Corte di giustizia UE n. 6/2018

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 14 March 2018 ( * ) ([OSCURATO:PERSONA] design — [OSCURATO:PERSONA] proceedings — [OSCURATO:PERSONA] design representing footwear — [OSCURATO:PERSONA] design — Grounds for invalidity — Duty to state reasons — [OSCURATO:PERSONA] 62 of [OSCURATO:PERSONA] (EC) No 6/2002 — Ground raised by the [OSCURATO:PERSONA] of Appeal of its own motion — Powers of the [OSCURATO:PERSONA] of Appeal — [OSCURATO:PERSONA] 63(1) of [OSCURATO:PERSONA] 6/2002) [OSCURATO:PERSONA] T‑424/16, [OSCURATO:PERSONA], established in Villeneuve-sur-Lot ([OSCURATO:PERSONA]), represented by C. de Chassey, lawyer, applicant, v [OSCURATO:PERSONA] (EUIPO), represented by J. Ivanauskas, acting as Agent, defendant, the other party to the proceedings before the [OSCURATO:PERSONA] of Appeal of EUIPO, and intervener before the [OSCURATO:PERSONA], being [OSCURATO:PERSONA], Inc., established in Niwot, Colorado ([OSCURATO:PERSONA]), represented by H. Seymour, L. Cassidy, J. Guise and D. Knight, Solicitors, N. [OSCURATO:PERSONA], M. Berger and H. Haouideg, lawyers, ACTION brought against the decision of the [OSCURATO:PERSONA] of Appeal of EUIPO of 25 April 2016 ([OSCURATO:PERSONA] R 37/2015-3), relating to invalidity proceedings between [OSCURATO:PERSONA] and [OSCURATO:PERSONA], [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of V. Tomljenović, [OSCURATO:PERSONA], A. [OSCURATO:PERSONA] and A. [OSCURATO:PERSONA] (Rapporteur), [OSCURATO:PERSONA], [OSCURATO:PERSONA]: I. Dragan, Administrator, having regard to the application lodged at the [OSCURATO:PERSONA] on 5 August 2016, having regard to the response of EUIPO lodged at the [OSCURATO:PERSONA] on 16 November 2016, having regard to the response of the intervener lodged at the [OSCURATO:PERSONA] on 17 November 2016, further to the hearing on 25 October 2017, gives the following [OSCURATO:PERSONA] to the dispute 1 On 30 May 2007, the intervener, [OSCURATO:PERSONA]., filed an application for registration of a [OSCURATO:PERSONA] design with the [OSCURATO:PERSONA] (EUIPO), under [OSCURATO:PERSONA] (EC) No 6/2002 of 12 December 2001 on [OSCURATO:PERSONA] designs (OJ 2002 L 3, p. 1), claiming the priority of a US design patent application filed on 4 December 2006. 2 The goods to which the contested design is intended to be applied are in Class 02‑04 of the [OSCURATO:PERSONA] of 8 October 1968 establishing an [OSCURATO:PERSONA] for [OSCURATO:PERSONA], as amended, and correspond to the following description: ‘Footwear’. 3 The contested design was registered as [OSCURATO:PERSONA] 733 282-0001 and published in [OSCURATO:PERSONA] 115/2007 of 28 August 2007. 4 On 25 June 2013, the applicant, [OSCURATO:PERSONA], filed an application for a declaration of invalidity of the contested design with EUIPO, pursuant to [OSCURATO:PERSONA] 52 of [OSCURATO:PERSONA] 6/2002, read in conjunction with [OSCURATO:PERSONA] 25(1)(b) thereof. 5 In support of that application, the applicant claimed, first, that the contested design lacked novelty within the meaning of [OSCURATO:PERSONA] 5 of [OSCURATO:PERSONA] 6/2002, by reason, inter alia, of prior disclosure of the following earlier designs: –        [OSCURATO:PERSONA] design No 257 001-0001 (‘[OSCURATO:PERSONA] D 1’) ; –        the [OSCURATO:PERSONA] clog (‘[OSCURATO:PERSONA]’); –        the Dawgs clog (‘[OSCURATO:PERSONA] D 2’); –        the Danaud clog (‘[OSCURATO:PERSONA] D 3’); –        the Blachette clog (‘[OSCURATO:PERSONA] D 4’); –        the Dansko clog (‘[OSCURATO:PERSONA] D 5’); –        the Oomphies clog (‘[OSCURATO:PERSONA] D 6’); –        the UGG 2004 clog (‘[OSCURATO:PERSONA] D 7’); –        the Simple clog (‘[OSCURATO:PERSONA] D 8’); –        the [OSCURATO:PERSONA] clog (‘[OSCURATO:PERSONA] D 9’); –        the Rocketdog clog (‘[OSCURATO:PERSONA] D 10’); –        the Foamtreads clog (‘[OSCURATO:PERSONA] D 11’); –        the UGG 2005, [OSCURATO:PERSONA] and Quelle clogs (‘[OSCURATO:PERSONA] D 12a’, ‘[OSCURATO:PERSONA] D 12b’ and ‘[OSCURATO:PERSONA] D 12c’); –        the Romika clog (‘[OSCURATO:PERSONA] D 13’); –        the Dresco clog (‘[OSCURATO:PERSONA] D 14’); –        the Yves clog (‘[OSCURATO:PERSONA] D 15’); –        [OSCURATO:PERSONA] 333 281-0007 and No 333 281-0030 (‘[OSCURATO:PERSONA] D 16a’ and ‘[OSCURATO:PERSONA] D 16b’); –        the [OSCURATO:PERSONA] clog (‘[OSCURATO:PERSONA] D 17’); –        [OSCURATO:PERSONA] DM/051759-1 and DM/051759-2 (‘[OSCURATO:PERSONA] D 18a’ and ‘[OSCURATO:PERSONA] D 18b’); –        [OSCURATO:PERSONA] DM/062646-1 (‘[OSCURATO:PERSONA] D 19’). 6 In its observations submitted before the [OSCURATO:PERSONA] on 3 July 2014, in response to the intervener’s observations on the application for a declaration of invalidity, the applicant maintained that the contested design lacked novelty by reason also of prior disclosure of the following earlier designs: –        the Aquaclog clog (‘[OSCURATO:PERSONA] D 20’); –        the C & A clog (‘[OSCURATO:PERSONA] D 22’). 7 Secondly, in its application for a declaration of invalidity of 25 June 2013 the applicant claimed that the contested design was also devoid of individual character within the meaning of [OSCURATO:PERSONA] 6 of [OSCURATO:PERSONA] 6/2002 because the overall impression it produced was similar to that of [OSCURATO:PERSONA] D 1. 8 In its observations submitted before the [OSCURATO:PERSONA] on 3 July 2014, the applicant added that the contested design was devoid of individual character not only in relation to [OSCURATO:PERSONA] D 1 but also in relation to [OSCURATO:PERSONA] D 18a, D 18b and D 19, on which it had already relied in its application for a declaration of invalidity in support of its contention that the contested design lacked novelty, as well as in relation to three other earlier designs producing the same overall impression as the contested design, namely [OSCURATO:PERSONA] D 20 and D 22 and the intervener’s [OSCURATO:PERSONA] 61122-0001 (‘[OSCURATO:PERSONA] D 21’). 9 By decision of 4 November 2014, the [OSCURATO:PERSONA] declared the contested design invalid due to lack of individual character in relation to [OSCURATO:PERSONA] D 1. In that decision, the [OSCURATO:PERSONA] did not examine the other designs invoked by the applicant. 10 On 2 January 2015, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of [OSCURATO:PERSONA] 6/2002, against the decision of the [OSCURATO:PERSONA]. The arguments in support of the intervener’s appeal only sought to demonstrate that the contested design had individual character in relation to [OSCURATO:PERSONA] D 1. 11 In its observations of 9 April 2015, the applicant argued, inter alia, that the [OSCURATO:PERSONA] had been right in finding that the contested design lacked individual character in relation to [OSCURATO:PERSONA] D 1. In addition, the applicant submitted that the contested design lacked individual character also in relation to [OSCURATO:PERSONA] D 18 to D 22. 12 By decision of 25 April 2016 (‘the contested decision’), the [OSCURATO:PERSONA] of Appeal of EUIPO upheld the appeal, annulled the [OSCURATO:PERSONA] decision and dismissed the application for a declaration of invalidity. 13 [OSCURATO:PERSONA] of Appeal stated at the outset, in paragraph 14 of the contested decision, that, with regard to the scope of its review, the [OSCURATO:PERSONA] had, ‘presumably on grounds of procedural economy’, examined the contested design in relation only to [OSCURATO:PERSONA] D 1, which, in its view, called into question the individual character of the contested design, without examining [OSCURATO:PERSONA] D 2 to D 17, on which the applicant had also based its application for a declaration of invalidity. [OSCURATO:PERSONA] of Appeal took the view, in paragraphs 15 and 30 of the contested decision, that it was necessary to re-examine the application for a declaration of invalidity in its entirety given that, first, the intervener had lodged an appeal and, secondly, [OSCURATO:PERSONA] D 1 did not invalidate the individual character (or novelty) of the contested design. 14 [OSCURATO:PERSONA] of Appeal then held, in paragraphs 32 to 108 of the contested decision, that [OSCURATO:PERSONA] D 2 to D 17 did not call into question the individual character or novelty of the contested design. Procedure and forms of order sought 15 By application lodged at the [OSCURATO:PERSONA] on 5 August 2016, the applicant brought the present action. 16 EUIPO and the intervener lodged their responses on 16 and 17 November 2016 respectively. 17 By letters of the [OSCURATO:PERSONA] of 14 September 2017, the [OSCURATO:PERSONA] sent written questions to the parties, by way of measures of organisation of procedure. EUIPO and the intervener replied within the time limit prescribed, while the applicant, having been duly notified, failed to lodge a written reply and replied to the questions at the hearing. 18 The parties presented oral argument and replied to the oral questions put by the [OSCURATO:PERSONA] at the hearing on 25 October 2017. 19 The applicant claims that the [OSCURATO:PERSONA] should: –        annul the contested decision; –        declare the contested design invalid; –        order EUIPO to pay the costs. 20 EUIPO contends that the [OSCURATO:PERSONA] should: –        dismiss the action; –        order the applicant to pay the costs incurred by EUIPO. 21 The intervener contends that the [OSCURATO:PERSONA] should: –        uphold the contested decision; –        uphold the contested design; –        dismiss the application for a declaration of invalidity; –        make an award of costs in its favour. Law 22 In support of its action, the applicant raises two pleas in law, alleging, first, infringement of [OSCURATO:PERSONA] 6 of [OSCURATO:PERSONA] 6/2002 and, secondly, infringement of [OSCURATO:PERSONA] 62 and [OSCURATO:PERSONA] 63(1) of the regulation. 23 [OSCURATO:PERSONA] will begin by examining the second plea. The second plea in law, alleging infringement of [OSCURATO:PERSONA] 62 and [OSCURATO:PERSONA] 63(1) of [OSCURATO:PERSONA] 6/2002 24 In the context of its second plea, the applicant alleges infringement of [OSCURATO:PERSONA] 62 of [OSCURATO:PERSONA] 6/2002, which lays down EUIPO’s duty to state reasons, and of [OSCURATO:PERSONA] 63(1) of the regulation, in that the [OSCURATO:PERSONA] of Appeal failed to examine all the evidence produced by the applicant. The evidence covered by the second plea concerns [OSCURATO:PERSONA] D 18a and D 18b, D 19, D 20, D 21 and D 22 as well as the [OSCURATO:PERSONA]. 25 On the one hand, EUIPO submits that the applicant’s appeal is limited to [OSCURATO:PERSONA] 6 of [OSCURATO:PERSONA] 6/2002 and that ‘all the remaining designs referred to by the applicant in the current proceedings [other than [OSCURATO:PERSONA] D 1], including those listed [in paragraph 24 above], are inadmissible in respect of the ground [for] invalidity of [OSCURATO:PERSONA] 6 [of [OSCURATO:PERSONA] 6/2002]’. On the other hand, EUIPO considers that the [OSCURATO:PERSONA] of Appeal was not required to examine those designs given that, first, [OSCURATO:PERSONA] D 20 to D 22 were invoked at a late stage of the proceedings and, secondly, although [OSCURATO:PERSONA] D 18a, D 18b, D 19 and the [OSCURATO:PERSONA] already appeared in the application for a declaration of invalidity, they were not invoked with sufficient clarity and precision, in breach of [OSCURATO:PERSONA] 28(1)(b)(v) of [OSCURATO:PERSONA] (EC) No 2245/2002 of 21 October 2002 implementing [OSCURATO:PERSONA] 6/2002 (OJ 2002 L 341, p. 28). 26 The intervener argues that the [OSCURATO:PERSONA] of Appeal was under no obligation to address every earlier design separately and explicitly. 27 As a preliminary point, assuming that EUIPO’s argument referred to in the first sentence of paragraph 25 above seeks to dispute the admissibility of the applicant’s second plea, on the one hand, it should be noted that that plea does not allege infringement of [OSCURATO:PERSONA] 6 of [OSCURATO:PERSONA] 6/2002 but rather infringement of Articles 62 and 63 thereof, in that the [OSCURATO:PERSONA] of Appeal allegedly failed to comply with EUIPO’s duty to state reasons and failed to examine all the evidence produced by the applicant. On the other hand, in any event, all the designs mentioned in paragraph 24 above, except the [OSCURATO:PERSONA], were referred to during the administrative procedure in respect of [OSCURATO:PERSONA] 6 of [OSCURATO:PERSONA] 6/2002: [OSCURATO:PERSONA] D 18a, D 18b and D 19, after being referred to in the application for a declaration of invalidity to show that the contested design lacked novelty, were subsequently also invoked in the observations submitted before the [OSCURATO:PERSONA] in support of the argument that the contested design was also devoid of individual character; as to [OSCURATO:PERSONA] D 20, D 21 and D 22, they were invoked in those observations to support the claim that the contested design lacked individual character in particular. 28 With regard to substance, by its second plea, the applicant criticises the [OSCURATO:PERSONA] of Appeal, inter alia, for failing to comply with its duty to state reasons laid down in [OSCURATO:PERSONA] 62 of [OSCURATO:PERSONA] 6/2002, by failing to take account, in the contested decision, of the earlier designs mentioned in paragraph 24 above. 29 [OSCURATO:PERSONA] the first sentence of [OSCURATO:PERSONA] 62 of [OSCURATO:PERSONA] 6/2002, decisions of EUIPO are to state the reasons on which they are based. The duty to state reasons, thus laid down, has the same scope as that under [OSCURATO:PERSONA] 296 TFEU. It is settled case-law that the statement of reasons required by that article must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and enable the competent court to exercise its power of review (judgments of 25 April 2013, Bell & Ross v OHIM — KIN (Wristwatch case) , T‑80/10, not published, EU:T:2013:214, paragraph 37; of 9 February 2017, Mast-Jägermeister v EUIPO (Beakers) , T‑16/16, EU:T:2017:68, paragraph 58; and of 16 February 2017, [OSCURATO:PERSONA] v EUIPO — [OSCURATO:PERSONA] (Thermosiphons for radiators) , T‑828/14 and T‑829/14, EU:T:2017:87, paragraph 82). 30 In that regard, the [OSCURATO:PERSONA] notes, as did the applicant, that the contested decision contains no mention of any sort of [OSCURATO:PERSONA] D 18 to D 22. 31 While in paragraph 15 of the contested decision, under the heading ‘Scope of review by the [OSCURATO:PERSONA] of Appeal’, the [OSCURATO:PERSONA] of Appeal observed that, in the present case, the application for a declaration of invalidity needed to be re-examined ‘in its entirety’, it nevertheless restricted its examination to a comparison between the contested design and [OSCURATO:PERSONA] D 1 to D 17, thus failing to express a view on [OSCURATO:PERSONA] D 18 to D 22. 32 However, the [OSCURATO:PERSONA] observes, first, that the latter designs were all invoked by the applicant and that, secondly, they are separate from [OSCURATO:PERSONA] D 1 to D 17, which the [OSCURATO:PERSONA] of Appeal examined. 33 EUIPO seeks to compensate the absence of any statement of reasons in the contested decision in relation to the abovementioned designs by putting forward, for the first time before the [OSCURATO:PERSONA], two grounds seeking to demonstrate that the [OSCURATO:PERSONA] of Appeal was under no obligation to take account of those earlier designs, alleging, first, that [OSCURATO:PERSONA] D 20 to D 22 were invoked at a late stage of the proceedings and, secondly, that [OSCURATO:PERSONA] D 18a, D 18b and D 19 were not invoked with sufficient clarity and precision in the application for a declaration of invalidity. 34 It is not possible, however, to give such additional statement of reasons for the first time before the [OSCURATO:PERSONA]. It must be remembered that the statement of reasons on which a measure is based must be provided to the person concerned by the measure before the latter brings an action against it and that non-compliance with the duty to state reasons cannot be regularised by the fact that the person concerned becomes cognisant thereof during proceedings before the EU judicature (see, to that effect and by analogy, judgment of 11 December 2012, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] , T‑15/11, EU:T:2012:661, paragraph 56 and the case-law cited). The possibility for an EU institution or body to plead such supplementary grounds in order to complete the grounds set out in the contested decision would undermine the rights of defence of the party concerned and his right to an effective judicial remedy, as well as the principle of equality of parties before the EU judicature (see judgment of 11 December 2014, CEDC [OSCURATO:PERSONA] v OHIM — Underberg (Shape of a blade of grass in a bottle) , T‑235/12, EU:T:2014:1058, paragraphs 71 and 72 and the case-law cited). 35 It is true that the grounds may be implicit on condition that they enable the persons concerned to ascertain the reasons for the measures in question and provides the competent court with sufficient material for it to exercise its power of review (see, to that effect, judgments of 7 January 2004, [OSCURATO:PERSONA] and Others v [OSCURATO:PERSONA] , C‑204/00 P, C‑205/00 P, C‑211/00 P, C‑213/00 P, C‑217/00 P and C‑219/00 P, EU:C:2004:6, paragraph 372 and the case-law cited, and of 8 February 2007, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] , C‑3/06 P, EU:C:2007:88, paragraph 46 and the case-law cited). Reasons that are not made explicit can accordingly be taken into account if they are obvious, both to the persons concerned and to the competent court (judgment of 25 March 2015, [OSCURATO:PERSONA] of Iran v [OSCURATO:PERSONA] , T‑563/12, EU:T:2015:187, paragraph 77). 36 The question whether the statement of reasons on which a decision is based satisfies those requirements must be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (judgments of 7 April 2016, [OSCURATO:PERSONA] of Iran v [OSCURATO:PERSONA] , C‑266/15 P, EU:C:2016:208, paragraph 24, and of 8 March 2013, [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] e [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) , T‑498/10, not published, EU:T:2013:117, paragraph 56). 37 In the present case, it is clear that, in the light of the [OSCURATO:PERSONA] of Appeal’s assertion that it was required to re-examine the application for a declaration of invalidity in its entirety, followed by a one-by-one examination of the contested design in relation only to [OSCURATO:PERSONA] D 1 to D 17, it is impossible to infer from the wording of the contested decision, or the context in which it appears, what is the implied reasoning justifying the failure to take into account [OSCURATO:PERSONA] D 18 to D 22. 38 First, as regards the argument raised by EUIPO in the present proceedings, alleging that some of the abovementioned designs were invoked at a late stage, suffice it to recall that, according to the case-law, the exercise by the [OSCURATO:PERSONA] of Appeal of its discretion to decide whether or not to take into account evidence produced late requires the [OSCURATO:PERSONA] of Appeal to give reasons for its decision on that point (judgments of 13 March 2007, OHIM v Kaul , C‑29/05 P, EU:C:2007:162, paragraph 43; of 18 July 2013, [OSCURATO:PERSONA] SHK Jeans v OHIM , C‑621/11 P, EU:C:2013:484, paragraph 23; and of 26 September 2013, [OSCURATO:PERSONA] v OHIM and centrotherm [OSCURATO:PERSONA] , C‑610/11 P, EU:C:2013:593, paragraph 78). Accordingly, assuming that the [OSCURATO:PERSONA] of Appeal considered that [OSCURATO:PERSONA] D 18 to D 22, or some of them, had been invoked out of time, it was required to give reasons for its decision in that regard. 39 Secondly, concerning EUIPO’s claim, also put forward in the present proceedings, that [OSCURATO:PERSONA] D 18a, D 18b and D 19 were not invoked with sufficient clarity and precision, it should be noted that the application for a declaration of invalidity contained not only the indication and the reproduction of [OSCURATO:PERSONA] D 18a, D 18b and D 19 but also documents proving the existence of those earlier designs, in the form of screenshots and copies of journals. If, admittedly, in that application those designs were mentioned in relation to the date of disclosure of [OSCURATO:PERSONA] D 1, it was to support the argument that the contested design lacked novelty, which is developed in Section I of the application for a declaration of invalidity, where those designs were produced. Moreover, the applicant referred to those designs, both in its observations of 3 July 2014 and before the [OSCURATO:PERSONA] of Appeal to support its contention that the contested design lacked individual character in particular, with the result that EUIPO cannot validly claim that the reference thereto was so manifestly lacking clarity and precision that the [OSCURATO:PERSONA] of Appeal was relieved of its obligation to give reasons for its decision in that regard. 40 In addition, and in any event, since they are not apparent from the contested decision, the applicant was unable to ascertain the reasons for the measure taken within the meaning of the case-law cited in paragraph 29 above and thus put forward its arguments in respect of those reasons. 41 It is appropriate also to reject the intervener’s argument that, pursuant to the [OSCURATO:PERSONA] of Appeal’s duty to state reasons under the first sentence of [OSCURATO:PERSONA] 62 of [OSCURATO:PERSONA] 6/2002, it was not required to examine every prior design separately and explicitly. It must be borne in mind in that regard that it is sufficient that the contested design lacks novelty or is devoid of individual character, within the meaning of [OSCURATO:PERSONA] 5 and [OSCURATO:PERSONA] 6(1) of [OSCURATO:PERSONA] 6/2002, in relation to a single one of the earlier designs relied on by the applicant for the application for a declaration of invalidity submitted by the applicant to be well founded. Furthermore, according to the case-law, the assessment as to whether a design has individual character must be conducted in relation to one or more specific, individualised, defined and identified designs from among all the designs which have been made available to the public previously (judgment of 19 June 2014, [OSCURATO:PERSONA] , C‑345/13, EU:C:2014:2013, paragraph 25). Consequently, the [OSCURATO:PERSONA] of Appeal was, in principle, required to examine the contested design in relation to every earlier design duly invoked in that respect, which it has, moreover, pointed out in the present case, recalling that it was required to re-examine the application for a declaration of invalidity in its entirety (see paragraph 37 above). 42 Therefore, it must be concluded that, in the absence of any statement of reasons in respect of [OSCURATO:PERSONA] D 18 to D 22, the contested decision is vitiated by a failure to state reasons. 43 Accordingly, the second plea in law must be upheld, without there being any need to examine the other complaints put forward by the applicant in the context of that plea, and the contested decision must be annulled in its entirety. 44 [OSCURATO:PERSONA] nevertheless considers it appropriate, in the circumstances of the present case, to also examine the question whether the [OSCURATO:PERSONA] of Appeal has exceeded the limits of its powers by examining the individual character of the contested design in relation to [OSCURATO:PERSONA] D 2 to D 17, although the applicant had invoked those designs only for the purpose of calling into question the novelty of the contested design. This being a plea raised of its own motion, the [OSCURATO:PERSONA] has asked the parties to submit their observations on this issue by adopting a measure of organisation of procedure. Whether the [OSCURATO:PERSONA] of Appeal exceeded the limits of its powers 45 The second sentence of [OSCURATO:PERSONA] 63(1) of [OSCURATO:PERSONA] 6/2002 restricts EUIPO’s examination, in proceedings relating to a declaration of invalidity, to the facts, evidence and arguments provided by the parties and the relief sought. According to established case-law concerning the [OSCURATO:PERSONA] trade mark, applicable mutatis mutandis to [OSCURATO:PERSONA] designs, the [OSCURATO:PERSONA] of Appeal, when hearing an appeal against a decision terminating invalidity proceedings, may base its decision only on the grounds that the party concerned has relied on and the related facts and evidence it has presented (see judgment of 27 October 2005, [OSCURATO:PERSONA] v OHIM — Orange (MOBILIX) , T‑336/03, EU:T:2005:379, paragraph 33 and the case-law cited). 46 Here, it is common ground that, during the administrative procedure, [OSCURATO:PERSONA] 6 of [OSCURATO:PERSONA] 6/2002 was never invoked by the applicant in relation to [OSCURATO:PERSONA] D 2 to D 17. However, in the contested decision, the [OSCURATO:PERSONA] of Appeal examined [OSCURATO:PERSONA] D 2 to D 17 for the purpose of assessing both the novelty of the contested design within the meaning of [OSCURATO:PERSONA] 5 of [OSCURATO:PERSONA] 6/2002 and its individual character within the meaning of [OSCURATO:PERSONA] 6 thereof. 47 In so doing, the [OSCURATO:PERSONA] of Appeal has exceeded the limits of its powers and, consequently, infringed [OSCURATO:PERSONA] 63(1) of [OSCURATO:PERSONA] 6/2002. Indeed, while the [OSCURATO:PERSONA] of Appeal had jurisdiction, by devolutive effect, to decide the case again, as lodged before the [OSCURATO:PERSONA], and therefore examine whether the contested design was new in relation to [OSCURATO:PERSONA] D 2 to D 17, it is clear that, in examining the individual character of the contested design in relation to [OSCURATO:PERSONA] D 2 to D 17, it has gone beyond the facts, evidence and arguments provided by the parties and the relief sought within the meaning of the second sentence of [OSCURATO:PERSONA] 63(1) of [OSCURATO:PERSONA] 6/2002, since the ‘party concerned’ within the meaning of the case-law cited in paragraph 45 above had never invoked a ground for invalidity alleging the lack of individual character of the contested design in relation to [OSCURATO:PERSONA] D 2 to D 17 nor produced those designs as facts and evidence relating to such a ground, but, on the contrary, had restricted that ground for invalidity to [OSCURATO:PERSONA] D 1 and D 18 to D 22. 48 To accept that the [OSCURATO:PERSONA] of Appeal can examine of its own motion a ground for invalidity not invoked by the applicant would, moreover, deprive the applicant of the opportunity to put forward its arguments on that ground, all the more so because the ground for invalidity examined of its own motion by the [OSCURATO:PERSONA] of Appeal entailed, in the present case, the assessment of different legal criteria, concerning two separate grounds for invalidity. In particular, the wording of [OSCURATO:PERSONA] 6 goes beyond that of [OSCURATO:PERSONA] 5 of [OSCURATO:PERSONA] 6/2002 and a contested design may be regarded as being new within the meaning of [OSCURATO:PERSONA] 5 of that regulation while lacking individual character within the meaning of [OSCURATO:PERSONA] 6 thereof (see, to that effect, judgment of 6 June 2013, Kastenholz v OHIM — Qwatchme (Watch dials) , T‑68/11, EU:T:2013:298, paragraph 38). In that regard, the [OSCURATO:PERSONA] finds that the applicant was not given the possibility to put forward arguments showing that [OSCURATO:PERSONA] D 2 to D 17 produced the same overall impression as the contested design within the meaning of [OSCURATO:PERSONA] 6 of [OSCURATO:PERSONA] 6/2002. [OSCURATO:PERSONA] of Appeal itself stated on several occasions in the contested decision that the applicant ‘d[id] not give any explanation as to why these clogs should produce the same overall impression as the contested [design]’, without thereby taking account of the fact that this absence of explanation was due precisely to the fact that it had not invoked that ground for invalidity. 49 Given that the merits of the second plea result in the annulment of the contested decision in its entirety, as has been held in paragraph 43 above, the present action must be upheld, without there being any need to examine either the consequences for the legality of the contested decision of the [OSCURATO:PERSONA] of Appeal exceeding the limits of its powers or the first plea in law. 50 It is appropriate also, consequently, to reject the intervener’s heads of claims seeking an order from the [OSCURATO:PERSONA] upholding both the contested decision and the contested design, without there being any need to rule on their admissibility (see, to that effect, judgment of 6 October 2011, [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] for all mankind ([OSCURATO:PERSONA]) , T‑176/10, not published, EU:T:2011:577, paragraph 56). 51 Moreover, as regards the applicant’s head of claim seeking a declaration by the [OSCURATO:PERSONA] that the contested design is invalid, it must be held that, in the absence of any statement of reasons in the contested decision in relation to [OSCURATO:PERSONA] D 18 to D 22, the [OSCURATO:PERSONA] cannot substitute its own reasoning for that of the [OSCURATO:PERSONA] of Appeal nor carry out an assessment on which that [OSCURATO:PERSONA] of Appeal has not yet adopted a position (see judgment of 13 May 2015, [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] (Shower drainage channel) , T‑15/13, EU:T:2015:281, paragraph 89 and the case-law cited). In those circumstances, and assuming that that head of claim seeks, in fact, alteration of the contested decision (see, to that effect, judgment of 28 January 2016, [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) , T‑674/13, not published, EU:T:2016:44, paragraph 98), it is clear the conditions for the exercise of the [OSCURATO:PERSONA]’s power to alter decisions under [OSCURATO:PERSONA] 61(3) of [OSCURATO:PERSONA] 6/2002 are not satisfied. Accordingly, the [OSCURATO:PERSONA] is not in a position to determine the decision that the [OSCURATO:PERSONA] of Appeal was required to take and thus cannot exercise its power to alter decisions. 52 Therefore, the applicant’s second head of claim must be rejected. Costs 53 [OSCURATO:PERSONA] 134(1) of the Rules of Procedure of the [OSCURATO:PERSONA], the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant. 54 In accordance with [OSCURATO:PERSONA] 138(3) of the Rules of Procedure, the intervener must bear its own costs. On those grounds, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby: 1. Annuls the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 25 April 2016 ([OSCURATO:PERSONA] R 37/2015-3) concerning invalidity proceedings between [OSCURATO:PERSONA] and [OSCURATO:PERSONA], Inc.; 2. [OSCURATO:PERSONA] EUIPO to bear its own costs and pay those incurred by [OSCURATO:PERSONA] in the proceedings before the [OSCURATO:PERSONA]; 3. [OSCURATO:PERSONA] to bear its own costs. Tomljenović [OSCURATO:PERSONA] in open court in Luxembourg on 14 March 2018. E. Coulon V. Tomljenović [OSCURATO:PERSONA] * Language of the case: English.