OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 08/10/2013.

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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 08/10/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT SOFTPRESS 103 James Bourchier Blvd Sofia Konstadin Manev 73 Patriarh Evtimii Blvd., fl Sofia HOLDER ZLATNOTO PATE OOD ul. Kiro Tuleshkov No. 3 Sofia REPRESENTATIVE OF Shtiryana Vlacheva Vlachanova-Krasteva THE HOLDER 15, janko Sakazov Blvd., Et. 1, Ap Sofia 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 08/10/2013: 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 ( the RCD ) has been registered in the name of the Holder with the date of filing of 30/01/2012. In the RCD, the indication of products reads accessories for books, accessories for pencil boxes, accessories for teaching materials and the design is represented in the following views published in the Community Designs Bulletin: ( (2) On 23/10/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). (3) The Applicant requests a declaration of invalidity of the RCD on the grounds of Articles 25(1)(b) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (hereinafter CDR ). (4) As evidence, the Applicant provides, inter alia: - the original catalogue Softpress Summer Autumn 2010, on page 21 containing the image of the book The Numbers from 1 to 10 as follows (hereinafter the book ): 2

3 - the original Affidavit of Antoniy Gabrowski, the manager of Kegel OOD, stating that the company have been distributing books with plastic handles, namely The Numbers from 1 to 10, Softpress Publishing House, on the book market in the Republic of Bulagria since 26/05/2009. The Affidavit contains the following image of the book: - a sample of the book The Numbers from 1 to 10, Softpress Publishing House. (5) In its reasoned statement, the Applicant claims that the contested RCD is not new. The RCD subsists of the following essential features: a plastic handle with a hole; a plastic band; with both ends formed to function like anchor devices; whereas the plastic band is use to hold the pieces of the cardboard book together and attach it to the plastic handle on the side of the book. The ring-shaped form is achieved whereas the plastic band is inserted through the hole in the plastic handle and through the book page with each end of the plastic band passing through the hole and the anchors holding it in place. These features have been known and used in trade by the Holder and other parties before the date of filing of the RCD. Differences observed in the contested design, if any exist, are insufficient to deliver the RCD a different overall impression from the prior design. 3

4 (6) In the response the Holder submits that the RCD was not a matter of public use before the filing date. The RCD is a commissioned work of ET ARTCOM instructed by the Holder to develop an attaching element for a book in November The RCD is composed of two elements: a mobile plastic belt, the two ends of which are formed in the shape of an arrow, and the plastic element has an aperture [which] is in the form of a rectangle with rounded corners in the upper part. The Applicant errs in its interpretation of legal provisions of novelty and individual character if claims that the design refers to goods in the form of children s books with handles. Because the RCD does not relate to children s book with handles but to an attachment system, the subject matters of the RCD and the prior design are not the same, and the prior design of the book differs significantly form the RCD. For this reason the book design cannot constitute the obstacle to the novelty and individual character of the contested RCD. (7) The Holder further claims that the affidavit should be disregarded because Kegel Ltd. is economically related to the Applicant. (8) In the reply the Applicant holds that the Holder should not gain protection for, in fact, one separated part of a product by stating it is new and original or by detaching the item from the product and presenting it as a separated, standing alone design. (9) In the rejoinder the Holder reiterates that the RCD is not identical to the design provided by the applicant because it does not represent that type of goods, i.e. children s book with handles but only an accessory, i.e. a fixing element which may be incorporated in the items listed in the registration, e.g. accessories for books. The Office has to assess the RCD from the representation of the design as it is registered. (10) For further details to the facts, evidence and arguments submitted by the parties, the reference is made to the documents on file. II. GROUNDS OF THE DECISION A. Admissibility (11) The Application complies with the formal requirements prescribed in the CDR and the Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (hereinafter CDIR ), in particular as laid down in Article 28 CDIR. The Application is therefore admissible. B. Substantiation B.1 Disclosure (12) 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 4

5 or otherwise disclosed, before the date of filing of the application for registration of the contested design, except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community. (13) The book The Numbers from 1 to 10 was advertised in publisher s catalogue. Such catalogues are usually used by customers in order to choose and order items from publisher s production. The catalogue was issued for a period of time preceding the date of filing of the RCD. The book is thus deemed to be made available to the public by offering on the market in compliance with the provision of Article 7(1) CDR. (14) The affidavit confirms the above mentioned fact. It contains an image of the same book which is disclosed in the catalogue. The Office has no reason to disregard the Affidavit as supportive evidence to the facts proven otherwise. (15) The Applicant also submits a sample of the book which is used in the proceedings only for the purpose of confirmation of conclusions made by the Office (see judgement of 20 October 2011, C-281/10 P, Circular promotional item, paragraph 74). B.2 The prior design (16) According to Article 3 CDR a design means the appearance of the whole or a part of a product, and a product means any industrial or handicraft item. (17) According to Article 36(6) CDR an indication of the products in which the design is intended to be incorporated shall not affect the scope of protection of the design as such. (18) As evidence the Applicant submits a cardboard book bounded by two plastic strips anchored each in a tab which is part of a plastic handle by which a child can hold and carry the book. The Holder argues that the book cannot be obstacle to the protection of its design, because the RCD is not related to a book but a fixing attachment intended, inter alia, for books. (19) According to Article 3 CDR, the RCD, which does not relate to the whole but only a part of a product, such as fixing attachment, is eligible for protection by the registration of the Community design. The product, of which part the protected design is, does not have to be disclosed in the registration. The protection is granted for the design as such regardless the field or product in which it is intended to be used. (20) The validity of the RCD can be challenged by proving the disclosure of an earlier identical or similar design. To allow such a verification, the same conditions must apply to the earlier disclosed designs, i.e. only part of a product can be relevant as a prior design, if only a part of a product is contested. (21) The Applicant submitted a children book and in its reasoned statement indicated the relevant part of the product which, according to its opinion, constitutes the obstacle to the novelty of the RCD. There is no doubt that the prior design relates to the plastic band in the form of ring anchored in a hole of a tag which forms part of the handle of the book. The subject of the further 5

6 assessment is thus clearly identified as only part of the book - the tag and plastic band, the same elements which form the RCD as represented in the registration. B.3 Novelty (22) 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. Designs shall be deemed to be identical if their features differ only in immaterial details. (23) The RCD and the prior design both relate to fixing elements. Both the designs consist of a rounded tag with a hole in the middle. The hole holds fixed the ends of a band, which for this purpose have its ends widened in the shape of an arrow. (24) The compared designs differ as regards the following elements: the tag of the RCD is slightly slimmer than the tag of the prior design. The hole of the tag of the RCD is semi-rounded while the hole in the tag of the prior design is rectangular. The band of the RCD is ended with arrows, while the band in the contested RCD has the arrow only in one end. (25) The ending of the band in the RCD is a new element not disclosed in the prior design. The difference is not immaterial therefore the prior design does not constitute the obstacle to the novelty of the contested RCD. B.4 Individual character (26) 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. (27) The informed user, from whose perspective the test is performed, is, according to the established case-law, a particular 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 9 September 2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (28) In the present case the informed user is aware of designs of fixing elements which were available on the market before the filing date of the contested RCD. The informed user is familiar with basic features of the products concerned and is aware of the fact that fixing elements differ in materials and forms. Because the products differ according to intended use, there are no general technical constraints imposed on such products. Thus the designer s freedom is not substantially limited. New and innovative design solutions are not hindered by severe technical or standardization constraints. 6

7 (29) The prior design and the contested design are identical in shape of both parts, with the exceptions listed above in the section dealing with novelty. Weighing the similarities and dissimilarities of the designs, the similarities of the designs prevail. The designer of the RCD had enough freedom to depart from the prior design. (30) For the reasons given above the RCD does not produce on the informed user different overall impression from the impression produced on such a user by the prior design. The RCD does not meet the requirement of individual character according to Article 6 CDR. C. Conclusion (31) The RCD is declared invalid on the grounds of Article 25(1)(b) CDR in conjunction with Article 6 CDR due to the lack of individual character. III. COSTS (32) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (33) The costs to be reimbursed by the Holder to the Applicant are fixed to the 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 (34) 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