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 18/09/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9553 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Jonathan Stobart Unit C, Oakwood Oakfield Industrial Estate Eynsham OX29 4TH United Kingdom HOLDERS Chiang Lighting Limited 5F., No.166, Fu 1st St., Keelung City Taiwan Chief Mate Products Corporation 13F.-2, No.77, Shizheng N. 1st Rd., Xitun Dist. Taichung City Taiwan REPRESENTATIVE OF JACOBACCI & PARTNERS, S.L.U. HOLDER Calle Génova, 15-1 E Madrid Spain 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 18/09/2014: 1. The registered Community design nº is declared invalid. 2. The Holders shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design nº (hereinafter the RCD ) is registered in the name of the Holders with a date of filing of 13/12/2013. The indication of products reads Solar lights (part of -) and the design is published in the Community Designs Bulletin with the following views: ( 2

3 (2) On 25/04/2014, the Applicant filed a request for a declaration of invalidity (hereinafter the Application ) contesting the validity of the RCD. (3) Using the Office form for the application, the Applicant requests a declaration of invalidity on any of the grounds of Articles 25(1) (c), (d), (e), (f) or (g) of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). (4) The Applicant claims that the contested RCD is in conflict with the prior design because it is a copy of the prior design. (5) As evidence, the Applicant provides a copy of the registration certificate of the registered Community design (in the following: the prior design) which was published on 27/05/2011 with the following views: (6) The Holders did not submit any observations in response to the application. (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. 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. 3

4 B. Substantiation B.1 Disclosure (9) The prior design was published by OHIM in the Community Designs Bulletin prior to the date of filing of the contested RCD and hence made available to the public in the meaning of Article 7(1) CDR. B.2 Identity of RCD and prior design (10) The Applicant points to the ground for invalidity of Art. 25(1)(d) CDR which applies where the RCD is in conflict with a prior design. Art. 25(1)(d) CDR requires that the prior design has been made available to the public after the date of filling of the RCD. In the present case, the prior design has been published earlier. Therefore, Article 25(1)(d) CDR does not apply. (11) However, the Applicant also argues that the RCD should be declared invalid because it is identical with the prior design. The ground of invalidity dealing with identity is the ground of Article 25(1)(b) CDR in conjunction with Article 5 CDR. Therefore, it is understood that the Applicant has invoked the ground of Article 25(1)(b) CDR. (12) The RCD and the prior design are identical. The broken red line in the graphical representation of the RCD is understood as a disclaimer surrounding features which are not claimed in the RCD and hence are ignored in the comparison of the RCD with the prior design. Due to its identity with the prior design the RCD lacks novelty in the meaning of Article 5 CDR. C. Conclusion (13) The contested RCD is to be declared invalid on the grounds of Article 25(1)(b) CDR in conjunction with Article 5 CDR due to lack of novelty. III. COSTS (14) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holders bear the costs of the Applicant. (15) The costs to be reimbursed by the Holders to the Applicant are fixed to 350 Euro for the reimbursement of the invalidity fee. IV. RIGHT TO APPEAL (16) 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). 4

5 THE INVALIDITY DIVISION Martin Schlötelburg Jakub Pinkowski Ludmila Čelišová 5