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 08/08/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT R. Schmidtmeister e.k. Im Seefeld 16 D Nidda Germany REPRESENTATIVE OF THE APPLICANT REIMANN OSTERRIETH KÖHLER HAFT Steinstraße 20 D Düsseldorf Germany HOLDER ICE IP S.A. Avenue Louise, 66 B-1050 Bruxelles Belgium 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 08/08/2014: 1. Registered Community design No is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No (the RCD) was registered in the name of the Holder with a filing date of 19/04/2013. The RCD indication of products reads watches, and the design is published in the following views: ( (2) On 26/07/2013, the Applicant filed an application for a declaration of invalidity (the Application). (3) The Application is based on the grounds of Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (CDR). (4) As evidence, the Applicant provides, inter alia, the following: - a printout from the website containing the following image of a Manguun watch (the Manguun design) and the information (in German and translated by the Applicant) that the product was offered at Galeria Kaufhof in Mainz, Schusterstr , as of 02/01/2013: 2

3 (5) In its reasoned statement, the Applicant claims that the contested RCD has been well known to the market prior to filing the registration. Watches with exactly the same features have been available for several years. (6) In response to the Application, the Holder claims that the disclosure of the Manguun design should be considered as acts made by third persons as a result of information provided by the owner of [the RCD]. To support its argument, the Holder provides a press release entitled Ice-white collection: so pure so chic dated May 2012, about ICE-white models in different colour combinations, as follows: (7) According to the Holder, the press release could reasonably have become known to the holder of the Manguun design, which is identical to the ICE designs. The design was copied from the Holder s model and was then made available on the website. The disclosure cited by the Applicant should, therefore, be considered as having been made within the grace period and disregarded in the test of novelty and individual character pursuant to Article 7(2) CDR. The Application should be rejected as unsubstantiated. 3

4 (8) In its reply, the Applicant states that the Manguun design and the contested design do not originate from the same designer and, therefore, the exception pursuant to Article 7(2) CDR is not applicable to the cited disclosure. The Holder did not prove that the holder of the Manguun design knew about the press release and copied the RCD. (9) The Applicant further claims that there were several identical or very similar watches available on the market, at least at the date of publication of the press release, namely a watch offered on the amazon.de website on 23/05/2012, an extract from which it provides in support. (10) In its rejoinder, the Holder states that the evidence provided by the Applicant at the belated stage of the proceedings should be disregarded in accordance with settled case-law. (11) In support of its argument that prior designs cited by the Applicant were copied from the Holder s ICE white designs collection, and to prove its high reputation in the watch sector, the Holder submits two sets of evidence: proofs of considerable exposure and publicity of ICE-WATCH products and GFK: research 2012 and 1 st semester The evidence includes, inter alia, an ICE WATCH press release entitled ice watch & David Guetta, stating, inter alia, that David Guetta can be seen to wear the ICE-WHITE Jeans Big model (ICE design), which belongs to the new 2011 collection, as the ICE-Watch brand is to be featured in his new music video for a song released in June The press release contains the following images: (12) 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 (13) The Application complies with the formal requirements prescribed in the CDR and Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs 4

5 (CDIR), in particular as laid down in Article 28 CDIR. The Application is therefore admissible. B. Substantiation B.1 Evidence (14) The Office agrees with the Holder that the evidence submitted by the Applicant in the course of the proceedings should not be taken into account. The subject matter of the proceedings must be defined in the application. Reliance on additional earlier designs and/or rights is inadmissible when submitted at the belated procedural stage of the reply if the effect is to alter the subject matter of the proceedings (decision of 22/10/2009, R 690/ Chaff cutters, paragraphs 44, et seq.). The Applicant submitted evidence concerning a prior design not mentioned in the invalidity Application. The new evidence is therefore disregarded. B.2 Disclosure (15) 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, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. (16) According to Article 7(2) CDR, a disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6 if a design for which protection is claimed under a registered Community design has been made available to the public by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title during the 12-month period preceding the date of filing of the application. (17) As an objection to the validity of the RCD, the Applicant submitted the Manguun design, which, the Holder claims, should not be taken into account because the design was copied from ICE-white models. As a proof of this contention, the Holder provided the press release showing the ICE design and stating that the design was part of the 2011 collection and promoted as such. The ICE design was thus made available to the public by the Holder before the RCD s filing date and the Holder s grace period. It must therefore be taken into account when assessing the novelty and individual character of the RCD in compliance with Article 7(1) CDR. (18) The issues of whether or not designs provided by the Applicant were copied from the Holder s designs and whether or not the acts fall within the scope of Article 7(2) CDR have therefore become obsolete. 5

6 B.3 Novelty (19) 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. (20) The RCD is registered in black and white images. It is understood that no particular colours are claimed. The ICE design is therefore considered in the same scope: not taking into account the colours. (21) Both the RCD and the ICE design relate to watches. They are identical except the dark rim around the watch case, which is not an immaterial detail. The ICE design does not constitute an obstacle to the novelty of the RCD. B.4 Individual character (22) 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. (23) The informed user, from whose perspective the test is performed, according to the established case-law, is 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 judgment of 09/09/2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (24) In the present case, the informed user is aware of watch designs available on the market before the contested RCD s filing date. The informed user is familiar with the basic features of the products concerned. (25) A designer s freedom is not substantially limited. New and innovative design solutions are not hindered by severe technical restrictions or norms. The only limitation is that a watch designer has to follow the ergonomics of the wrist. (26) The RCD and the ICE design are identical in all their parts, except the dark rim around the watch case. The difference does not confer an individual character on the RCD with respect to the prior design. The overall impression produced by the RCD on the informed user is the same as that produced on such a user by the ICE design. (27) For the reasons given above, the prior (ICE) design constitutes an obstacle to the individual character of the RCD. C. Conclusion (28) 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. 6

7 III. COSTS (29) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder must bear the Applicant s fees and costs. (30) The costs to be reimbursed by the Holder to the Applicant are fixed at EUR 750, of which EUR 400 is for the costs of representation and EUR 350 for the reimbursement of the invalidity fee. IV. Right to appeal (31) 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 7