OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT - DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 12/04/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN File number ICD 8745 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Ministerstvo spravedlnosti ČR Vyšehradská 16 CZ Praha 2 REPRESENTATIVE OF Robert Nešpůrek THE APPLICANT Týn 1049/3 CZ Praha 1 HOLDER Emil Křístek Hlavní 44 CZ Aš REPRESENTATIVE OF Ivan Belička THE HOLDER Švermova 21 SK Banská Slovakia Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Jakub Pinkowski (member) and Ingeborg Mendieta Vetter (member) has taken the following decision on 12/04/2013: 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 (in the following: the RCD ) has been registered in the name of the Holder with the date of filing of 26/10/2010. In the contested RCD, the indication of products reads envelopes. The design is published in the Community Designs Bulletin as follows: ( (2) On 28/05/2012, the Applicant filed a request for a declaration of invalidity (in the following: the Application ) contesting the validity of the RCD. The fee for the Application was paid via transfer to the account of the OHIM. (3) Using the Office s form the Applicant indicated as grounds for invalidity challenged Community design does not fulfil the requirements of Articles 4 to 9 CDR 1 and other(s) according to 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 provides inter alias a copy of the publication of the Czech design registration published on 26/07/2005 by the Czech Industrial Property Office with the following view of a design ( prior design ): (5) In the reasoned statement, the Applicant claims that the RCD lacks novelty and individual character in view of the prior design. The prior design and the RCD both concern envelopes having the same layout. Differences between the two opposing designs are only in details. (6) In response to the Application, the Holder argues that the differences between the two opposing designs are not only in details. The Holder claims that the design of administrative envelopes is subject to conditions set by Czech authorities. Therefore, all envelopes fulfilling these conditions must have certain features in common. However, the Applicant observes that there is still a lot of space for designers to create many possibilities of designs. (7) For further details to the facts, evidence and arguments submitted by the Applicant 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. 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs 3

4 B. Substantiation B.1 Evidence (9) The prior design has been published in 2005 by the Czech Industrial Property Office and hence has been made available to the public prior to the date of filing the contested RCD according to Article 7(1) CDR. B.2 Novelty (10) 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. (11) The RCD and the prior design both relate to envelopes. The two designs have at least the following features in common: - The layout of the envelope consists of a text area surrounded by a rectangular frame. - The text area is divided in a left, a central and a right section. - The left section comprises a vertical stripe and two round circles. - The central section contains address fields. - The right section is separated from the middle section by a perforation line. - The left and the right sections have the same widths; the middle section is broader than the sections. (12) The two designs are different in so far as regards the distribution of the texts within the given sections of the text area. Therefore, the prior design and the RCD are not identical within the meaning of Article 5 CDR. The prior design does not form an obstacle to the novelty of the RCD. B.3 Individual Character (13) According to Article 6 CDR the RCD lacks individual character if the overall impression it produces 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 prior to the date of filing of the RCD or the date of the priority claimed. When assessing the individual character of the RCD it is taken into account that the degree of freedom of the designer is limited in so far as the device has to fulfil its function. (14) The informed user is familiar with the basic features of the products to which the contested RCD relates, namely envelopes, in particular envelopes for administrative purposes. The informed user is aware that these envelopes must have a text area and address filed. However, as it is pointed out by the Holder, there still remains a considerable degree of freedom of a designer of envelopes as regards the layout of the text area. In particular, the Holder did not provide any evidence that the layout of the text area is subject to specific conditions set by the Czech authorities. 4

5 (15) The overall impressions produced on an informed user by the prior design and the RCD are the same. Both designs are characterized by the broad vertical stripe in the left section of the text area and the subdivision of the text area into three sections. Furthermore, the amount of text is basically the same for both envelopes. These features are visible from a larger distance where the details of the texts are not discernible. (16) On the informed user both designs produce the same overall impression of a well-structured administrative form easily recognizable by the characteristic broad stripe in the left section. C. Conclusion (17) The RCD is to be declared invalid on the ground of Article 25(1)(b) CDR due to lack of individual character. III. COSTS (18) Pursuant to Articles 70(1) CDR and 79(1) CDIR, the Holder shall bear the fees and the costs of the Applicant. (19) 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 (20) 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 Ingeborg Mendieta Vetter 5