DECISION OF. English

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT- DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 21/11/2012 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8606 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Market Gap Kft, LLC Karolina út 34/B H-1113 Budapest, Hungary REPRESENTATIVE OF THE APPLICANT Danubia Szabadaimi és Jogi Iroda Kft Bajcsy-Zsilinszky út 16 H-1051 Budapest, HUNGARY HOLDER Hippsy Kft Ferenc krt / Budapest Hungary REPRESENTATIVE OF THE HOLDER S.B.G. & K. ÜGYVÉDI IRODA Andrássy út 113 H-1062 Budapest Hungary Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Jakub Pinkowski (member) and Ludmila Čelišová (member) has taken the following decision on 21/11/2012: 1. The registered Community design No is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design No (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 12/02/2008. In the RCD, the indication of products reads waist protector / waist warmer. The RCD was published in the Community Designs Bulletin in the following views: ( (2) On 04/11/2011, the Applicant filed a request for a declaration of invalidity (hereinafter the Application ) contesting the validity of the RCD. The Application fee was paid via current account. (3) Using the Office s form, the Applicant has requested a declaration of invalidity of the RCD on the following grounds: - challenged Community design does not correspond to the definition of a design under Article 3(a) CDR 1 ; - challenged Community design does not fulfil the requirements of Articles 4 to 9 CDR; and - other(s) according Article 25(1)(c), (d), (e), (f) or (g) CDR. 1 Council Regulation (EC) No 6/2002 on Community designs 2

3 (4) As evidence, the Applicant submitted, inter alia, the cover page of the German magazine BURDA Moden dated November 1988 and an advertisement in that Magazine of the company MEDIMA including the following picture ( prior design ): (5) The Applicant argues inter alias that the prior design shown in the advertisement is a waist protector to be worn around the waist and the hip. The prior design is a tubular, flexible piece of clothing identical with the contested RCD. The fact that in the contested RCD the warmer is in black could hardly be considered an individual feature. (6) The Holder replies that the contested RCD protects a waist warmer which is tubular in shape as shown in the representation of the RCD from all sides. As regards the earlier public disclosure in the MEDIMA advertisement of November 1988 the Holder claims that the product is totally unrecognizable except that this product is made of angora which is not elastic and does not take the shape of the human body. Furthermore, the Holder argues that the publication of this photo in the German magazine is primarily intended for average consumers rather than professionals and hence does not fulfil the second criterion in Art. 7(1) CDR which requires that the prior design could reasonable have been known in the normal course of business to the circles specialized in the sector concerned. Finally, the Holder argues that in the RCD the colour is an essential feature and that therefore pieces of clothing which are not black cannot be taken into account. The prior design 3

4 has a different function, namely that of back warmer which is worn slightly higher, than the product protected in the RCD, namely waist warmer which is worn lower. Finally, the Holder observes as the big difference in perhaps the most important features that the product under RCD protection is composed of purely cotton and Lycra whereas the MEDIMA products are essentially made of angora and wool. As a result of this the degree of flexibility is considerable different and this they also fit and look differently when worn. (7) For further details to the facts, evidence and arguments submitted by the parties, reference is made to the documents on file. II. GROUNDS OF THE DECISION A. Admissibility (8) The indication of the grounds for invalidity in the Application is a statement of the grounds on which the application is based in the meaning of Article 28(1)(b)(i) CDIR 2. Furthermore, the Application complies with Article 28(1)(b)(vi) CDIR, since the Application contains an indication of the facts, evidence and arguments submitted in support of those grounds. The other requirements of Article 28(1) CDIR are fulfilled as well. The application is thus admissible. B. Substantiation B.1 Disclosure (9) The prior design was published in the November-1988 issue of the fashion magazine BURDA Moden and hence was made available to the public prior to the date of filing of the contested RCD within the meaning of Article 7(1) CDR. (10) The Applicant argues that the magazine is addressed to average consumer and hence could not reasonable have become known in the normal course of business to the circles specialized in the sector concerned. However, the Applicant does not explain what could possible stop an informed user from reading a public magazine which is specialized on the products from the sector s/he is concerned. On the contrary, it seems rather unreasonable to assume that an informed user is less informed than an average consumer. 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs. 4

5 B.2 Novelty (11) According to Article 5 CDR, the RCD lacks novelty when an identical design has been made available to the public prior to the date of filing of the RCD. Designs shall be deemed to be identical if their features differ only in immaterial details. (12) Both the RCD and the prior design relate to warming clothes to be worn around the waste. For the assessment of the novelty (and the individual character) of the RCD it does not matter whether these clothes are worn a little higher ( back warmer ) or lower ( waste warmer ) around the midsection of the body because the function of the product is not a design feature and hence cannot contribute to the novelty and individual character of the design. The type of product may serve as an argument in relation to disclosure, namely as an argument that the products of one sector are not necessarily know to the specialized circles of another sector. However, back warmers and waste warmers are falling in the same sector and hence the distinction between the two products has no legal consequences. (13) Both designs are formed by a rectangular, tubular shaped piece of tissue set in length to around 1/5 of a normal body height. (14) The only visible difference between the RCD and the prior design is the colour. While in the RCD the waist protector is black, in the prior design it is white. The other difference claimed by the Holder, namely the allegedly different texture of the RCD as a result of allegedly different material, is not visible in the representation of the RCD. (15) The colour is not an immaterial feature of a design. Therefore, the RCD and the prior design are not identical. Therefore, the RCD is new within the meaning of Article 5 CDR. B.3 Individual character (16) According to Article 6 CDR, the RCD lacks individual character if the overall impression produced on the informed user is the same as the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the RCD or the date of the priority claimed. In assessing individual character of the RCD, the degree of freedom of the designer in developing the design shall be taken into consideration. (17) The informed user is familiar with the clothes, in particular warming clothes to be worn around the waste. The degree of freedom of the design is limited in so far as these clothes must fit to the human body. 5

6 (18) The RCD and the prior design are identical except for the colour. However, the uniform black colour of the RCD is very common for undergarment, such as waist warmers. Usually, undergarments are equally offered in two colours, namely black and white. Knowing that these clothes are available in black or white, the informed user will not attach much importance to the fact that the warmer of the RCD is showing a model in black colour. The black colour does not bear enough weight to make a significant impact on the overall impression. For this reason, the contested RCD and the prior design produce the same overall impressions on the informed user. The prior design forms an obstacle to the individual character of the RCD. C. Conclusion (19) The RCD is to be declared invalid on the grounds of Article 25(1)(b) CDR due to lack of individual character. III. COSTS (20) Pursuant to Article 70(1) CDR and Art. 79(1) CDIR, the Holder shall bear the fees and the costs of the Applicant. (21) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750 Euro, composed of 400 Euro for the costs of representation and 350 Euro for the reimbursement of the invalidity fee. IV. RIGHT TO APPEAL (22) An appeal shall lie from the present decision. Notice of appeal must be filed at the Office within two months after the date of notification of this decision. The notice is deemed to have been filed only when the fee for appeal has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed (Art. 57 CDR). THE INVALIDITY DIVISION Martin Schlötelburg Jakub Pinkowski Ludmila Čelišová 6