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

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 20/11/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8956 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT BIC SA 14, rue Jeanne d Asnieres Clichy France REPRESENTATIVE OF APPLICANT AL AVOCATS Muriel Antoine-Lalance 250 bis, rue du Faubourg Saint-honoré Paris France HOLDER BEIFA GROUP Co., Ltd. No 298 Jiangnan Road (East) Beilun, Ningbo China REPRESENTATIVE OF HOLDER BIGNON & LEBRAY 14, rue Pergolèse F Paris France 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 20/11/2013: 1. The application for a declaration of invalidity of the registered Community design nº is rejected. 2. The Applicant shall bear the costs of the Holder. 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 priority of 14/10/2010. In the RCD, the indication of products reads writing instruments and the design has been published in the Community Designs Bulletin with the following views: ( (2) On 11/10/2012, the Applicant filed a request for a declaration of invalidity (hereinafter the Application ) contesting the validity of the RCD. The fee for the Application was paidvia bank transfer. (3) Using the Office form for the application, the Applicant requests a declaration of invalidity of the RCD on the ground that the RCD does not fulfil the requirements of Articles 4 to 9 of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). (4) As evidence, the Applicant provides the following documents: - copies of a catalogue dated 1997 showing the design of the pencil Reynolds 45 ( prior design 1 ): 2

3 - copies of a catalogue dated 2002 showing the design of the pencil Sanford Balpen Eagle ( prior design 2 ): (5) The Applicant argues that the RCD and the prior designs both concern writing instruments having the same features in common with only immaterial details being different. An informed user, who has become informed by browsing through catalogues, visiting stores, downloading information form internet etc., will find that the small differences between the prior designs and the RCD do not alter the overall impression produced by the design. Therefore, the RCD should be declared invalid on the ground of lack of novelty and lack of individual character. (6) In response to the Application the Holder argues that the pencils of the prior designs are different to the RCD. In particular, the Applicant points out that the barrels of the prior designs are two pieces whereas the barrel of the RCD is one piece. Therefore, the prior designs are not an obstacle to the novelty and the individual character of the RCD. 3

4 (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) The prior designs have been published in catalogues in 1997 and 2002 and hence were made available to the public prior to the date of filing of the 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 relate both to writing instruments, in particular pencils. Each of the pencils consists of a barrel, a removable cap on one end of the barrel and a plug on the other end. (12) The RCD and the prior design 1 are different at least as regards the shape of the barrel. In the prior design 1, the barrel is of a hexagonal form, whereas in the RCD the barrel is round. (13) The RCD and the prior design 2 are different at least as regards the appearance of the barrel. In the prior design 2, the barrel is transparent allowing a view on the ink cartridge inside the barrel, whereas in the RCD the barrel is opaque. (14) The appearance of the barrel is not an immaterial detail. Therefore, the RCD and the prior designs are not identical within the meaning of Article 5 CDR. 4

5 B.3 Individual Character (15) 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. (16) The informed user is familiar with writing instruments, in particular pencils. These pencils commonly consist of a barrel, a cap on one end and a plug on the other end. The informed user knows that the cap protects the writing tip and the plug closes the open end of the barrel. As a consequence of the function of the pencil, the degree of freedom of the designer is limited. (17) The appearance of the barrel has a significant impact on the overall impression produced by the design on an informed user. The barrel is the largest part of the pencil and hence it s most visible part. It is also the part which is felt by a user all the time while in use, i.e. while the user is writing with the pencil. A hexagonal barrel looks and feels different from a round barrel. Therefore, the RCD and the prior design 1 produce different overall impressions on an informed user. Due to the fact that the barrel in the prior design 2 is transparent, the ink cartridge inside the barrel becomes a feature of appearance of the barrel and hence of the prior design 2. A design of a pencil with a visible ink cartridge does not produce the same overall impression on an informed user as a design of a pencil where the ink cartridge is not visible because the barrel is opaque. Therefore, the prior design 2 is not an obstacle to the individual character of the RCD. C. Conclusion (18) The application for a declaration of invalidity of the contested RCD based on the grounds of Article 25(1)(b) CDR is not founded. III. COSTS (19) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant bears the fees and costs of the Holder. (20) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of 400 Euro for the costs of representation. IV. RIGHT TO APPEAL (21) 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 5

6 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