OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 20/06/2014.

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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 20/06/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9267 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT PEDRO ALMEIDA, SOC. UNIP., LDA Rua Dra. Dulce Barros Moura, lote Felgueiras Dr Germano Marques Neto Edifício da Estação, 1 andar Largo 5 de Agosto Vizela HOLDER REPRESENTATIVE OF THE HOLDER FERREIRA & FERREIRA, COMÉRCIO DE CALÇADO, LDA Rua Dr Luís Gonzaga Fonseca Moreira, n 169 P Felgueiras SIMÕES, GARCIA, CORTE-REAL & ASSOCIADOS - CONSULTORES, LDA. Rua Castilho, 167, 2º andar Lisboa Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Martin Schlötelburg (member), takes the following decision on 20/06/2014: 1. The application for a declaration of invalidity of registered Community design No is rejected. 2. The Applicant shall bear the costs of the Holder. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No (the RCD) was registered in the name of the Holder with the filing date of 30/05/2013. The RCD s indication of products reads boots, and the design was published in the Community Designs Bulletin in the following views: ( (2) On 16/09/2013, the Applicant filed an application for a declaration of invalidity (the Application). (3) The Applicant requests a declaration of invalidity of the RCD on the grounds that the RCD does not fulfil the requirements of Articles 4 to 9 of Council Regulation (EC) No 6/2002 on Community designs (CDR). (4) As evidence, the Applicant provides: - three screenshot printouts of a personal computer directory and correspondence; - four screenshot printouts from the website shop.nordstrom.com containing the following images of the Pakros Low boot (the prior design) and a customer review of this boot dated 15/11/2011; 2

3 - a CD of these screenshots. (5) In the reasoned statement, the Applicant claims that the RCD lacks novelty and individual character because a design identical to the RCD was disclosed before the RCD registration date as proved by the documents submitted. The Applicant created the prior design as Rookie ladies boots in 2011, and showed this model to its customers. It was also commercialised by other undertakings, as proven by its disclosure on Nordstrom website. (6) In the response, the Holder claims that the evidence contains photograph files stored locally on a private server, which have no probative value because all the data relating to them can easily be altered, and they do not prove public disclosure of the designs shown in them. The website screenshots of boots are undated and the only screenshot which does bear a date does not contain any image of a design. Moreover, the designs shown in the documents are not identical to the RCD and they do not produce the same overall impression. The Holder asks that the application be rejected. (7) In the response to the Holder s observations, the Applicant argues that its invalidity Application contains a CD proving that all documents and photograph dates are true and that they were not altered. In support of the claimed disclosure of the design, the Applicant submits the following documents: - eight invoices issued by the Applicant in the name of different undertakings based in Sweden, France, Germany and Denmark; the invoices list various men s and ladies boots, and are dated between 14/10/2010 and 29/09/2011; - three screenshot printouts of a personal computer directory and correspondence containing images of a boot model called Cupcake ; - a CD of these screenshots. (8) In its rejoinder, the Holder reiterates that the evidence submitted by the Applicant has no probative value and does not constitute disclosure of any designs within the meaning of Article 7(1) CDR. It also argues that the invoices submitted more recently by the Applicant do not contain the alleged prior design called Rookie and that the Cupcake model was not mentioned in the invalidity Application. Notwithstanding these findings, none of the designs submitted by the Applicant is identical to the RCD or produces similar overall impression. (9) For further details of the facts, evidence and arguments submitted by the parties, reference is made to the documents on file. 3

4 II. GROUNDS OF THE DECISION A. Admissibility (10) The grounds for invalidity are stated in the Application as required in Article 28(1)(b)(i) CDIR 1. The Application is admissible since it contains an indication of the facts, evidence and arguments submitted in support of those grounds pursuant to Article 28(1)(b)(vi) CDIR, and since it meets the other requirements of Article 28(1) CDIR. B. Substantiation B.1 Disclosure (11) According to Article 7 CDR for the purpose of applying Articles 5 and 6, a prior design shall 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 of filing of the application for registration of the contested design, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. (12) The three screenshots of a computer directory do not prove disclosure of the designs shown in them. Contents of personal computers are, under normal circumstances, not accessible to the public, and there is no evidence on file that they were made available for public inspection. The images and the files in the directory may bear the date when the files were created or the photographs taken; nonetheless, this date is not the date of disclosure of the design to the public. As noted above, there is no evidence on file that these files and images were available to the public on the dates specified. A mere assertion by the Applicant that the photographs and files were shown to its business partners is insufficient. (13) The screenshot of an sent to a third party with an image of a design in the attachment, if not supported by further evidence, does not prove disclosure of the attached design beyond reasonable doubt because the could easily have been created at any time or the dates on which it was sent or received could have been modified. The CDs submitted do not dispel these doubts. The invoices provided do not contain items bearing the same indications as the designs in the attachments, namely Rookie and Rookie C32. Therefore, the correspondence does not prove disclosure of any prior design either. (14) The screenshots containing designs of Cupcake boots, submitted in the Applicant s response to the Holder s observations, are not taken into consideration. According to the Office s Guidelines for Examination of Design Invalidity Applications, Section , the subject matter of the proceedings must be defined in the application. Reliance on additional earlier designs 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs. 4

5 and/or rights is inadmissible when submitted at the belated procedural stage of the reply if the effect is to alter the subject matter of the proceedings. (15) The Pakros Low boot, disclosed on the Nordstrom website in the views shown above, was assessed by one customer who posted their review on the Nordstrom webpage on 15/11/2011. The screenshot containing the review bears the same article number in its internet address as the screenshots containing the images of the boot. The screenshots are taken from the same webpage. (16) Although the webpage does not bear the date of disclosure of the design itself, it is reasonable to assume that the customer submitting the review was acquainted with the design of Pakros Low boots advertised on that webpage before the date on which the customer posted the review. It is not necessary to know the exact date of disclosure if the disclosure took place at a point in time that can be identified with reasonable certainty as being prior to the filing date of the contested RCD (see judgment of 14/06/2011, T-68/10, Watch attached to a lanyard, paragraphs 31-32). In the present case, the review was posted on the webpage more than one year before the filing date of the RCD. The prior design is therefore deemed to have been made available to the public for the purposes of applying the tests of novelty and individual character pursuant to Article 7(1) CDR. B.2 Novelty (17) According to Article 5 CDR, an RCD lacks novelty when an identical design has been made available to the public prior to the RCD s filing date. Designs shall be deemed to be identical if their features differ only in immaterial details. (18) The RCD and the prior design both relate to boots. Since the RCD is disclosed in black and white photographs and no colour is thus claimed in the registration, the colour of the prior design is not taken into consideration either. (19) The designs under comparison have the following features in common: - the shape of the sole and the heel; - the length (height) of the boot; - the separate front and back sections which overlap each other from front to back; - the wide strap like a belt with a metal buckle; and - the decorative strip running up the top front part of the boot. (20) The designs differ in the following features: - the upper edge of the front and back sections in the RCD is decorated with a line of metal studs, whereas the edge in the prior design is narrower and without any decorative elements; - the strap in the RCD is lower, running from the instep to the heel where it passes through an loop, whereas the strap in the prior design goes around the instep and ankle without any loop; - the strap in the RCD has a narrower strap on top decorated with a line of metal studs, whereas the strap in the prior design is decorated with four metal studs and several metal eyelets to pass though the buckle; 5

6 - the RCD is made of polished material resembling artificial leather, whereas the prior design is made of matte material resembling nubuck leather with darker boot toe tip. (21) The differences described are not immaterial details; therefore the prior design does not constitute an obstacle to the novelty of the RCD. B.3 Individual character (22) According to Article 6 CDR, an RCD lacks individual character if the overall impression produced on the informed user is the same as that produced on such a user by any design which has been made available to the public prior to the RCD s filing date or the priority date claimed. In assessing individual character of an RCD, the designer s degree of freedom in developing the design shall be taken into consideration. (23) The informed user, from whose perspective the test is performed, according to established case-law, is particularly observant, is aware of the state of the art in the sector concerned, and uses the product related to the RCD in accordance with the purpose for which it is intended (see judgment of 09/09/2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (24) In the present case, the informed user is aware of boot designs available on the market before the filing date of the contested RCD. The informed user is aware of that the goods may be similar with regard to the length of the boots, the height of the heels and the shape of the soles following the ergonomics of the foot. Since a large number of boot designs are available on the market, the informed user is more attentive to the details and pays less attention to general features common to all or most of these goods. (25) The designs under comparison are similar in shape and the overlapping at the front of the boot going round to the back. Both the designs have also a strap like a belt running around the instep to the back. The designs, however, differ in the straps themselves, how they are positioned and how the boots are decorated. Taking into account the increased attention of the informed user in the given field, the differences between the designs cannot be ignored. They are not insignificant to the products appearance. From the informed user s perspective, each design produces a different overall impression. C. Conclusion (26) The grounds for invalidity pursuant to Article 25(1)(b) CDR are unfounded. The application must be rejected. III. COSTS (27) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. 6

7 (28) The costs to be reimbursed by the Applicant to the Holder are fixed at EUR 400 for the costs of representation. IV. RIGHT TO APPEAL (29) According to Article 57 CDR, a notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid. THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 7