OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 16/04/2014

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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 16/04/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9185 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Anoush Bargh Westendorferstr Dorfmark Germany REPRESENTATIVE OF Apley & Straube Partnerschaft APPLICANT Oldesloer Str Hamburg Germany HOLDER G. Boots Sweden AB Hakestad Hakeslätt 125 SE Ullared Sweden REPRESENTATIVE OF WUESTHOFF & WUESTHOFF HOLDER Schweigerstr. 2 D München Germany Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Jakub Pinkowski (member) and Natalie Pasinato (member) has taken the following decision on 16/04/2014: 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 filing of 11/04/2005. In the RCD, the indication of products reads horseshoes and the design is published in the Community Designs Bulletin with the following views: ( (2) On 24/05/2013, 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 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) The Applicant claims that the contested RCD is invalid because it consists entirely of features which are solely dictated by technical function in the meaning of Article 8(1) CDR. According to the Applicant the shape of the horseshoe is necessary due to the natural shape of a hoof and the anatomy of a horse leg. The strap and buckle are well-known fastening means and 2

3 necessary to secure the shoe on the hoof. All the features of the RCD are chosen exclusively according to their function. Furthermore, the Applicant claims that the RCD lacks novelty in view of a prior design disclosed in US Patent 3,520,107. (5) As evidence, the Applicant provides a copy of the publication of the US Patent 3,520,107, published on 14/07/1970 and showing the appearance of a horseshoe ( prior design ) in the following figure: (6) In response to the Application, the Holder observes that the features of the horseshoe according to the RCD are not solely dictated by technical function of the horseshoe because features of alternative designs having the same technical functions are known. As regards the prior design, the Holder argues that the US Patent 3,520,107 shows the horseshoe of Fig. 12 only from the back side and hence does not allow any conclusions as regards the front side. Finally, the Holder refers to a decision of the District Court of Dusseldorf concerning infringement proceedings between the same parties and the same RCD wherein the court found the RCD to be valid. (7) As evidence, the Applicant provides a copy of the US Patent 5,661,958, published on 02/09/1997 and showing the appearance of a horseshoe in the following figure: (8) For further details to the facts, evidence and arguments submitted by the parties, reference is made to the documents on file. 3

4 II. GROUNDS OF THE DECISION A. Admissibility (9) 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 Technical Function (10) Article 8(1) CDR stipulates that a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function. According to the Invalidity Guidelines 1 the fact that a particular feature of a product s appearance is denied protection by Article 8(1) CDR does not mean that the whole design must be declared invalid. (11) A feature is not deemed to be solely dictated by its technical function where the designer still had some degree of freedom in the creation of the feature (decision of the Boards of Appeal of 17/09/2013, R2081/2011-3). (12) The features of the horseshoe of the RCD are not solely dictated by their technical functions because the designer was free to apply different solutions without affecting the technical functions. For instance, there was no need to choose a strap-and-buckle mechanism to fix the horseshoe. A cable-and-lever system as shown in US Patent 5,661,958 would have fulfilled the same fixing function. Likewise, the V-shape cut-out does not need to be V-shaped but could have been of a semi-circle shape, still fulfilling the same function of making space for the anatomy of the horse leg. The elongated thickening at the protective part may have been avoided without weakening the protective function by making the entire protection thicker. (13) None of the features of the contested RCD is solely dictated by its technical function in the meaning of Article 8(1) CDR. B.2 Novelty (14) According to Article 5 CDR the RCD lacks novelty if 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. 1 See validity_applications_en.pdf 4

5 (15) The RCD and the prior design concern horseshoes in the form of a C -shape protection portion with both ends of the C held together by a strap-andbuckle mechanism. The prior design and the contested RCD are different at least in the following aspects: - In the RCD an elongated thickening reaches around the rear, outer side of the protective part. No such thickening is visible in the prior design. - In the RCD a wedge-shaped projection is arranged at the rear bottom of the protective part. No such wedge-shape portion is visible in the prior design. (16) The appliances to the protective part in the RCD are not immaterial details. Therefore, the RCD is not identical to the prior design within the meaning of Article 5 CDR. B.3 Individual Character (17) 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. (18) The informed user is familiar with horseshoes. These products must fit to the hoofs of horses and hence are defined to a certain extent by the anatomy of a horse. However, as regards the features of appearance of the product a designer still has some degree of freedom as it is evident from the fact that the prior design also concerns a horseshoe but it is not identical to the RCD. (19) The horseshoe of the RCD is characterized by the thickening line which reaches all around the C-shaped part at the most visible side of the horseshoe. No such line is disclosed in the prior design. Therefore, the prior design and the contested RCD do not produce the same overall impressions on an informed user. C. Conclusion (20) The application for a declaration of invalidity of the contested RCD based on the grounds of Article 25(1)(b) CDR must be rejected as unfounded. III. COSTS (21) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant bears the fees and costs of the Holder. (22) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 400 Euro corresponding to the costs of representation. 5

6 IV. RIGHT TO APPEAL (23) 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 Natalie Pasinato 6