OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS)

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DESIGNS DEPARTMENT INVALIDITY DIVISION DECISION OF THE INVALIDITY DIVISION OF 26/02/08 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS ICD Spanish APPLICANT AROCO COMERCIO E DISTRIBUÇÃO DE MATERIAS DE SEGURANÇÃ, LDA. RUA NOVA DE ENTRE CAMPOS 245 ARCOZELO VIA NOVA DE GAIA PORTUGAL REPRESENTATIVE OF APPLICANT PADIMA, AGENTES DE LA PROPIEDAD, S.L. C/ GERONA, 17, 1 A-B E ALICANTE SPAIN HOLDER REPRESENTATIVE OF HOLDER DETUMANDO, S.L. PARQUE TECNOLOGICO DE GALICIA E SAN CRIPRAO DAS VIÑAS SPAIN CLARKE, MODET Y CIA., S.L. RAMBLA MENDEZ NUÑEZ, 12, 6 A E ALICANTE SPAIN Avenida de Europa, 4 E Alicante Spain Tel Fax Internet:

2 The Invalidity Division, composed of José J. Izquierdo Peris (rapporteur), Peter Rodinger (member) and Martin Schlötelburg (member), took the following decision on 26/02/08: 1. The Community design No is declared invalid. 2. The Holder shall bear the costs of the proceedings. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design No ( the CD ) has been registered in the name of the Holder, DETUMANDO, S.L., with the date of filing of 03/01/07 (no priority claimed). It was published in the Community Designs Bulletin dated 30/01/07 ( The CD relates to remote controls. The CD is represented in the following views: (2) On 31/05/07 the Applicant filed an application for a declaration of invalidity ( the Application ) against the CD. It took the view that the CD should be declared invalid owing to a lack of novelty and lack of individual character, since the CD was disclosed on a date earlier than the filing date of the application for registration thereof, which substantiates its lack of novelty and lack of individual character. Specifically, it was disclosed on 27/12/04 by means of being shown on the website in the section on new products, featuring several controls, next to the aforesaid date, together with the text release date, i.e., according to the Applicant, the date on which said product is posted on the website and therefore the date on which it is disclosed. As proof of that fact, it provides a document made by a notary on 07/03/07, where it is recorded that, accessing said website on said day, the content thereof coincides with that of the pages submitted by the Applicant. One of those pages features the product referenced DTM-1 (reproduced infra), together with said release date text. Furthermore, in 2005, a design identical to the CD was disclosed via the Holder s trade catalogue supplied to the Applicant for the purpose of distributing controls in Portugal. Said catalogue was supplemented with a pricelist for distributors for Lastly, it argued that an identical design was marketed that year, proof of which takes the form of a number of invoices dated in various periods of 2005, which include references that correspond with the references in the catalogue provided. Specifically, there was an invoice dated 10/06/05, issued by the Holder, which contains the reference DTM-1 control. These two items of evidence (catalogue and invoices) means that this design clearly was marketed in Europe at least from 2005, outside the period of grace, and therefore the lack of novelty and individual character thereof is evident. To conclude, it provided an from an Italian undertaking in which it asserted that it had been selling a kit since May 2005, without fully identifying that kit. It attached a page (undated) from a catalogue for said undertaking. Given all the aforesaid, the Applicant was of the opinion 2

3 that the CD should be declared invalid as it is covered by the grounds for invalidity of Article 25(1)(b) CDR 1, in connection with Articles 4 to 6. (3) For its part, the Holder submitted observations on 20/08/07, arguing that the application should be dismissed, for various reasons. It argues that the CD fulfils both requirements that of novelty and that of individual character. It does not consider individual character to be challenged by the documentation provided by the Applicant and therefore its observations focus on the claimed lack of novelty. All the evidence submitted by the objector is provided on its own initiative and does not come from any recognised authority, which means that the veracity of the content of that evidence cannot be established and is therefore weak or should be disregarded. In connection with the actual Holder s catalogue, this should be rejected since there is no evidence either that it was ever distributed or that it ever existed no official copy thereof was ever legally deposited. Said catalogue does not substantiate prior disclosure. As regards the invoices, these provide evidence of an old commercial relationship and of the sale of certain goods bearing the DTM-1 and DTM-2 marks, but they do not demonstrate that the product coincides with the CD. Consequently, a catalogue that was not legally deposited, and invoices that coincide in terms of a reference, cannot stand even as indirect testimony of something so significant as potentially to give rise to a declaration of invalidity in respect of a CD. The only date mentioned 2005 appears in the pricelist, but this is impossible to authenticate. Furthermore, the list mentions various trade marks, but without a design. The opposing party is attempting to substantiate the link between the DTM-1 and DTM-2 designs by means of those design representations referenced in the Holder s catalogue. Such a claim would be rejected by any court, and therefore the catalogue as well as the invoices is devoid of probative value and the printout of prices is suspect. In connection with the document made by the notary, it argues that the inclusion of release date (which is purely computerised) indicates the date on which the DTM-1 and DTM-2 trade marks were included in the Holder s catalogue, but not the designs of each year. There is constant updating. At no time can it be claimed that a printout of a page from a website from March 2007 might demonstrate the content of that same page three years earlier. The DTM-1 and DTM-2 control model, which corresponds to the CD application, features as a new product, i.e. as new designs of controls under the trade mark mentioned for This would concern the fact that release date should be understood as meaning the release date of the trade mark as a written legend created on said date for internal or computerised purposes, never for the purpose of disclosing the designs of the actual controls or trade marks for each year. The document substantiates the existence of the model as at 07/03/07, but not that the design featured was disclosed on an earlier date. It is thus devoid of probative value for the purposes of invalidating the CD registration. The ex parte evidence has no legal value whatsoever in the proceedings if it is not verified and contrasted with impartial sources. Consequently, as there is no evidence to confirm invalidity, the application must be dismissed. (4) On 05/11/07 the Applicant filed a rejoinder in respect of said observations, arguing that the Holder is aware that there are other undertakings marketing the same goods as are marketed by it. The Holder s registration is a reaction to an act of competition it views as 1 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs. 3

4 a nuisance, and in registration it sees a solution to its problems this is legitimate in certain cases but not in others, as it amounts to an abuse of law and fraudulent use of the industrial property system. It is an attempt to appropriate an exclusive right over a form of public property in order thereby, via the industrial property route, to achieve the market position that the Holder does not have on the basis of free competition. As regards the evidence, the Holder s catalogue was provided by it to the Applicant. The document includes the pricelist for distributors for 2005, in which two products are referenced as DTM 1 and DTM 2, these corresponding with the catalogue references that are a reproduction of the CD. As regards the invoices, these substantiate the disclosure of the designs through marketing of said goods. The references appear in the invoices dated 10/06/05, 28/09/05, 18/11/05 and 23/12/05, these references corresponding with those of the catalogue and reproducing the CD. Disclosure prior to the filing date of the CD, even earlier than the period of grace, is substantiated. As regards the document made by the notary, under the DTM 1 and DTM 2 references there is an allusion only to the CD, not to trade marks that might cover different designs that change each year. To that end, it adduces an and a request from the Holder that do not mention this claimed circumstance, and therefore it should be concluded that the references denote the CD. The Applicant takes the view, lastly, that the lack of evidence is down to the Holder, who merely describes the evidence provided as suspect without supplying any proof to support its arguments. It concludes that there is sufficient evidence and that said evidence confirms that the CD lacks novelty as it has been disclosed on a date prior to its filing date. (5) On 17/11/07 the Holder submitted a new document in which, after referring again to the arguments presented in its document of 20/08/07, it includes, as evidence, the year-on-year evolution of the designs marketed under the DTM-1 and DTM-2 references. To that end it includes a table (pages 8 and 9 of the document) that features the text DTM-1 for and a number of mentions of years up to 2008, together with a variety of graphic representations of goods, some bearing the reference DTM-1 and others DTM-2. (6) On 21/02/08 the Office forwarded the Holder s observations and then advised the parties that the written phase of the proceedings was concluded, a decision being taken on the basis of the evidence provided. For further information and details relating to the facts and arguments of the parties, reference should be made to the file on the application for a declaration of invalidity. II. GROUNDS OF THE DECISION A. Admissibility (7) The application for a declaration of invalidity is based on the grounds of Article 25(1)(b) CDR. It complies with the requirements of Article 28(1)(b)(i), (v) and (vi) CDIR 2. (8) The fee for the application for a declaration of invalidity has been paid. The application complies with the other formalities of Article 28(1) CDIR and hence it is admissible. B. Substantiation (9) The Applicant is requesting the declaration of invalidity in respect of the CD on two grounds: first, the lack of novelty thereof on account of the design reproduced in point (2) inter alia having been marketed. Therefore, it is appropriate first of all to 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs 4

5 examine the lack of novelty of the CD on account of prior disclosure of a design before embarking upon an examination of the second ground (lack of individual character). B.1. Disclosure (10) The Invalidity Division considers disclosure of the design reproduced in point (2), by means of its exhibition, from 27/12/04, on the actual Holder s website, to have been proven. The Holder has not challenged the fact that this is its own website nor the fact that said design has been disclosed, although it is the Holder s opinion that disclosure dates from 2007, not Likewise, it has not challenged the fact that on 27/12/04 the content of the website was updated, although it does not support the Applicant s argument that that which was disclosed on said date is the aforesaid earlier design. In the Division s opinion, the Holder has not weakened the evidence offered by the Applicant, consisting of the document attesting publicly to the disclosure of the aforesaid design on its own web page in (11) The Division shares the Holder s argument whereby the document made by the notary does not directly and sufficiently prove that disclosure of the design reproduced took place in However, in accordance with the principle of the burden of proof of the disclosure of an earlier design (which is incumbent on the Applicant pursuant to Article 28(1)(v) CDIR), it does provide genuine evidence of disclosure that the Holder has not challenged. The Holder, which could have substantiated, in its statement of observations, it own argument to the effect that 2004 referred to the date of computerised updating of the mention of the trade mark, not of the design, such that it was not the design reproduced in point (2), but another design that was disclosed on said date, has not substantiated this. Specifically, it has neither offered nor provided (being able to do so since this is its own web page) evidence in respect of the control design that was actually disclosed on 27/12/04 together with the aforesaid trade mark. The only evidence the Holder has provided was that incorporated in its document of 17/01/08, in which it merely included a table containing mentions of dates and representations of goods, which, according to the Holder, provide proof of the evolution over time of the models marketed under the DTM-1 and DTM-2 reference. The Division takes the view that the evidence provided does not substantiate that another design (and not that reproduced in point (2)) was disclosed on 27/12/04. In fact, said table does not prove whether any of the images contained therein was actually exhibited on its web page under the DTM-1 or DTM-2 reference. Merely mentioning an indication such as DTM-1 for does not prove that the image associated with that mention was actually available on its web page, as the Holder is attempting to claim, in the absence of sufficient evidence emanating from its web page administration system. In these specific circumstances, in which the Holder s readiness to weaken serious evidence is clear, the argument that what was updated on 27/12/04 is the trade mark but never the design reproduced in point (2) is unsupported and remains purely an argument. For that reason, the serious evidence contained in the document made by the notary should be deemed to have full probative value of disclosure of a design referenced as DTM-1 and reproduced in point (2), with a disclosure date of 27/12/04. Said evidence has full probative value, in particular because there is reference to the website belonging to the Holder, not to the Applicant. (12) Moreover, the Division considers said documentary evidence to be corroborated by the proof of marketing on the part of the Holder dated 10/06/05. Although an invoice issued by the Holder and including the reference DTM-1 control does not per se substantiate disclosure of the earlier design, as there is no representation attesting to this fact, it does substantiate marketing of a certain design referenced with the DTM-1 code, a reference linked to the proof of disclosure on the Internet accepted in point (11). As there is insufficient evidence to the contrary from the Holder, substantiating that said reference is connected with another design, it should be confirmed that exhibition of the design reproduced in point (2) on the Holder s web page together with marketing thereof constitute acts of disclosure for the purposes of Article 7(1) CDR, acts pre-dating the 5

6 filing date of the CD (03/01/07) and, in any event, acts earlier than the twelve-month period preceding the date of filing of the CD, and therefore Article 7(2) does not apply. B.2. Novelty (13) Disclosure of an earlier design therefore having been proven, it should now be compared with the CD. The comparison is performed exclusively on the basis of the graphic representations. The Invalidity Division concludes that they are identical. (14) Both the CD and the earlier design share an appearance deriving from a remote control configured as a rectangular shape with a rounded finish and which is characterised by two buttons labelled 1 and 2. They are supplemented by an indicator light in the top right part. The control s surface has, on its left-hand side, a crescent-shaped depression. The designs are dark in colour. The two designs have a triangular part at the end of the control, which is used to enable the control to be attached to a key fob, as shown in the representations of the two models. The design s configuration is therefore identical in both designs. Thus, it is concluded that the two designs are identical pursuant to Article 5(1) CDR. (15) Consequently, the ground for invalidity founded on the lack of novelty of the CD on account of disclosure of the aforesaid earlier identical design should be allowed. C. Conclusion (16) In light of the aforesaid, the ground for invalidity of Article 25(1)(b) CDR, in connection with Article 5 thereof, should be accepted as the lack of novelty of the CD has been substantiated. The application for a declaration of invalidity is therefore allowed. III. COSTS (17) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the losing party shall bear the fees paid by the other party and also the costs incurred in the proceedings. In the present case, the Holder shall be ordered to pay costs. IV. Right to appeal (18) 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 55 et seq., CDR). 6

7 THE INVALIDITY DIVISION José J. Izquierdo Peris Peter Rodinger Martin Schlötelburg 7