OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 04/10/2012

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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 04/10/2012 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8615 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Emalia Olkusz Spólka Akcyjna Aleja 1000 lecia 15 A Olkusz Poland HOLDER Marcin Śpiewak ul. Modrzejowska Myszków Poland REPRESENTATIVE OF THE HOLDER PATENT AND TRADE MARK BUREAU ANDRZEJ MASŁOWSKI Al. W. Korfantego 83 P.O. Box Katowice Poland 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 04/10/2012: 1. The application for a declaration of invalidity of the registered Community design nº is rejected. 2. The Applicant shall bear the costs of the Holder. 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 16/07/2009. In the RCD the indication of products reads washing machines. The RCD was published in the Community Designs Bulletin with the following view: (2) On 05/12/2011, the Applicant filed an application for a declaration of invalidity ( the Application ). 2

3 (3) The Applicant requests a declaration of invalidity of the RCD on the grounds of Articles 25(1)(b) and 25(1)(d) of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). (4) As evidence, the Applicant provides a copy of the publication of the registered Community design RCD ( prior design ) which is registered since 27/09/2004 in the name of the Applicant for Washing machines for laundry purposes and was published on 14/12/2004 with the following views: (5) In the reasoned statement the Applicant claims that the RCD lacks novelty in the meaning of Article 5 CDR and that it is in conflict with the prior design in the meaning of Article 25(1)(d) CDR because the RCD and the prior design are identical. The Applicant explains that she has brought infringement action before a Court in Poland against the Holder. The RCD has only been registered by the Holder as a means of defense in said action claiming before the Court that the Holder has a right on its own to produce washing machines as shown in the RCD. (6) In his response to the Application the Holder argues that it is not known what the views of the prior design represent because they are completely abstract (schematic single-line drawing). In particular, it is not known whether the 3

4 views represent an object of circular, oval or rectangular cross-section since no top view has been provided. The four views show four different overall dimensions and four different design features the last of which being a spindryer rather than a washing machine. Therefore, the two opposing designs could not be compared. As regards the action brought by the Applicant against the Holder and the alleged motivation for the registration of the contested RCD the Holder explains that the action commenced in June 2009, i.e. after the date of filing of the RCD. The Holder speculates that perhaps the aim of filing the application was concern for the judgment by the court to be disadvantageous for the Applicant. (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 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 Conflict with prior design (9) The Applicant raises the ground of Article 25(1)(d) CDR which provides that A Community design may be declared invalid : d) if the Community design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if a priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date by a registered Community design or an application for such a design, or by a registered design right of a Member State, or by an application for such right. (10) Although the prior design was published before the date of filing of the contested RCD the legal provision of Article 25(1)(d) CDR is to be interpreted as providing specific protection for prior designs also in cases where the prior design has been made available to the public prior to the date of filing of the RCD (decision of the Board of Appeal of 12 July 2011, R 1705/2010). 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4

5 (11) The contested RCD is in conflict with the prior design in the meaning of Article 25(1)(d) CDR whenever the later design does not create a different overall impression as the earlier design within the meaning of Article 10 CDR (judgment of the General Court of 18 March 2010, T-9/07, Metal rappers ). (12) In the assessment of the overall impression produced by a registered design all views of the graphical representation of the design must be taken into account. (13) In the present case, as correctly observed by the Holder, the last view of the prior design is different to the other three views: in the first three views the main body is subdivided in three sections, the division is achieved by two double lines. However, in the fourth view no such lines are visible. This leads to the conclusion that in the contested RCD these two dividing lines do not go fully around the body but stop short of one side leaving this side (namely the side shown in the fourth view) as a plain surface. (14) The absence of the lines in the fourth view of the prior design is significant. The prior design is represented by four drawings which only show a few basic features specifying the contours of the washing machine. Among these few basic features, the two double lines in the first three views figure prominently in the middle of the body of the washing machine. Without these double lines, the body would be just plain. In view of the fact that the drawings show only the basic features, the absence of some of these features in the fourth view is significant. (15) The overall impression produced by the prior design on an informed user is characterized by the fact that the body looks different when seen from different sides. In one aspect (= view) the surface of the body is plain whereas in the other views it is structured by two double-lines. (16) In contrast, the body of the washing machine as claimed in the contested RCD does not show different aspects. In the two side views included in the representation of the RCD the body shows the same structuring by two lines. Since the body of the washing machine of the RCD is round (as it is evident from the top view) the two side views cover all the aspects of the body. The feature of a plain surface as shown in the fourth view of the prior design is not present in the contested RCD. (17) The overall impression produced by the contested RCD on an informed user is characterized by the fact that the body looks the same from all sides. The two lines dividing the body in three parts are going all around the body. (18) The overall impressions produced on an informed by the prior design and RCD, respectively, are not the same. (19) Consequently, the contested RCD is not in conflict with the prior design. B.2 Novelty (20) 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. 5

6 (21) The prior design and the contested RCD both concern washing machines. The two opposing designs differ in the various aspects of the body as explained above. Furthermore, the contested RCD includes a top view which reveals that the body of the washing machine of the RCD is round. The shape of the body of the prior design is unknown. As the Holder correctly observes, the body could be elliptical or rectangular. (22) The features of the different aspects and the round shape of the body of the RCD are not disclosed in the prior design. These features are enough to establish the novelty of the RCD in view of the prior design. B.3 Individual character (23) 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. (24) The informed user is familiar with the basic features of washing machines. These machines are known in various shapes, including rectangular and round bodies. The degree of freedom of the designer is limited only to the extent as these machines need to have a body to store the laundry. (25) The RCD is characterized by the two double lines all around the body of the washing machine and the round shape of its body. None of these features is present in the prior design. Therefore, the contested RCD and the prior design do not produce the same overall impression on the informed user. The RCD does not lack individual character in view of the prior design. C. Conclusion (26) The evidence provided by the Applicant does not support the grounds of invalidity of Article 25(1)(b) CDR or Article 25(1)(d) CDR. Therefore, the Application must be rejected. III. COSTS (27) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (28) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of 400 Euros for the costs of representation. 6

7 IV. RIGHT TO APPEAL (29) 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 7