OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS)

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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 27/08/14 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9473 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT JOHN MILLS LIMITED JML House Regis Road Kentish Town London NW5 3EG United Kingdom REPRESENTATIVE OF THE APPLICANT Graham Watt & Co LLP St Botolph s House 7-9 St Botolph s Road Sevenoaks, Kent TN13 3AJ United Kingdom HOLDER REPRESENTATIVE OF THE HOLDER HOMELAND HOUSEWARES, LLC Wilshire Boulevard Suite 1150 Los Angeles CA United States of America DENNEMEYER & ASSOCIATES P.O. Box Luxembourg Luxembourg Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Martin Schlötelburg (member), takes the following decision on 27/08/2014: 1. Registered Community design No is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No (the RCD) was registered in the name of the Holder with the filing date of 03/09/2004, claiming the priority from US patent No 10/824,531 of 13/04/2004. The RCD s indication of products reads blenders. When registered, the design was published with the following view: ( (2) On 10/03/2014 the Applicant filed an application for a declaration of invalidity (the Application) contesting the validity of the RCD. (3) The Application is based on the grounds of Article 25(1)(b) Council Regulation (EC) No 6/2002 on Community designs (CDR), namely on non-compliance with the requirements of novelty and individual character of the RCD. (4) The Applicant submits, inter alia, the following facts and evidence in support of the invalidity grounds: An extract from a trade mark application filed by the Holder at the United States Patent and Trademark Office to register MAGIC BULLET as a word trade mark. The extract contains a sworn declaration filed by Mr. Lenny Sands, the president of the Holder, stating that the trade mark had been used commercially in the US at least as early as 19/08/2003 ; and two specimens: a box packaging of the Magic Bullet blender set, and a user guide and recipe book provided with the blender set, with images as follows (D1): 2

3 FRONT BACK LEFT RIGHT 3

4 Printouts from the website as archived in web.archive.org on 18/11/2003 and 04/12/2003, containing images of Magic Bullet blender set (D2): (5) In the reasoned statement the Applicant submits that the priority of the RCD is claimed from a patent application that cannot constitute the prior right to the RCD and therefore the priority claim is invalid. Apart from that the RCD does not meet the required conditions of novelty and individual character because the design of the Magic Bullet blender was made available to the public before the filing date and the grace period of the RCD. (6) The Holder did not submit its observations. (7) For further details of 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 4

5 Article 28(1)(b)(i) CDIR 1. Furthermore, the Application complies with Article 28(1)(b)(vi) CDIR, since it contains an indication of the facts, evidence and arguments submitted in support of those grounds. The other requirements of Article 28(1) CDIR are also fulfilled. The Application is therefore admissible. B. Substantiation B.1 Convention Priority (9) An application for a Community design may claim the priority of one or more previous applications for the same design or utility model in or for any State party to the Paris Convention, or to the Agreement establishing the World Trade Organisation (Article 41 CDR; Article 8 CDIR). The right of priority is six months from the date of filing of the first application. (10) The effect of the right of priority shall be that the date of priority shall count as the date of filing of the application for a registered Community design for the purpose of Articles 5, 6, 7 and 22, Article 25(1)(d) and Article 50(1) CDR (Article 43 CDR). (11) The application from which the RCD s Holder claims the priority is neither a design nor a utility model application. The priority claim in the contested RCD must therefore be rejected. The provision of Article 42 CDR does not provide the Office with any discretion to extend the priority claim to the US utility patent application. As the priority claim is invalid the date determined for the application of Articles 5 and 6 CDR is the RCD s filing date, namely 03/09/2004. B.2 Disclosure (12) According to Article 7(1) CDR, for the purpose of applying Articles 5 and 6, a prior design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the filing date of the contested design or the date of priority, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. (13) According to Article 7(2) CDR a disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6 if a design for which protection is claimed under a registered Community design has been made available to the public by the designer, their successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title during the 12-month period preceding the date of filing of the application. (14) D1 contains an extract from the application for registration of the Holder s word trade mark MAGIC BULLET. In it, the Holder confirms use of the trade mark on the provided guide and recipe book and on the packaging of the Magic Bullet blender set. The Holder declares that [t]he mark is used by imprinting the same directly labels, tags, or on the goods themselves or packaging thereof, which are distributed and/or displayed to customers for purposes of identifying applicant s 1 Commission Regulation (EC) No 2245/2002 of 21/10/ 2002 implementing Council Regulation (EC) No 6/2002 on Community designs. 5

6 goods and services, or in the manner customary in the trades. Two (2) specimens illustrating the mark for each class are included herewith. (15) According to the declaration, the trade mark Magic Bullet is used directly on the goods themselves, as shown in the specimen, namely on the blender set. D2 is a disclosure of the same blender set on a web page offering the product to customers. The indication Magic Bullet can be found in the text of the web page and is used within the meaning of a blender set. The trade mark was used on the blender set and offered or displayed to customers. The trade mark applicant (the RCD Holder) declared as the initial date of use 19/08/2003, which precedes the RCD s filing date as well as the grace period pursuant to Article 7(2) CDR. For these reasons the blender set as shown in D1 and D2 is deemed to be disclosed in compliance with Article 7(1) CDR. B.3 Novelty (16) According to Article 5 CDR, an RCD lacks novelty when an identical design has been made available to the public prior to the filing date of the RCD. Designs shall be deemed to be identical if their features differ only in immaterial details. (17) The RCD concerns a blender, in particular a cover as an accessory to the blender. It is registered in the form of a black and white drawing avoiding any colour or material specification and decoration, therefore no colours, materials or decoration are considered in the earlier disclosed design either. (18) The Magic Bullet blender set was disclosed containing the power base and accessories as shown in D1 and D2. The front and back views of the blender set s packaging and the image in D2 show a top with holes. A simplified drawing of the top in the user guide is accompanied by the following description: Shaker/Steamer Tops. Your Magic Bullet comes with two handy Shaker/Steamer Tops that are used for steaming foods in the microwave, or as shaker tops. The Shaker/Steamer Top with the large holes is for coarse ingredients such as Parmesan cheese, the other is for finely ground spices such as cinnamon or nutmeg. (19) The RCD subsists in a simple disc with several holes. The shaker/steamer top shown in D1 and D2, and shown and described in the user guide is a disc of the same or similar diameter and height. The only difference from the RCD and the Magic Bullet blender top is that the top of the Magic Bullet blender has a narrow indented rim, whereas the lid of the RCD is plain and flat. This difference is, however, immaterial in the overall appearance of the products. (20) The Magic Bullet blender shaker/steamer top therefore constitutes an obstacle to the novelty of the RCD. C. Conclusion (21) The RCD is declared invalid on the grounds of Article 25(1)(b) CDR in conjunction with Article 5 CDR due to lack of novelty. 6

7 III. COSTS (22) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (23) The costs to be reimbursed by the Holder to the Applicant are fixed at EUR 750, of which EUR 400 for the costs of representation and EUR 350 for the reimbursement of the invalidity fee. IV. RIGHT TO APPEAL (24) According to Article 57 CDR, a notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid. THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 7