question must also be rejected. It is not those patents that were relied on as such by the intervener in support of the application for a declaration of invalidity, but only earlier design D1 and earlier design D2, for the assessment of which one must adopt the perspective of an informed user (see paragraph 32 above).

45 Lastly, in so far as the applicant claims that earlier design D1 and earlier design D2 are not ‘legible’ without reference to the other illustrations and explanations also appearing in the patent specifications at issue, the Court finds that, manifestly, those earlier designs, reproduced in paragraphs 5 and 9 above, clearly show a star with several points, some of which may be expected to have a triangular base, whereas others have a square base. Those designs also feature hatching on certain surfaces and dotted lines, which is not unusual for designs of a three-dimensional figure.

46 It is, admittedly, true that it is not possible to understand the references to the explanations contained in earlier design D1 and earlier design D2 in the form of letters without referring to those explanations, which are set out in the descriptive part of the patent specifications in question, and not in those earlier designs themselves. However, those references in no way prevent the appearance of a product from being understood, in particular, by the features of the lines, contours, colours, shape, texture or materials of the product itself or its ornamentation, and therefore of a design within the meaning of Article 3(a) of Regulation No 6/2002.

47 Since the applicant’s arguments in support of the first plea are therefore unfounded, it follows that the Board of Appeal was correct to find that the assessment of the individual character of the contested design had to be carried out in relation only to earlier design D1 and earlier design D2 and that the other elements of the two patent specifications at issue containing those earlier designs, namely the written presentation of the invention and the other illustrations contained therein, could not be taken into account.

48 The first plea in law must therefore be rejected.

The second plea in law, alleging errors of law in that the Board of Appeal found, first, that neither of the designs at issue had concave indentations or curved protrusions and, secondly, that it was not apparent from earlier design D1 or earlier design D2 that those designs were foldable

49 By the second plea in law, the applicant claims that the Board of Appeal erred in law in finding, first, that neither of the designs at issue had concave indentations or curved protrusions and, secondly, that it was not apparent from earlier design D1 or earlier design D2 that those designs were foldable.

50 According to the applicant, it is common ground that the contested design does not have concave indentations and that its points are ‘flat’. As regards earlier design D1 and earlier design D2, even if one does not refer to the patent specifications in which they appear, but only to the designs themselves, it would be difficult to understand why the Board of Appeal did not detect any concave indentations or curved protrusions in them. Earlier design D1 does not show just any star, but a ‘foldable light-emitting star’, and earlier design D2 explicitly refers to a ‘foldable lantern’. A foldable star necessarily has specific design features that allow it to be folded. The technical concept necessary for the ‘Annaberger Faltstern’ shape – which is clearly covered by the patent specifications at issue containing those earlier designs – to be foldable is recognisable only from earlier design D1 and earlier design D2, which have specific features and lines directed towards the centre, designated by the letters ‘n’ and ‘o’. The letter ‘n’ refers to the protrusion represented by hatching, whereas the letter ‘o’ indicates the indentation corresponding to the ‘n’ protrusion. When the star is folded, the indentation aligns perfectly with the protrusion and, in return, the protrusion fits into the indentation, which alone allows the star to be folded. The intervener’s assertion that the specific features of the shape referred to were not depicted therein is incorrect. The inward and outward folds, which are necessary for the functioning of the ‘Annaberger Faltstern’ shape, which is patented, are visible only in earlier design D1 and earlier design D2, thanks to the solid lines, hatching and lines directed towards the centre, without it being necessary to refer to the patent specifications at issue. Those specific features are absent from the contested design. The fact that those same features are expressly indicated by the letters ‘n’ and ‘a’ prompts the informed observer to examine more closely earlier design D1 and earlier design D2, which represent the ‘Annaberger Faltstern’ shape. Even persons who do not infer either from the specific features of the designs, which are clearly visible, or from the letter designations to show that there are indentations and protrusions present are encouraged to take a closer look at the patent specifications at issue and thus understand that it is intended to indicate that the ‘Annaberger Faltstern’ is a foldable shape.

51 According to the applicant, the intervener relied on the two patent specifications at issue against the contested design, the subject matter of which was a ‘foldable light-emitting star’ or a ‘foldable lantern’. The particular feature of the star is apparent from the combination of earlier design D1 and earlier design D2, on the one hand, and the illustrations designated by ‘Fig. 2.’ (Figure 2), which also appear in the patent specifications at issue. Earlier design D1 and earlier design D2 do not in themselves constitute earlier designs, but only a part of those designs.

52 The applicant adds that, in its decision in a parallel case that gave rise to the judgment of 13 December 2023, Light Tec v EUIPO – DecoTrend (Lampshade) (T‑10/23, not published, EU:T:2023:804), although the Board of Appeal had not examined the patent specifications at issue in the present case, also relied on in that parallel case in support of an application for a declaration of invalidity of the contested design submitted by another undertaking, it nevertheless stated that it did not see how the Cancellation Division’s findings in that case, according to which the contested design had individual character in relation to the designs in those patent specifications, were incorrect. The action brought by that other undertaking against that decision of the Board of Appeal in that parallel case was dismissed by that judgment. According to the applicant, the same logic should apply in the present case.

53 EUIPO and the intervener dispute the applicant’s arguments.

54 First of all, it is necessary to reject EUIPO’s argument that the second plea in law is ineffective, since, in the light of the analysis of the first plea, the remittal to the Cancellation Division made by the Board of Appeal in the contested decision was justified. As the applicant correctly submits, under Article 60(2) of Regulation No 6/2002, if the Board of Appeal remits the case for further prosecution to the Cancellation Division, the latter is bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.

55 In the present case, in paragraph 45 of the contested decision, the Board of Appeal noted that it could not identify ‘concave indentations’ in the contested design, in earlier design D1 or earlier design D2 and that it was also not apparent from the examination of those earlier designs that the stars were ‘foldable’. It remitted the case to the Cancellation Division for further prosecution of the invalidity proceedings, taking the view that that would allow the parties to bring an appeal before it against a decision on the merits (paragraphs 52 and 53 of the contested decision and point 2 of the operative part of that decision). Although it is apparent from paragraph 53 of the contested decision that the Board of Appeal found, in essence, that the substance of the application for a declaration of invalidity had not yet been analysed, the fact remains that, as regards the issue of the visibility of ‘concave indentations’ and whether the designs were ‘foldable’, the Board of Appeal did indeed take a final position in that paragraph. Given, moreover, that the facts remain the same, under Article 60(2) of Regulation No 6/2002, the Cancellation Division is bound by those two findings of the Board of Appeal.

56 Next, as regards the contested design, as the applicant correctly points out, it is in fact common ground that it does not have ‘concave indentations’, as the Board of Appeal found in paragraph 45 of the contested decision.

57 As regards earlier design D1 and earlier design D2, the Court finds that it is clear that neither the ‘concave indentations’ nor whether those shapes are ‘foldable’ are apparent from those earlier designs.

58 It is true that earlier design D1 and earlier design D2 contain hatching on certain surfaces, dotted lines and references in the form of solid lines and letters. However, it is not unusual for certain surfaces to be hatched and for certain lines not visible in the view shown to be dotted in a three-dimensional design – as earlier design D1 and earlier design D2 clearly are – precisely in order to make the representation of a three-dimensional object more legible. None of those presentational aspects shows that the object represented has ‘concave indentations’ or that it is an object whose depicted shape is obtained by folding a flat but ‘foldable’ object.

59 In fact, as EUIPO and the intervener correctly observe, by its arguments in support of the second plea, the applicant seeks, in essence, not to rely solely on earlier design D1 and earlier design D2, but rather on the other elements of the patent specifications at issue in which they appear, in particular the other illustrations and the description of the invention referred to in those specifications. It is apparent from the analysis of the first plea in paragraphs 24 to 48 above that, in the present case, the Board of Appeal was correct to find that there was no need to consider those other elements of the patent specifications at issue, which are unrelated to earlier design D1 and earlier design D2 as such.

60 Consequently, for earlier design D1 and earlier design D2, the circumstances highlighted by the applicant are irrelevant, namely those according to which, first, those designs are described as a ‘foldable light-emitting star’ or a ‘foldable lantern’ in the patent specifications at issue, secondly, the ‘Annaberger Faltstern’ shape is referred to in those specifications and, thirdly, those earlier designs contain references to explanations in those same specifications in the form of solid lines and letters.

61 It follows that the Board of Appeal was correct to find that earlier design D1 and earlier design D2 did not contain ‘concave indentations’ and that it was not apparent that they were ‘foldable’ either.

62 Lastly, as regards the applicant’s reference to the decision of the Board of Appeal at issue in the judgment of 13 December 2023, Lampshade (T‑10/23, not published, EU:T:2023:804), suffice it to note, as EUIPO and the intervener have done, that the Board of Appeal had not analysed, in that case, earlier design D1 or earlier design D2 at issue in the present case (which correspond to design D4 and design D3 in that other decision of the Board of Appeal).

63 It is apparent from paragraphs 25 to 27 of the decision of the Board of Appeal referred to in paragraph 62 above that the Board of Appeal first rejected earlier design D1 and earlier design D2 at issue in the present case (corresponding to design D4 and design D3 in that other decision of the Board of Appeal), taking the view that they had been put forward out of time. It then found that the applicant for a declaration of invalidity in that case had not put forward any arguments to rebut the Cancellation Division’s assessment that the contested design possessed individual character in relation to design D1 and design D2 as identified in that other decision, whereas it had argued solely on the basis of earlier design D1 and earlier design D2 at issue in the present case (design D4 and design D3 in that other decision). Lastly, it found that it saw no reason why the Cancellation Division’s statement should be incorrect and, consequently, confirmed it.

64 It is therefore clear that the only ground of the Cancellation Division cited by the Board of Appeal – and thus the only one it was able to uphold – is that concerning design D1 and design D2 as designated in that other decision of the Board of Appeal, which are not at issue in the present case. As regards earlier design D1 and earlier design D2 at issue in the present case (corresponding to design D4 and design D3 in that other decision of the Board of Appeal), that decision merely excludes them from the analysis and finds that the applicant for a declaration of invalidity in that case had nevertheless limited its arguments to those earlier designs. Contrary to what the applicant claims, the Board of Appeal therefore did not take any position as to whether the contested design in the present case had individual character in relation to earlier design D1 and earlier design D2 at issue in the present case (design D4 and design D3 in that other decision).

65 The second plea in law must, therefore, also be rejected.

Conclusion

66 In the light of all the foregoing considerations, since none of the pleas in law relied on by the applicant in support of the form of order sought by it can be upheld, the action must be dismissed in its entirety.

67 As regards the intervener’s first head of claim, it should be noted that it seeks that the Court dismiss the action and declare the contested design invalid. That head of claim may be understood as requesting, in particular, that the Court alter the contested decision within the meaning of Article 61(3) of Regulation No 6/2002 by adopting the decision that the Board of Appeal should have taken, in accordance with the provisions of that regulation.

68 In that regard, it should be noted that the review carried out by the General Court under Article 61 of Regulation No 6/2002 is a review of the legality of the decisions of the EUIPO Boards of Appeal. It may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 61(2) of that regulation. It follows that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 13 May 2015, Group Nivelles v OHIM – Easy Sanitairy Solutions (Shower drainage channel), T‑15/13, EU:T:2015:281, paragraph 89).

69 In the present case, it should be noted, first, that it is apparent from the foregoing that the contested decision is not vitiated by one of the grounds for annulment or alteration set out in Article 61(2) of Regulation No 6/2002 and that, secondly, the Board of Appeal remitted the case to the Cancellation Division for the purposes of continuing the invalidity proceedings, taking the view that that would allow the parties to bring an action before it against a decision on the merits (paragraphs 52 and 53 of the contested decision and point 2 of the operative part of that decision). Thus, the Board of Appeal found, in essence, that the merits of the application for a declaration of invalidity had not yet been analysed by any of the adjudicating bodies of EUIPO.

70 In those circumstances, it is not for the Court to assess the merits of the application for a declaration of invalidity in the context of an application for alteration of the contested decision, since the Board of Appeal has not yet adopted a position in that regard. Consequently, in so far as, by that plea, the intervener asks the Court to declare the contested design invalid, the intervener’s first head of claim cannot be upheld.

71 Furthermore, in so far as, by its second head of claim, the intervener requests the Court to refer the case back to the Cancellation Division, it is sufficient to recall that, since the present judgment dismisses the action brought against the contested decision, it is point 2 of the operative part of that decision that continues to govern the remainder of the invalidity proceedings.

Costs

72 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.

73 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. However, in so far as the intervener has applied for the applicant to be ordered to pay ‘all the costs of the invalidity proceedings’, it must be borne in mind that, since the present judgment dismisses the action brought against the contested decision, it is points 3 and 4 of the operative part of that decision that continue to determine the costs incurred in the proceedings before the Cancellation Division and in the proceedings before the Board of Appeal (see, to that effect, judgment of 25 January 2023, Zielonogórski Klub Żużlowy Sportowa v EUIPO – Falubaz Polska (FALUBAZ), T‑703/21, not published, EU:T:2023:19, paragraph 103 and the case-law cited).

74 By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is held, EUIPO must, in the absence of a hearing, be ordered to bear its own costs.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1. Dismisses the action;

2. Orders DecoTrend GmbH, in addition to bearing its own costs, to pay those incurred by B.K.Licht GmbH & Co. KG;

3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.

Buttigieg

Schwarcz

Tichy-Fisslberger

Delivered in open court in Luxembourg on 1 July 2026.

[Signatures]

* Language of the case: German.

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