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

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 01/07/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9375 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT HOLDER REPRESENTATIVE OF THE HOLDER Chamber of Industry and CommerceWuppertal, Solingen Remscheid Michael Wenge Heinrich-Kamp-Platz 2 D Wuppertal Germany IHK - Susanne Abendroth Postbox Wuppertal Germany SC SWEET DIAMOND SRL Aleea Marius Emanoil Buteica nr. 2 Bl. 68, Sc. 1, Etaj 8, Ap. 49, Sector Bucharest Romania SC SWEET DIAMOND SRL Elena Oltean Aleea Marius Emanoil Buteica nr. 2 Bl. 68, Sc. 1, Etaj 8, Ap. 49, Sector Bucharest Romania 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), takes the following decision on 01/07/2014: 1. The application for a declaration of invalidity of registered Community design No is rejected. 2. The Applicant shall bear the costs of the Holder. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No (the RCD) was registered in the name of the Holder with the filing date of 08/08/2013. The RCD indication of products reads logos and graphic symbols and logos, surface patterns, ornamentation. The design is depicted below: ( (2) On 30/12/2013, the Applicant filed an application for a declaration of invalidity (the Application). The Application fee was paid via bank transfer. (3) Using the Office application form, the Applicant requests a declaration of invalidity of the RCD on the grounds of Article 25(1)(c), (d), (e), (f) or (g) RCD of Council Regulation (EC) No 6/2002 on Community designs (CDR). In the reasoned statement the Applicant points specifically to Article 25(1)(g), namely improper use of an item other than covered by Article 6ter of the Paris Convention for the Protection of Industrial Property, which is of particular public interest in a Member State. (4) The Applicant provides the following as evidence: a copy of the Regulation for the Protection of the Name Solingen (Solingen Regulation) of the Federal Ministry of Justice, issued in German law gazette I 1994, p. 3833; a copy of the registration certificate of collective Community trade mark No for the word Solingen filed on 23/12/2002 and registered in the name of the Applicant on 03/02/2005 for the goods in following classes of the Nice Classification: Class 7: can openers (electric), mincers, chopping knives, hand-held tools (mechanically-operated), knives for mowing machines, scissors (electric), shearing machines, grinders/crushers for household purposes (electric), shredders for industrial use, blades (machine parts), machine blades ; Class 8: can openers (non-electric), hand tools, beard clippers, side arms, letter openers, cutlery, penknives, gardening tools (hand-operated), hair clippers, cleavers, manicure and pedicure sets, hedge trimmers (hand-operated), hunting 2

3 knives, blades, knives, cutlery, nutcrackers (not of precious metal), pincers, razors, scissors, shearers, cutting tools, kitchen tools for cutting, silver plates, whet steels, mezzaluna choppers, sugar tongs; and Class 21: grinders/crushers for household purposes (non-electric), corkscrews, basting spoons for kitchen use, kitchen utensils, not of precious metal, tableware not of precious metal, pie servers, pastry tongs. (5) In the reasoned statement, the Applicant states that the name Solingen is well known worldwide for the high-quality cutlery produced in the city and its use is regulated by German law. Solingen is also registered as a Community trade mark and national marks in several countries. The Applicant is aware that Solingen is registered and well known for cutlery and that no pots are presently produced in the city of Solingen. However, the indication is abused by producers of other kitchenware, such as pots. Such producers ride on the high reputation of the trade mark and the geographical indication of Solingen. It is in the German public interest to defend the indication against improper use. (6) In the RCD Holder s reply, it states that the evidence provided by the Applicant has to be rejected because it does not prove the RCD s lack of novelty and, furthermore, the novelty is not even contested. The RCD represents the bottom of a pot or pan and the name Solingen is used to illustrate the material of which the pot or pan is made. It is not supposed to indicate the geographical origin of the product because the specification is on a less visible part of the product. Manufacturers of pots and pans are well aware that these articles are made of Solingen stainless steel. The pots and pans belong to the Holder and the RCD is only applied to their underside. The provided Community trade mark registration is irrelevant because there are several Solingen trade mark registrations and owners. Regarding the geographical indication invoked by the Applicant, the Holder can be compelled not to use the name Solingen which refers to the city [of] Solingen, not to the material from which the pots or pans are made of. As the Office has accepted the Community design registration, it was not aware of the claimed reputation of Solingen. The reputation can be claimed only in the German territory. (7) For further details of 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 pursuant to Article 25(1)(g) in the Application and the reasoned statement complies with the requirements stipulated by Article 28(1)(b)(i) and (iv) CDIR, 1 since it contains the representation and particulars of the relevant item as referred to in Article 25(1)(g) CDR, and particulars showing that the Application is filed by the entity concerned by the improper use of the item pursuant to Article 25(4) CDR. The Application further contains the facts, evidence and arguments submitted in support of the invalidity ground pursuant to Article 28(1)(b)(vi) CDIR. The other requirements of Article 28(1) CDIR are also fulfilled. The Application is therefore admissible. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 3

4 B. Substantiation B.1 Article 25(1)(g) (9) According to Article 25(1)(g) CDR, a Community design may be declared invalid if it constitutes an improper use of any of the items listed in Article 6ter of the Paris Convention for the Protection of Industrial Property, or of badges, emblems and escutcheons other than those covered by Article 6ter and which are of particular public interest in a Member State. (10) According to Article 6ter Article (1)(a) and (b) Paris Convention, the countries of the Paris Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorisation by the competent authorities, either as trade marks or as elements of trade marks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view. The provision shall apply equally to armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations of which one or more countries of the Paris Union are members, with the exception of armorial bearings, flags, other emblems, abbreviations and names that are already the subject of international agreements in force, intended to ensure their protection. (11) For the application of these provisions, the International Bureau of the World Intellectual Property Organization (WIPO) maintains a list of the items mentioned in Article (1)(a) and (b) Paris Convention, which have been communicated to the countries of the Paris Union. (12) The aim of the provision of Article 6ter Paris Convention is to provide protection to state symbols, official signs of control and warranty, and symbols of international and intergovernmental organisations which are on the list maintained by the International Bureau. These items also enjoy protection against unauthorised use pursuant to Article 25(1)(g) CDR and the provision extends its application further to badges, emblems and escutcheons which are not on this list but they are of public interest in a particular Member State. (13) In the case at issue, the earlier right claimed by the Applicant subsists in the place name of Solingen. Neither CDR nor the provision of Article 6ter Paris Convention contain any indication that place names fall into the category of protected items. The item on which the Applicant relies is not a state or warranty sign, nor a name or abbreviation of an international organisation. It is neither a badge, emblem or escutcheon. (14) The scope of Article 25(1)(g) does not apply to the indication of Solingen. The sense of provision 25(1)(g) is to allow the defense of symbols of particular interest to a Member State or symbols of international and intergovernmental organisations, but its interpretation should not be extended to geographical indications or signs of local relevance. There is another invalidity ground under Community design law, namely Article 25(1)(e), which allows the defense of earlier rights subsisting in distinctive signs such as a Community or national registered trade mark, or signs protected by national unregistered rights. B.2 The scope of the Application (15) The Applicant clearly stated that the ground on which its application is based on the grounds of Article 25(1)(g), namely the public interest in protecting the indication of Solingen. The Office is thus obliged to limit its assessment to this invalidity ground and to consider the provided evidence in the light of it. The earlier rights mentioned by the 4

5 Applicant, such as Community trade mark or geographical indication, demonstrate the significance the indication enjoys in Germany and the Applicant s due diligence to protect it. However, they are not raised as the subject matter of these invalidity proceedings. This is mainly because the Applicant did not provide all evidence of the validity and scope of protection of these earlier registered and unregistered rights, their use and claimed high reputation, and the Holder was, thus, not given the opportunity to present its comments on this matter. For these reasons, the Office has based its decision solely on the grounds of Article 25(1)(g). C. Conclusion (16) The ground of invalidity pursuant to Article 25(1)(g) is unfounded. III. COSTS (17) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (18) Since the Holder is represented by its employee, neither fees nor costs need to be reimbursed by the Applicant. IV. RIGHT TO APPEAL (19) According to Article 57 CDR, a notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid. THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 5