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 26/11/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9162 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT CROCS, INC 6273 Monarch Place Niwot Colorado United States of America Field Fisher Waterhouse LLP 35 Vine Street London EC3N 2AA United Kingdom HOLDER HESSY s.r.o. Vezenska 6/912 CZ Praha 1 Czech Republic REPRESENTATIVE OF THE HOLDER PROPATENT - PATENT. ZNÁMK. GRAF. KANCELÁŘ Ke Kateřinkám 1393 CZ Praha 4 Czech Republic 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) took the following decision on 26/11/2013: 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 Community design No ( the RCD ) has been registered in the name of the Holder with the date of filing of 07/09/2012. In the RCD, the indication of products reads footwear and the design is represented in the following views published in the Community Designs Bulletin ( (2) On 11/06/2013, the Applicant filed an application for a declaration of invalidity ( the Application ). The fee for the Application was paid by current account. (3) The Applicant requests a declaration of invalidity of the RCD on the grounds of Article 25(1)(b) and (e) Commission Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, as amended, ( CDR ). (4) As evidence, the Applicant provided inter alias a copy of an extract from the database CTM-Online regarding the Community trademark registered inter alias for footwear and published on 04/08/2008 in the Community Trademark Bulletin with the following views showing the appearance of footwear ( prior design ): 2

3 (5) In its reasoned statement, the Applicant claims that the prior design has the same overall shape as the RCD. The strap mechanism comprising a strap and a flat button connecting the strap to the shoe is identical in the prior design and the RCD. The differences between the two opposing designs are only immaterial details and hence the two designs are to be considered as identical in the meaning of Article 5 CDR. Therefore, the RCD should be declared invalid due to lack of novelty and lack of individual character. Furthermore, the Applicant claims that the RCD makes use of a trademark of hers and hence should be declared invalid according to Article 25(1)(e) CDR. (6) The Holder did not submit observations in response to the Application. (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 Application complies with the formal requirements prescribed in the CDR and the Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs ( CDIR ), in particular as laid down in Article 28 CDIR. The Application is therefore admissible. 3

4 B. Substance B.1 Disclosure (9) The prior design has been published in the Community Trademark Bulletin before the date of filing of the contested RCD and hence was made available to the public 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 design both relate to shoes in the shape of clogs with straps and a number of holes in the surfaces of the shoes. The shoes are identical as regards their shapes and proportions. (12) The RCD and the prior design are different only as regards the frog emblem on top of the shoe and surface pattern on the sole which is not visible in the prior design. (13) The emblem and surface pattern are not immaterial details. Therefore, the prior design and the RCD are not identical within the meaning of Article 5 CDR. B.3 Individual Character (14) According to Article 6 CDR the RCD lacks individual character if the overall impression it produces 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. When assessing the individual character of the RCD it is taken into account that the degree of freedom of the designer is limited in so far as the device has to fulfil its function. (15) The informed user is familiar with the basic features of the products to which the contested RCD relates, namely shoes in the form of clogs. Whereas the basic shape of clogs is given, the degree of freedom of a designer as regards the strap mechanism and the surface pattern is not limited. (16) The overall impressions produced by the RCD and the prior design are dominated by the provision of a strap for holding the shoe and the arrangement of holes on the upper surface of the shoe and at the side. The two opposing designs share these characteristic features. In comparison to these similarities, the differences between the two designs are minor. The frog emblem in the RCD is minor in size. The sole of the shoe is basically consisting of an ordinary pattern of circles. Therefore, the overall impressions produced on an informed user by the prior design and the RCD, respectively, are the same. 4

5 C. Conclusion (17) The RCD is to be declared invalid on the ground of Article 25(1)(b) CDR due to lack of individual character. III. COSTS (18) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (19) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750 Euro, composed of 400 Euro for the costs of representation and 350 Euro for the reimbursement of the invalidity fee. IV. Right to Appeal (20) 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 Ludmila Čelišová 5