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 24/10/2012 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8688 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Aroma Essence Ltd Rd «Vasil Levski» bl Kazanlak REPRESENTATIVE OF THE APPLICANT Zdravka Dimitrova Kostadinova-Vulcheva 119, Hadji Dimitar Assenov Str, office Stara Zagora HOLDER REFAN BULGARIA OOD Karlovsko shose, 52 Trud REPRESENTATIVE OF THE HOLDER Ivan Nikolov Ivanov 6-8, Mitropolit Kiril Vidinski Str., vh. 8, floor 2, office Sofia 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 24/10/2012: 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 (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 13/07/2011. In the RCD the indication of products reads soap; washing sponges. The RCD was published in the Community Designs Bulletin with the following view: ( (2) On 05/03/2012, 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 the following documents: - a still image from a video in YouTube uploaded on 12/01/2010 showing a soap design as follows: 2

3 - a still image from a video in YouTube uploaded on 03/04/2010 as follows: - copy of a leaflet dated spring 2010 including the following image: 3

4 (5) In the reasoned statement the Applicant claims that the Holder has disclosed himself the design of the contested RCD more than 12 months before its date of filing. The disclosure was part of an advertising campaign which included the upload of various videos on YouTube and the distribution of leaflets. The Applicant points out that the disclosures took place outside the grace period of Art. 7(2) CDR and hence the RCD should be declared invalid due to lack novelty. (6) In response to the Application the Holder claims that the documents presented by the Applicant do not prove the disclosure of a prior design before the date of filing of the RCD because there is no evidence that the videos in YouTube were actually uploaded on the indicated dates and that the leaflets were distributed to the public. Furthermore, the Holder claims that the documents should be dismissed due to text elements which are not translated into the language of proceedings. (7) For further details to the facts, evidence and arguments submitted by the parties, 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 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4

5 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) The video and the leaflet are accompanied by language portions (written text and spoken language) which are not in the language of proceedings. To the extent that no translation into the language of proceedings was submitted by the Applicant, these portions are ignored in the invalidity proceedings. However, the images of the videos and the leaflet do not have any language and the upload dates of the videos are indicated in the form of numbers. The date of the leaflet, namely пролет 2010, was translated by the Applicant as spring 2010 and hence is taken into account. (10) The dates of the upload of the videos on YouTube are linked by YouTube to the videos and are indicated on the webpage below the display window of the videos. Furthermore, the first video (upload date of 12/01/2010) is a clip of a news story shown on the Spanish TV channel Antena 3. The date when the story was shown on TV, namely on 05/01/2010, is indicated in the first images of the video itself. Finally, the dating of the videos is supported by the leaflet which proves that the soap design was advertised in spring (11) In view of the overwhelming evidence for a disclosure of the soap design in spring 2010 the design is deemed to have been made available to the public within the meaning of Article 7(1) CDR. B.2 Novelty (12) 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. (13) According to Article 7(2) CDR a disclosure of a prior design is not taken into account in the assessment of the novelty of the RCD if the design results from information provided by the designer of the RCD and if the disclosure happened less than 12 months before the filing date of the RCD. In the present case the disclosure of the soap design in the videos and the leaflet took place more than 12 months prior to the date of filing of the RCD. Consequently, the disclosure is taken into account. (14) The soap design disclosed in the videos is identical to the design of the RCD. Therefore, the disclosure destroys the novelty of the RCD. C. Conclusion (15) The contested RCD is declared invalid on the ground of Article 25(1)(b) CDR due to lack of novelty. 5

6 III. COSTS (16) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder shall bear the costs of the Applicant. (17) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750 Euro, corresponding to 400 Euros for the costs of representation and 350 Euro for the reimbursement of the invalidity fee. 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 (Article 57 CDR). THE INVALIDITY DIVISION Martin Schlötelburg Jakub Pinkowski Ingeborg Mendieta Vetter 6