OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 20/03/2013.

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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 20/03/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8818 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Temoto Production AB Strandridaregatan 8 SE Trelleborg REPRESENTATIVE OF THE APPLICANT Setterwalls Advokatbyrå AB Stortorgel 23 P.O. Box 4501 SE Malmö HOLDER Design Bruno Mathsson AB Box 703 SE Värnamo REPRESENTATIVE OF THE HOLDER PATENTBYRÅN WALLENGREN AB Box 116 SE Värnamo Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Martin Schlötelburg (member) took the following decision on 20/03/2013: 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 (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 02/12/2011. In the RCD, the indication of products reads furniture legs. The design was published in the Community Designs Bulletin in the following views: (2) On 11/06/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). The fee for the Application was paid via bank transfer. 2

3 (3) Using the Office form for the Application, the Applicant requests a declaration of invalidity of the RCD on the ground that the RCD does not fulfil the requirements of Articles 4 to 9 of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). (4) As evidence, the Applicant provides inter alia: - a copy of the cover page and page 21 of the product catalogue BRA BOHAG En tidning för alla hemintresserade 1967/68 showing the picture of the chair as follows (hereinafter the prior design ): (5) In the reasoned statement the Applicant submits that the RCD represents a frame or support of a table designed to make a set with two popular chairs Jetson 66 and Jetson 69. According to the Applicant, [t]hese two chairs are some of the most famous pieces of Swedish modern furniture classics, and the Applicant, as well as the original designer Bruno Mathsson and the RCD Holder have been using and making the designs of the two chairs available to the public since 1960s. The contested RCD, in order to be perceived as part of the same furniture series, is designed to be identical with the frames/legs of the chairs. The RCD is thus not new and does not have individual character with respect to the prior design of the legs of the classical chairs and it should be invalidated. (6) In the response to the Application the Holder submits that the Application should be dismissed or the invalidity proceedings suspended because the Applicant has changed the name and declared bankruptcy, and thus the Applicant as such does not exist anymore, it has no legal representative and cannot take any legal actions. (7) The Holder further submits that the evidence is not in the language of proceedings and no translations were submitted in the time limit stipulated by 3

4 the law, and thus the Applicant did not prove the disclosure of any prior design. Moreover, with respect to the designs shown in the evidence, the RCD is new and has sufficient individual character. (8) In the response the Applicant confirms the change of name and the status being in bankruptcy, however, the company is represented by the Official Receiver. (9) 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 (10) According to Article 28(1)(c)(i) CDIR 1 the Application must contain the name and the address of the Applicant. According to Article 52(1) CDR the Application may be submitted by any natural or legal person. (11) The Application contains the name and the address of the company of the Applicant. According to the evidence on file an e-certificate of Swedish companies registration, the Applicant is a registered company in and hence a legal entity. The certificate contains the information on the change of the name of the company and its address. It also contains the information on declaration of bankruptcy and the name and the address of the Official Receiver. The Official Receiver being appointed to be in charge of the affairs of the Applicant has expressed, via his representative, the will to continue in the proceedings. Thus Office has all information to accept the application as admissible at this point and to continue in the proceedings. (12) 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. 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. (13) The other requirements of Article 28(1) CDIR are fulfilled as well. The Application is therefore admissible. B. Substantiation B.1 Evidence (14) The Holder claims that the Applicant s evidence does not meet requirements of Article 29(5) CDIR because it is not in the language of the proceedings. Although the texts of the product catalogue are not in the language of proceedings, the relevant information as regards the date and the 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4

5 representation of the prior design are not affected by this deficiency (decision of 17/03/2006, ICD 941, para. 9). Therefore the evidence is admissible. B.2 Disclosure (15) According to Article 7(1) CDR for the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed before the filing date of the contested RCD. (16) The Applicant submitted a document which has a character of a product catalogue showing and offering the products depicted in it, to the public. The document bears the indication of season 1967/68, for which the products were offered. The indicated years precede the date of filing the application for registration of the RCD. Thus the prior design is deemed to have been made available to the public by advertising it within the meaning of article 7(1) CDR. B.3 Novelty (17) 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 or the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details. (18) The prior design and the contested RCD both concern legs for furniture, i.e. a part of furniture. The prior design was disclosed forming part of a chair. In the assessment only relevant part of the chair, i.e. the base, and not the chair as such, is taken into consideration. (19) Both the designs share the following features: - They consist of a round base with four arms rising up and meeting in a central support. - Both the designs have a steel-like finish. (20) The prior design and the contested RCD are different as regards the following features: - The prior design has four arms attached to the central support forming two arches. They are finished with devices allowing fixing the legs to the seat of the chair. - The RCD has four arms attached to the central support stretched out into four directions and finished with small horizontal discs allowing placing a board on them. - The four arms in the prior design are symmetrical in one axis, while the arms in the RCD are symmetrical in two axes. (21) The described differences of the upper parts of the designs are not immaterial. Hence the prior design does not form an obstacle to the novelty of the RCD. 5

6 B.4 Individual character (22) 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. (23) Without being a designer or a technical expert, the informed user knows various designs which were in the sector concerned before the date of filing of the contested RCD, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his/her interest in the products concerned, shows a relatively high degree of attention when s/he uses them (judgment of 20/10/2011, C-281/10P, Representation of a circular promotional item, para. 53). (24) In the present case the informed user is aware of furniture legs or supports. There is a big variety of these products on the market reflecting the designer s freedom, which is limited only to the extent that the product has to support safely the piece of furniture, which it carries. Thus new and innovative solutions are not hindered by any substantial constraints. The two compared designs are identical in the shape and finishing of the lower parts subsisting of a round base and four arms rising up to meet in the central support. The designs differ in the upper parts, particularly in the ending and positioning of arms. The described differences, however, are not significant. Overall the two compared designs give the same impression of round base, central support and four stretched arms carrying the furniture. Both have the same steel-like finishing. In the eyes of the informed user the overall impression which the designs produce is the same. The contested RCD does not have individual character with respect to the prior design. C. Conclusion (25) The contested RCD is declared invalid due to the lack of individual character on the ground of Article 25(1)(b) CDR in conjunction with Article 6 CDR. III. COSTS (26) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder shall bear the costs of the Applicant. (27) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750 Euro, namely 400 Euro for the costs of representation and 350 Euro for the reimbursement of the invalidity fees. 6

7 IV. RIGHT TO APPEAL (28) 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 Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 7