OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF. English. P.H.U. MISTAL Słotwina Świdnica Poland

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 11/10/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8864 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT P.H.U. MISTAL Słotwina Świdnica Poland REPRESENTATIVE OF THE APPLICANT Elźbieta Piątkowska Skórzewo, u.l. Truskawkowa Poznań Poland HOLDER DEL PONTI, N.V. Steenovenstraat 23 B-3941 Hechtel (Eksel) Belgium REPRESENTATIVE OF THE HOLDER GEVERS Brussels Airport Business Park Holidaystraat, Diegem Belgium 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 11/10/2013: 1. The application for a declaration of invalidity of the registered Community design nº is rejected. 2. The Applicant shall bear the costs. 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 14/02/2007. In the RCD the indication of products reads fastening clips. The RCD was published in the Community Designs Bulletin with the following views: (2) On 06/08/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). (3) Using the Office s form the Applicant indicated as grounds for invalidity that the challenged Community design does not fulfil the requirements of Articles 4 to 9 CDR 1 and other(s) according Article 25(1)(c), (d), (e), (f) or (g) CDR. (4) As evidence, the Applicant provides inter alias the following documents: 1 Council Regulation (EC) No 6/2002 on Community designs 2

3 - A copy of a catalogue Montagehandleiding 11Palls/Triton of the company Heras BV dated January 1999 including the following image: - A copy of a Price List 2005 of Heras BV where on page 24 the following table is shown: - A copy of an invoice note dated in the name of Heras BV concerning 4000 pieces of the product kgsetstm to be delivered to an address in Poland. (5) In the reasoned statement the Applicant explains that prior to the date of filing of the contested RCD the company Heras BV has marketed a clip under the reference code kgsetstm (in the following: prior design) which produces the same overall impression as the RCD. Therefore, the RCD lacks novelty and individual character. Furthermore, the Applicant claims that the Holder is not the creator within the meaning of Article 14 of Council Regulation No 2/2002. (6) In his response to the Application the Holder observes that prior design is different to the contested RCD and does not form an obstacle to the novelty 3

4 and the individual character of the contested RCD. As regards Article 14 CDR, the Holder points out that the related ground of Article 25(1)(c) CDR is not admissible according to Article 28(1)(c)(iii) CDIR because the Applicant did not provide the particulars showing that the Applicant is entitled to the contested RCD. (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 2. 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 therefore admissible as regard the ground of Article 25(1)(b) CDR. (9) As regards the Applicant s reference to Article 14 CDR, the Holder correctly observes that the related ground of invalidity of Article 25(1)(c) CDR is not admissible because the requirements of Article 28(1)(c)(iii) CDIR are not fulfilled. B. Substantiation B.1 Disclosure (10) The evidence provided by the Applicant proves that the prior design was commercialized more than one year prior to the date of filing of the contested RCD and hence made available to the public within the meaning of Article 7(1) CDR. B.2 Novelty (11) 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. (12) The prior designs and the contested RCD both concern fastening clips. The two designs share the following features as illustrated in the subsequent figure provided by the Applicant showing the RCD on the left and the prior design on the right side: - A U-shaped shackle (1). - A C-shaped clamp (2). - A C-shaped counter clamp (3). 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4

5 (13) The prior designs and the contested RCD are different as regards the following features: - In the prior design the C-shaped clamp (2) is open on one side and the opening is covered by a plate (2a). In contrast, the C-shaped clamp (2) of the RCD is closed and no cover plate is required. - The C-shaped counter-clamp in the RCD has its C-form pointing to the C-clamp ( C ), whereas in the prior design it is inverted, i.e. the C-form points in the contrary direction ( Ɔ ). - In the RCD the bolts for fixing the U-shaped shackle are placed outside the C-shaped clamp, whereas in the prior design the bolts are housed inside the clamp as it is shown in the figure provided by the Holder: (14) The differences are not immaterial details. Therefore, the prior design does not form an obstacle to the novelty of the RCD. B.3 Individual character (15) 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 before 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. 5

6 (16) The informed user is familiar with the basic features of fastening clips. As a result of their functionality, these clips are composed of shackles, clamps and bolts fixing the shackles to the clamps. The degree of freedom of a designer of fastening clips is limited in so far as it must contain these functional elements. (17) The clip of the RCD has one piece less and hence is simpler than the prior design. The provision of the additional piece in the prior design, namely the plate (2a), allows hiding the bolts inside the clamp and covering them by the plate. The clip of the prior design is not that simple because of the additional plate but allows hiding the bolts which gives the assembled clip a more aesthetic look. For this reason, the contested RCD and the prior design do not produce the same overall impressions on an informed user. The RCD does not lack individual character with respect to the prior design. C. Conclusion The evidence provided by the Applicant does not support the ground of Article 25(1)(b) CDR. III. COSTS (18) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (19) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of 400 Euro for the costs of representation. 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 6