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 25/08/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9423 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Jeronimo Martins Polska S.A. ul. Żniwna, 5 Kostrzyn REPRESENTATIVE OF APPLICANT Ryszard Skubisz Kancelaria Prawno Patentowa ul. Piastowska Lublin HOLDER INTERTRADE-PATIO Sp. z.o.o. Pojezierska Łódź REPRESENTATIVE OF HOLDER Jarzynka i Wspólnicy Kancelaria Prawno-Patentowa aleja Jana Pawła II 70, Warszawa 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) has taken the following decision on 25/08/2014: 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 ) is registered in the name of the Holder with a date of filing of 19/12/2012. The indication of products reads roller pens and the design is published in the Community Designs Bulletin with the following views: ( (2) On 25/02/2014, the Applicant filed a request for a declaration of invalidity (hereinafter the Application ) contesting the validity of the RCD. (3) Using the Office form for the application, the Applicant requests a declaration of invalidity on the ground that the RCD does not fulfil the requirements of Articles 4 to 9 of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). 2

3 (4) The Applicant claims that the contested RCD lacks novelty and individual character because it is identical to a prior design. (5) As evidence, the Applicant provides inter alias the following documents: - an internet print-out of a sale offer on bearing a date of introduction of 24/11/2009 and including a picture of roller pens ( prior designs ) as follows: - A catalogue of the company VIGO dated 2009/2010 downloaded from the internet and showing the prior designs in the following image: (6) In response to the Application, the Holder observes that the prior designs show roller pens from only one side, whereas the contested RCD includes 3

4 views from all sides. The Holder argues that in the absence of complete views it is not possible to make a comparison between the prior designs and the contested RCD. Furthermore, the Holder claims that the evidence for the disclosure of the prior designs should be disregarded because the date indicated on the sale offer as shown on the internet print-out does not prove that the product in the offer looked the same on the date of offer and on the date when the print-outs where produced. (7) For further details to 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 in the Application is a statement of the grounds on which the application is based in the meaning of Article 28(1)(b)(i) CDIR. 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 requirements of Article 28(1) CDIR are fulfilled as well. The application is thus admissible. B. Substantiation B.1 Disclosure (9) The prior designs have been disclosed in the form of pictures included in an offer on the internet. The offer itself is dated as of 24/11/2009. The Holder s challenge to the correctness of the date is not substantiated. There is neither evidence nor reasonable ground to assume that the product has been changed after its introduction in November Likewise, there is no evidence that the offer does not indicate the correct date. The date on a sale offer indicates the date of availability of the offered product and it is usually not in the interest of a sale person to make a product look older by several years. Furthermore, the same prior designs have been published in a catalogue which was published in the internet. (10) Therefore, the prior designs are deemed to have been made available to the public in the meaning of Article 7(1) CDR prior to the date of filing of the contested RCD. B.2 Novelty (11) According to Article 5 CDR the RCD lacks novelty if 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. 4

5 (12) The features of the RCD shown in the top view (view 1) are identically included in any of the prior designs. The graphical representation of the RCD is a black & white drawing and hence does not claim a specific colour. Therefore, the colours visible in the prior designs are not an issue in the comparison with the RCD. (13) The images of the prior designs do not disclose the features visible in the other views (2 to 5) of the RCD. Therefore, as correctly observed by the Holder, it cannot be presumed that the RCD is identical with any of the prior designs. 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 the overall impression produced on such a user by any design which has been made available to the public prior to the date of filing of the RCD or the date of the filing claimed. In assessing individual character of the RCD, the degree of freedom of the designer in developing the design shall be taken into consideration. (15) The informed user is familiar with roller pens. In particular, the informed user is aware that roller pens must be of an elongated form to be suitable for being held by hand in use. In so far, the degree of freedom of a designer of roller pens is limited. However, as regards the exact contour of the elongated form, the designer is free to apply his/her creativity. (16) The roller pen of the RCD consists of an elongated body in the shape of a symmetrical cylinder and a cap sitting on top of the body. Since the body is symmetrical all its features are visible in the top view. Comparing the top view of the body with the top view of prior designs, it is evident that all the features of the body of the RCD are identically included in any of the prior designs. Likewise, the cap sitting on top of the body is cylindrical in shape but with a holding clip fixed on one side. The top of the prior designs fully discloses the shape of the cap and the clip, thereby allowing the conclusion that the features of the cap of the RCD are identically included in any of the prior designs. It remains the features of the upper and lower ends shown in view 4 and 5 of the RCD. These features are not disclosed in the images of prior designs. However, the size of the upper and the lower ends are very small surfaces and do not contribute in any significant way to the overall impression produced on an informed user. Therefore, due to the overwhelming similarities between the RCD and any of the prior designs, it is found that any of the prior designs produce the same overall impression on an informed user as the RCD. C. Conclusion (17) The contested RCD is to be declared invalid on the grounds of Article 25(1)(b) CDR due to lack of individual character. 5

6 III. COSTS (18) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the costs of the Applicant. (19) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of 750 Euro corresponding to the costs of representation of 400 Euro and the reimbursement of the invalidity fee of 350 Euro. IV. RIGHT TO APPEAL (20) 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 (Art. 57 CDR). THE INVALIDITY DIVISION Martin Schlötelburg Jakub Pinkowski Ludmila Čelišová 6