OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF. English. August Storck KG Waldstraße Berlin Germany

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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 18/10/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8950 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT August Storck KG Waldstraße Berlin Germany REPRESENTATIVE OF THE APPLICANT CMS Hasche Sigle Stadthausbrücke Hamburg Germany HOLDER Fabryka Galanterii Czekoladowej Edbol Bogusław Dudziński Przemysłowa Bydgoszcz Poland REPRESENTATIVE OF THE HOLDER Kancelaria Rzecznika Patentowego Agnieszka Raczyńska Postępu 21A Warsaw Poland 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) took the following decision on 18/10/2013: 1. The registered Community design nº is declared invalid. 2. The Holder shall bear the costs. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design nº (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 25/11/2010. In the RCD the indication of products reads chocolates, confectionery. The RCD was published in the Community Designs Bulletin with the following views: (2) On 10/10/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). (3) Using the Office s form the Applicant indicated as grounds for invalidity that the challenged Community design does not fulfil the requirements of Articles 4 to 9 CDR 1 and other(s) according Article 25(1)(c), (d), (e), (f) or (g) CDR. (4) As evidence, the Applicant provides inter alias the following documents: - a leaflet of the ALDI supermarket chain dated 22 October 2007 wherein an image of a chocolate ( prior design ) as shown in the following picture is disclosed: 1 Council Regulation (EC) No 6/2002 on Community designs 2

3 - an extract from the ROMARIN database concerning the IR trademark S ( IR1 ) registered inter alias for Poland in the name of the Applicant since for the goods confectionery; chocolate and chocolate products; pastries in class 30 with the following sign: - an extract from the ROMARIN database concerning the IR trademark ( IR2 ) registered inter alias for the European UNION (EM) in the name of the Applicant since for the goods confectionery; chocolate and chocolate products; pastries in class 30 with the following sign: (5) In the reasoned statement the Applicant explains that it sells chocolate in the form of the prior design since 1981 in the quantity of more than 50,000 tons worldwide. Chocolate under the tradename Chateau as shown in the picture of the prior design is produced for the supermarket chain ALDI. It has been advertised and sold by ALDI in various European countries including Poland many years before the filing date of the contested RCD. The prior design is characterized by the Applicant s signet which is protected for the benefit of the Applicant since 1999 by the IR1 and since 2007 by IR2. Therefore, the contested RCD does not only lack novelty and individual character but also constitutes unauthorized use of the trademarks of the Applicant. (6) In his response to the Application the Holder claims that the signet is only one out of several features of the RCD which should be evaluated taking into account the informed user and the degree of freedom of the designer. 3

4 Considering all the features of the RCD, it is having novelty and individual character. As regards the evidence, the Holder claims that the ALDI flyers bear no dates and that there is no reliable evidence that the prior design was made available to the public. As regards the IR trademarks of the Applicant, the Holder claims that IR1 and IR2 differ significantly from the registered design both in form and in color. (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 within the meaning of Article 28(1)(b)(i) CDIR 2. 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 therefore admissible as regard the ground of Article 25(1)(b) CDR. B. Substantiation B.1 Disclosure of prior design (9) The evidence provided by the Applicant proves that the prior design was commercialized several years prior to the date of filing of the contested RCD and hence made available to the public within the meaning of Article 7(1) CDR. (10) The allegation of the Holder that the ALDI leaflet is not dated is incorrect. The date is clearly indicated on the leaflet. The evidence provided by the Applicant moves it beyond all reasonable doubt that the prior design has been marketed in big quantities in many countries, including the country of the Holder, for many years prior to the filing date of the RCD. It is not understandable and casts a bad light on the Holder and her representative to deny a fact which they must know to be true. B.2 Evidence for trademarks (11) The reference to the registration of the earlier IR1 and IR2 and the provision of extracts from the publicly accessible database ROMARIN are sufficient evidence the existence of said trademarks. 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4

5 B.3 Distinctive Sign (12) Article 25(1)(e) CDR establishes that a Community design may be declared invalid if a distinctive sign is used in a subsequent design, and the Community law or the law of the Member States governing that sign confers on the right holder of the sign the right to prohibit such use. (13) Where a sign is registered as an IR trade mark and the trade mark is in force, it is presumed that it is a distinctive sign within the meaning of Article 25(1)(e) CDR. Therefore the IR1 and IR2 are deemed to constitute earlier rights within the meaning of Article 25(1)(e) CDR. B.4 Right to prohibit use (14) Pursuant to Articles 9(1)(a) and 151 of the Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark, a IR trade mark designating the European Union shall confer on the proprietor exclusive rights, among others to prevent third parties not having his consent from using in the course of trade any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the community trade mark is registered. (15) The Applicant is the proprietor of the earlier IR2 designating the European Union. Therefore, the Applicant has the exclusive right to use it for the goods for which it is registered, and to prohibit the use of it by others. (16) The RCD contains the feature of a signet in the form of a stylized, elongated S surrounded by a frame. The signet is perceived as a sign. This sign is identical to the sign of the IR2. The IR2 is registered for the goods confectionery and chocolates. These goods are identical to the goods to which the RCD applies. (17) Given the identity of the sign in the RCD with the sign of the IR2 and given the identity of the products of the RCD with the goods of the IR2, the Holder has the right to prohibit the use of the sign in the RCD. In exertion of this right, the Holder successfully requests the declaration of invalidity of the RCD. C. Conclusion (18) The facts and evidence provided by the Applicant support the ground for invalidity of Article 25(1)(e) CDR. Therefore the RCD is declared invalid. III. COSTS (19) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (20) 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. 5

6 IV. Right to Appeal (21) 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 Martin Schlötelburg Jakub Pinkowski Ludmila Čelišová 6