OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) 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 25/03/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9166 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Bejing East Whale Image Technology Co. Ltd. No. 16 Office Building, Level 2, Hong De North Road YiZhuang Economic Development Zone, China REPRESENTATIVE OF Sonn & Partner Patentanwälte APPLICANT Riemergasse Wien Österreich HOLDER Scanflex Healthcare AB Box 1727 SE Stockholm Sweden REPRESENTATIVE OF IPQ IP SPECIALISTS AB HOLDER Mailbox 550 SE Stockholm Sweden 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 25/03/2014: 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 the date of filing of 30/08/2010. In the RCD, the indication of products reads X-ray machines, X-ray viewing apparatus and the RCD is published in the Community Designs Bulletin with the following views: ( (2) On 14/06/2013, the Applicant filed a request for a declaration of invalidity (hereinafter the Application ) contesting the validity of the RCD. 2

3 (3) Using the Office form for the application, the Applicant requests a declaration of invalidity of the RCD on the ground that it does not fulfil the requirements of Articles 4 to 9 of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). (4) The Applicant argues that the RCD lacks novelty and individual character due to the earlier disclosure of a prior design. (5) As evidence, the Applicant provides inter alias the following documents: - A copy of the PCT patent application WO 03/ concerning a device for displaying X-ray images of an object, filed in the name of the company SWEMAC Medical Appliances AB and published on 17/03/2003 with the following drawing: - copy of a flyer of the company SWEMAC Medical Appliances AB including a photo of the device Biplanar 300 (in the following: prior design 1): - copy of a brochure including a photo of the device Biplanar 400 (in the following: prior design 2): 3

4 (6) In response to the Application, the Holder acknowledges that the Applicant has provided several publications showing prior designs and confirms that these publications were made public prior to the application date of the registered design. However, the Holder claims that there are differences between the prior designs and the contested RCD which make the RCD new and give it individual character. According to the Holder, the prior designs include completely different colors like grey, yellow, and red, compared with the white basic color and blue/black and yellow/black stripes of the registered design. Furthermore, the contested RCD includes hand poles that are not present in the prior designs. And the prior designs include four protrusions in the G-shape. These four protrusions have all different designs, when the prior designs is compared with the registered designs. According to the Holder, all the parts of the prior designs are designed with straight lines granting the details boxlike looks, compared with the registered designs, which lines gives a different, much more aesthetically pleasing appearance. As a result of the differences, the Holder finds that the contested RCD and the prior designs produce different overall impressions on an informed user. The informed user is to be found among the medical staff in hospitals, but also technicians/support staff working with the X-ray machines, and the purchasing staff, responsible for purchasing of this kind of equipment to the hospitals. The group of users is a very specialised group, using these devices on a daily basis and hence its awareness of differences will be very high. The degree of freedom of the designer is limited regarding the existence of some of the parts of the X-ray machine, such as two X-ray cameras and two transmitters. They also need to be located opposite of each other, aiming to the centre of the construction and focusing on the object. Likewise, to move the whole equipment, the machine needs to have undercarriage on wheels. Finally, the Holder observes that X-ray machines with other shapes have been developed and sold, such as the C-arm system shown below (left) and the ring-arm system (right): 4

5 (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. 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 Evidence (9) It is proven by evidence and agreed by the parties that prior design 1 and prior design 2 were made available to the public prior to the date of filing of the contested RCD in the meaning of 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 designs concern X-ray machines. The RCD and the prior designs share at least the following features: 5

6 - A support structure in the form of a three-fourth circle ( G-shape ). - Two cylindrical housings at the beginning and the end of the G, respectively. Each cylindrical housing consist of a broader and a narrower portion. - Two rectangular housings opposite the cylindrical housings. - A wheel stand on which the support structure is mounted. (12) The RCD and the prior designs are different as regards the following aspects: - The RCD includes hand holds which are not present in the prior designs. - In the RCD the cylindrical housing have a step-like transition between the broader and the narrower section, whereas in the prior designs, the broader and the barrower sections are connected by a slanted surface. The RCD and the prior designs are all represented in black/white photos which do not allow for a distinction of colors. Therefore, as regards colors, there is no difference between the RCD and the prior designs. (13) The holds and the shapes of the cylindrical housings are not immaterial details. Therefore, the RCD and the prior design are not identical within the meaning of Article 5 CDR. B.3 Individual Character (14) 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 prior to 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. (15) The informed user is familiar with X-ray machines. As correctly pointed out by the Holder, the degree of freedom of a designer of X-ray machines is limited by the need to have X-ray cameras and transmitters which are located opposite of each other, aiming to the centre of the construction and focusing on the object. Likewise, to move the whole equipment, the machine needs to have undercarriage on wheels. However, as regard the designs of these parts, the designer is free to apply his/her creativity. (16) The RCD and the prior designs are all characterized by the G-shape of the support structures, the cylindrical housings of the cameras and the boxlike housings of the transmitters. As explained by the Holder, the G-shape is not a requirement of the technical function of the machine because X-ray machines with C-shape and ring-shape supports exist and function. In comparison to the similarities resulting from the identical G-shapes of the supports and the cylindrical/box-shapes of the cameras/transmitters, the differences between the RCD and the prior designs are negligible. Therefore, the RCD and the prior designs produce the same overall impressions on an informed user. 6

7 C. Conclusion (17) The contested RCD must be declared invalid on the ground of Article 25(1)(b) CDR in conjunction with Article 4 and 6 CDR due to lack of individual character. III. COSTS (18) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (19) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750 Euro for the costs of representation of 400 Euro and the reimbursement of the invalidity fees of 350 Euro. 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 that 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 7