OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF. English

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 29/10/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9011 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT S.C. Studio Moderna SRL Bd-ul Iuliu Maniu nr. 7, corp A, et. 4, sector 6 Bucuresti Romania S.C. TURTOI INTELLECTUAL PROPERTY FIRM SRL Splaiul Independentei no. 3, bl. 17, 3rd floor, ap. 7, District 5 Bucharest Romania HOLDER S.C. ROMAROSE INVEST S.R.L. BD. Unirii, NR. 71, Bloc G2C, ETAJ 7, AP. 60, Sector Bucuresti ROMANIA REPRESENTATIVE OF THE HOLDER S.C. ROMAROSE INVEST S.R.L. Mohamad Aamdan B-dul Unirii, Nr. 71, Bloc G2C, Scara 2, Etaj 7, Ap Bucuresti ROMANIA Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Ludmila Čelišová (rapporteur), Michele M. Benedetti-Aloisi (member) and Martin Schlötelburg (member), has taken the following decision on 29/10/2013: 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 06/04/2012. In the RCD, the indication of products reads electric cookers, electric kitchen appliances and portable cookers. The design was published in the Community Designs Bulletin in the following views: (2) On 19/12/2012, 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 that the RCD does not fulfill 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 catalogue TOP SHOP 2010 containing the following images of Hot Pan on its page 7 (hereinafter the prior design ): (5) In the reasoned statement, the Applicant claims that a design identical to the RCD has been used on the market by the Applicant since 2007, i.e. before the filing date of the contested RCD. The product related to the design has been heavily promoted of which the Applicant submits ample evidence. The RCD lacks novelty and it should be declared invalid. (6) The Holder of the RCD submits no observations. (7) For further details to the facts, evidence and arguments submitted by the Applicant, 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 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 3

4 requirements of Article 28(1) CDIR are fulfilled as well. The Application is therefore admissible. B. Substantiation B.1 Disclosure (9) According to Article 7 CDR for the purpose of applying Articles 5 and 6, a prior 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 date of filing of the application for registration of the contested design. (10) The catalog is a commercial publication used in course of business and the contents is targeted to customers of Top Shop in Romania. Nothing on file indicates the catalogue was not used for the intended purpose. Thus the prior design is deemed to have been made available to the public by publishing in the said catalogue in 2010, i.e. before the date of filing of the RCD, and in compliance with Article 7(1) CDR. B.2 Novelty (11) 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. (12) The contested RCD and the prior design both related to electric cookers. They are identical in shape, combination of materials of the pan, casing and the lid, including such details as the lowered line of one side of pan casing, protrusion of the pan casing around the space for electric plug, the shape of the plug and temperature regulator, the handle of the lid and placement of a sign on the casing. The designs differ in the graphic of the sign, and the registration contains a view on the bottom of the casing of the cooker which is invisible in the disclosure of the prior design. However, these two features have immaterial impact on the appearance of the product. The designs are identical in all other features. The designs are therefore identical within the meaning of Article 5 CDR. The prior design constitutes an obstacle to the novelty of the contested RCD. C. Conclusion (13) The RCD is declared invalid on the ground of Article 25(1)(b) CDR in conjunction with Article 5 CDR, due to the lack of novelty. III. COSTS (14) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (15) The costs to be reimbursed by the Holder to the Applicant are fixed to the 4

5 amount of 750 Euro, composed of 400 Euro for the costs of representation and 350 Euro for the reimbursement of the invalidity fee. IV. RIGHT TO APPEAL (16) 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 Michele M. Benedetti-Aloisi Martin Schlötelburg 5