OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 24/08/06. English

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DESIGNS DEPARTMENT- INVALIDITY DIVISION DECISION OF THE INVALIDITY DIVISION OF 24/08/06 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Schwan-STABILO Schwanhäußer GmbH & Co KG Schwanweg 1 D Heroldsberg Germany REPRESENTATIVE OF THE APPLICANT Grünecker, Kinkeldey, Stockmair & Schwanhäusser Maximilianstraße 58 D München Germany HOLDER Ningbo Beifa Group Co., Ltd Xiaogang Ningbo Zhejiang China REPRESENTATIVE OF THE HOLDER Appleyard Lees 15 Clare Road Halifax, West Yorkshire HX1 2HY United Kingdom Avenida de Europa, 4 Apartado de Correos 77 E Alicante Spain Tel Fax

The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Eva Vyoralova (member) and Anna Gobetto (member) took the following decision on

FACTS, EVIDENCE AND ARGUMENTS (1) The registered Community design No.

In the RCD, the indication of products reads instruments for writing and the design is represented in the following seven views (published at http://oami.

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Eva Vyoralova (member) and Anna Gobetto (member) took the following decision on 24/08/06: 1. The registered Community design No is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The registered Community design No (hereinafter: the RCD ) has been registered in the name of the Holder with the date of filing of 27/05/05 claiming priority of 05/02/05. In the RCD, the indication of products reads instruments for writing and the design is represented in the following seven views (published at (2) On 23/03/06 the Applicant filed an application for a declaration of invalidity (hereinafter: the Application ). The fee for the Application was paid by current account with effect of 23/03/06. 2

3 (3) Using the Office s form for the Application, the Applicant indicated the grounds of Article 4 to 9 CDR and other(s) according Article 25(1)(c), (d), (e), (f) or (g) CDR. In his arguments, the Applicant pointed explicitly to Article 4 to 9 CDR and Article 25(1)(e) CDR. (4) As evidence, the Applicant provided inter alias a copy of an extract from the trademark register of the German Patent and Trademark Office regarding the German trademark registration (in the following: TM). The TM was registered on 14/12/2000 in the name of the Applicant. The goods of the TM cover the classes 16 of the Nice Classification. In the extract, the TM is represented as follows: (5) In response to the Application, the Holder argues in relation to Article 25(1)(e) CDR that the distinctiveness of the TM arises from edges and surfaces that are clean, smooth, flat, and free from surface interruptions and include the angle ridge on the cap. None have protrusions or frets of any kind, let alone the distinctive finger shaped indents and frets that are dominant in the RCD. Consumers would instantly recognise the difference between the RCD and the TM and therefore would recognise that the RCD does not originate from the Applicant. (6) For further details to the facts, evidence and arguments submitted by the Applicant and the Holder reference is made to the documents on file. II. GROUNDS OF THE DECISION A. Admissibility (7) The indication of the grounds for invalidity on the form of the Office is a statement of the grounds on which the Application is based in the meaning of Art. 28(1)(b)(i) CDIR 1. Furthermore, the Application complies with Art. 28(1)(b)(iii) and Art. 28(1)(b)(vi) CDIR, since the attachment contains an indication of the facts, evidence and arguments submitted in support of those grounds. The other requirements of Art. 28(1) CDIR are fulfilled as well. The Application is admissible. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs 3

4 B. Substantiation B.1 Evidence (8) An extract from the trademark register of the German Patent and Trademark Office is sufficient evidence for the TM being a prior right. B.2 Distinctive Sign (9) Article 25(1)(e) CDR stipulates that a Community design is to be declared invalid if a distinctive sign is used in a subsequent design, and the Community law or the law of the Member States governing that sign confers on the right holder of the sign the right to prohibit such use. (10) According to 3 Sec. 1 of the German Trademark Act a trade mark may consist of any sign capable of distinguishing the goods or services of one undertaking from those of other undertakings. Consequently, where a sign is registered as a trademark in Germany and the trademark is in force, it is presumed that it is a distinctive sign in the meaning of Article 25(1)(e) CDR. B.2 Right to Prohibit Use (11) According to 14 Sec. 2 No. 2 of the German Trademark Act the proprietor of a registered trademark shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign where, because of its identity with, or similarity to the trademark and the identity or similarity of the goods covered by the trademark and the sign, there exists likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trademark. (12) As rightfully observed by the Applicant, the three-dimensional shape of the TM is characterized by the following features: - a body which becomes narrower on both sides and has an attached cap, with the body and the cap being separated by a double flange; - the broadest part of the body is the flange between the body and the cap; - the body is flat and the height of the body increases toward the cap and decreases toward the opposite end; - the body and the cap are rounded at the sides. (13) The RCD makes use of the TM by incorporating a sign into the RCD having all the characteristic features of the three-dimensional shape of the TM. The sign incorporated into the RCD is similar to the TM. The addition of elements such as the frets or protrusions does not prevent that the characteristic features of the sign are clearly discernable in the RCD. (14) The goods covered by the trademark and the sign are identical. (15) Due to the similarity of the TM to the sign used in the RCD and the identity of the goods covered by the TM and the RCD, there exists likelihood of confusion on the part of the public. Consequently, the Applicant has the right to prohibit the use of the sign in the RCD. 4

5 C. Conclusion (16) The Applicant has provided evidence that he has the right to prohibit the use of the sign in the RCD. Therefore, on request of the Applicant the RCD has to be declared invalid according to Article 25(1)(e) CDR. III. COSTS (17) Pursuant to Article 70(1) CDR and Art. 79(1) CDIR, the Holder bears the fees and costs of the Applicant. IV. RIGHT TO APPEAL (18) 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 Eva Vyoralova Anna Gobetto 5

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

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