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 20/11/2012 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8482 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Rockwool International A/S Hovedgaden 584 DK-2640 Hedehusene Denmark REPRESENTATIVE OF THE APPLICANT SANDEL, LØJE & WALLBERG P.O. Box 9006 DK-1265 København K Denmark HOLDER KNAUF INSULATION LIMITED P.O.Box 10, Stafford Road St. Helens- Merseyside WA 10 3 NS United Kingdom REPRESENTATIVE OF THE HOLDER ARC-IP SPRL Avenue Emile Francqui, 4 B-1435 Mont-Saint-Guibert Belgium 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) took the following decision on 20/11/2012: 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 a date of filing of 11/02/2009. In the RCD the indication of products reads building materials. The RCD was published in the Community Designs Bulletin with the following view: ( 2

3 (2) On 29/06/2011, 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 of Articles 25(1)(b) of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). (4) As evidence, the Applicant provides inter alias - a copy of a Product Sheet dated Sept 1987 for a insulation material named Crown Slabs described as manufactured from non-combustible Crown glass wool bonded with high performance binder and shown in the following image: - a copy of a brochure FibroThermica dated 06 Dec for a insulation material named Fibrisoft shown in the following image: 3

4 - copies of brochures and catalogues showing the design corpus for insulation material. (5) In the reasoned statement the Applicant claims that the contested RCD is a substance mottled in whitish to brownish colour which closely resembles the brownish slabs of the Crown Slab prior design. When viewed from the side, the prior design also reveals a layered appearance of the substance almost identical to contested RCD. Therefore, both designs produce the same overall impression on the informed user and hence the RCD lacks individual character. Likewise, the Applicant argues that the prior design Fibrisoft closely resembles the RCD. Furthermore, the Applicant claims that the RCD is a direct result of the technical function of the design because it is an insulation material including a sugar based component which turns into brown when heated as described in a patent application of the holder. Therefore, according to the Applicant the colour of the RCD is solely dictated by its technical function. (6) In response to the Application the Holder observes that the evidence provided by the Applicant should be rejected because it does not include the originals but only reproductions and these reproductions have not been made available to the public. The reproductions do not provide accurate indications of the colours and hues in the originals. As regards the individual character of the RCD, the Holder claims that the degree of freedom of a design of mineral wool insulation products is extremely limited as this aspects are, to a large extent, dependent on the circumstances in which the insulation product is intended to be used and common to all insulation material which could be used in the same circumstance. However, there is some freedom of design in terms of, for example, patterning, surface decoration, colour, variations of hues and it is consequently on features such as these that the informed user focuses when comparing different designs. As regards the technical function, the Holder argues that the technical function of an insulation product is to provide insulation and that this function is not determined by the product s surface decoration or colour. The visual appearance of the material could be freely changed, for example by adding a dye to provide a particular colour. 4

5 (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 within the meaning of Article 28(1)(b)(i) CDIR 1. 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 therefore admissible. B. Substantiation B.1 Disclosure (9) According to the dates indicated in the catalogues and brochures provided by the Applicant, this print material was made available to the public before the filing date of the contested RCD within the meaning of Article 7(1) CDR. The validity of the dates is not disputed between the parties. (10) The Holder disputes that the evidence provided by the Applicant does not include the original print material but consist only of copies and that the colours in the copies are not identical to the colours of the original. However, the quality of current photocopying is on a level which allows reproduction of originals closely resembling the original. Therefore, it can be safely assumed that the brownish colour of the prior designs shown in the copies reflects a likewise brownish colour of the prior designs shown in the original catalogues and brochures. B.2 Novelty (11) According to Article 5 CDR, the contested 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. (12) The prior designs and the contested RCD all concern building materials, in particular mineral wool insulation products. The designs have in common that the materials are in a brownish colour and show a layered appearance when seen from the side. (13) The prior designs and the contested RCD are different as regards the variations of the colours across the material: in the RCD dark brown fibres are interwoven with light brown fibres, whereby the differently toned fibres can be 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 5

6 clearly distinguished. The wiggles and the turns of the lighter fibres on the background of the darker fibres mark a whirl pattern, such as clouds on a brownish sky. In contrast, the prior designs show an almost uniform brownish colour with a weak or no discernible surface pattern. (14) The surface pattern is not an immaterial detail. Therefore, none of the prior designs is identical with the RCD. The prior designs not form an obstacle to the novelty of the RCD. 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 before 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 the basic features of mineral wool insulation products. The informed user knows that the appearance of these products is often a direct result of their manufacturing process. Nevertheless, there is a variety of manufacturing processes in use resulting in products with different appearances. Furthermore, the informed user is aware that the appearance of these products could be changed from their original aspect after manufacturing by dying the material. Therefore, the degree of freedom of the designer as regards the appearance of the mineral wool insulation products is not limited. (17) The RCD is characterized by a surface pattern similar to white clouds on a brownish sky. Threads of fibres of lighter colour are whirling on a background of fibres of darker colour. Individual fibres can be clearly discerned. In contrast, the prior designs are of a uniform brownish colour. No individual fibres are clearly visible. For this reason, the contested RCD and the prior designs produce different overall impressions on the informed user. The prior designs do not form an obstacle to the individual character of the RCD. B.3 Technical function (18) The appearance of the RCD may be the direct result of the manufacturing process of the product. However, the manufacturing process is not solely dictated by the technical function of the product. As described in the patent application submitted by the Applicant, different manufacturing processes exist which lead to different products with different appearances but having the same technical function, namely insulation. Furthermore, as correctly pointed out by the Holder, the appearance of the product can be changed, for example by dying the material, without affecting its technical function. There is no evidence that it was not the free choice of the designer of the RCD to let the colour of the product as it results from the manufacturing process. Consequently, there is no evidence that the RCD is solely dictated by its technical function. 6

7 C. Conclusion (19) The application for a declaration of invalidity of the RCD is not founded. III. COSTS (20) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (21) 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 (22) 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 (Article 57 CDR). THE INVALIDITY DIVISION Martin Schlötelburg Jakub Pinkowski Ingeborg Mendieta Vetter 7