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

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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 19/06/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9310 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT La Paloma Bt. (HU) Monostori úl. 10 fszt. H-1031 Budapest Hungary REPRESENTATIVE OF THE APPLICANT Georg Pintz & Partners LLC. Pf. 590 H-1539 Budapest Hungary HOLDER S.C. JPM BUILDINGS S.R.L. Str. Noului nr. 174, Birou 5, HALCHIU Brasov Romania REPRESENTATIVE OF THE HOLDER S.C. WEIZMANN ARIANA & PARTNERS AGENTIE DE PROPRIETATE INTELECTUALA S.R.L Str. Mihail Kogalniceanu, nr. 17, bloc. C4, Etaj 7, biroul Brasov, jud. Brasov Romania 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), takes the following decision on 19/06/2014: 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) Community design No (the RCD) is registered in the name of the Holder with the filing date of 27/04/2012. The indication of products in the RCD reads air fresheners. The RCD is published in the Community Designs Bulletin with the following views: ( (2) On 13/11/2013, the Applicant filed an application for a declaration of invalidity ( the Application ). The fee for the Application was paid by bank transfer. (3) The Applicant requests a declaration of invalidity of the RCD on the ground that it is in conflict with a prior design according to Articles 25(1)(d) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs (hereinafter CDR ), and that it lacks novelty and individual character according to Articles 25(1)(b) CDR. (4) As evidence, the Applicant provides the following documents: - a copy of the publication of the registered Community design no (in the following: the prior design), registered in the name of the Applicant on 12/03/2012 for air fresheners and published on 23/03/2012 in the Community Designs Bulletin with the following view: 2

3 - various documents proving the marketing of the prior design. (5) In the reasoned statement, the Applicant claims that the contested RCD and the prior design are almost identical and produce the same overall impression on an informed user. (6) The Holder did not submit observations. (7) For further details of the facts, evidence and arguments submitted by the Applicant, reference is made to the documents on file. II II. GROUNDS OF THE DECISION A. Admissibility (8) The application complies with Article 28 CDIR 1. It is, therefore, admissible. B. Substantiation B.1 Disclosure (9) The prior design is disclosed by publication in the Community Designs Bulletin on 23/03/2012 and hence was made available to the public prior to the date of filing of the contested RCD within the meaning of Article 7(1) CDR. B.2 Novelty (10) 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. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 3

4 (11) The RCD and the prior design both relate to air fresheners. Each of the two designs consists of a shield with a viral fixed in the middle of the shield and a support holding the shield. (12) The RCD and the prior design are different at least as regards the shapes of the shields. The shield of the RCD includes a waist section/narrowing in the middle of the shield. In contrast, the shield of the prior design is wide on top and continuously narrows towards the bottom. (13) The shape of the shield is not an immaterial detail. Therefore, the RCD and the prior design are not identical. B.3 Individual character (14) According to Article 6 CDR, the RCD lacks individual character if the overall impression produced on the informed user is the same as that produced on such a user by any design which has been made available to the public before the filing date of the RCD or the priority date claimed. In assessing the RCD s individual character, the designer s degree of freedom in developing the design shall be taken into consideration. (15) The informed user, from whose perspective the test is performed, according to the established case-law, is a particularly observant, is aware of the state of the art in the sector concerned, and uses the product related to the RCD in accordance with the purpose for which the product is intended (see judgement of 09/09/2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (16) In the present case, the informed user is familiar with air fresheners. In particular, the informed user is aware that this product may take any shape. The degree of freedom of a designer of air fresheners is not limited. (17) The overall impressions produced by the RCD and the prior design are dominated by the shields. Since the shields are significantly different in forms, the overall impressions are different. Therefore, the prior design does not form an obstacle to the individual character of the RCD. B.4 In conflict (18) The ground for invalidity of Art. 25(1)(d) CDR applies where the RCD is in conflict with a prior design which has been made available to the public after the date of filling of the RCD and which is protected from a date prior to the said date. (19) A conflict arises where the RCD falls in the scope of protection of the prior Community design. According to Art. 10(1) CDR the scope of protection of the prior design extends to any design which does not produce a different overall impression on the informed user. (20) Therefore, the ground for invalidity of Art. 25(1)(d) CDR applies where the overall impression produced by the RCD on an informed user does not differ from the overall impression produced by the prior design on that user. 4

5 (21) The RCD and the prior design produce different overall impressions on an informed user (see para 17 above). Therefore, the RCD is not in conflict with the prior design in the meaning of Article 25(1)(d) CDR. C. Conclusion (22) The application for a declaration of invalidity of the contested RCD is rejected as unsubstantiated. III. COSTS (23) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant bears the costs of the Holder. (24) The costs to be reimbursed by the Applicant to the Holder are fixed at EUR 400 for the costs of representation. IV. Right to appeal (25) According to Article 57 CDR, 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 Martin Schlötelburg Jakub Pinkowski Ludmila Čelišová 5