OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF. English. INTER LINK SAS Z.A. du Niederwald Seltz France

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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 20/10/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8703 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT INTER LINK SAS Z.A. du Niederwald Seltz France GEITZ TRUCKENMÜLLER LUCHT Patent Attorneys Kriegsstr. 234 D Karlsruhe Germany HOLDER REPRESENTATIVE OF THE HOLDER ACTOMA COMPANY A/S Smedegårdvej 6, Tvis 7500 Holstebro Denmark ACTOMA COMPANY A/S Maiken Kortegaard Smedegårdvej 6a, Tvis DK-7500 Holstebro Denmark Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Ludmila Čelišová (rapporteur), Michele M. Benedetti-Aloisi (member) and Martin Schlötelburg (member) took the following decision on 29/10/2013: 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) The Community design nº (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 04/03/2010. In the RCD, the indication of products reads desks [furniture]. The design was published in the Community Designs Bulletin in the following view: ( (2) On 30/03/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). The fee for the Application was paid from the current account. (3) Using the Office form for the application, the Applicant requests a declaration of invalidity of the RCD on the grounds 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 ). (4) As evidence, the Applicant provides: - a copy of front page and page 74 of the catalogue endlich zuhause of MÖBEL KRANZ for the period 01/08/2009 to 31/03/2010; the catalogue contains a desk indicated as Schreibtisch, B/H/T ca. 120/76/60 cm (hereinafter the prior design); - the original catalogue endlich zuhause of MÖBEL BUHL for the period 01/08/2009 to 31/03/2010; the catalogue contains the prior design on page 74; - a printout of internet page containing an image of the prior design offered on the said internet page since 25/03/2009 by DES Deutsche e-shopping GmbH. 2

3 (5) In the reasoned statement, the Applicant holds that the RCD is not new and it does not have individual character because the prior design, as provided in the evidence, was made available to the public before the filing date of the application for registration of the RCD. The prior design and the RCD are identical. (6) In the response the Holder claims that it provided its product Atcoma TITAN desk, which is identical to the RCD, to Möbel Kranz to be published in the company s catalogue. The catalogue was issued for the time falling within the grace period, therefore the design was published in compliance with Article 7(2) CDR and it should not be taken into consideration in the assessment of novelty of the RCD. As evidence of the fact the Holder submits an invoice containing the article Titan Schreibtisch high gloss L:120 B:60 H:76 cm issued on 15/06/2009 for Möbel-Kranz GmbH. (7) In the response the Applicant contests the invoice being issued for the product published in the catalogue, and the publication of the design being authorized by the Holder. The Applicant submits the catalogue of Möbel Buhl having of the same contents as the catalogue issued by Möbel Kranz claiming that the design in this catalogue was not published in compliance with Article 7(2) CDR. The Applicant further submits evidence of disclosure of the same design on claiming that the design was not placed on the internet page by the Holder. (8) In the rejoinder the Holder submits an correspondence with Möbel Kranz confirming purchase of the Atcoma TITAN desk from the Holder for the purpose of publication of it in their catalogue. The Holder also submits two invoices containing the article Titan Schreibtisch high gloss L:120 B:60 H:76 cm, issued on 02/06/2009 and 11/03/2009 for Möbel Buhl and DES deutsche e-shopping GmbH. (9) According to the Applicant the invoices are not credible evidence because they differ in their layouts and they do not contain all substantial information. (10) 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 (11) 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 1. 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. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 3

4 B. Substantiation B.1 Disclosure (12) According to Article 7(1) CDR for the purpose of applying Articles 5 (novelty) and 6 CDR (individual character), a 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 RCD. (13) According to Article 7(2) CDR a disclosure shall not be taken into consideration of 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 twelve month period preceding the date of filing of the application for registration of the RCD. (14) The Applicant submitted three disclosures of the prior design claiming that they do not fall within the meaning of Article 7(2) CDR because the Holder failed to prove that these disclosures were originally caused by the owner of the challenged Community design. (15) The purpose of the Article 7(2) CDR is to allow the Holder to disclose its design and preserve its novelty for the purpose of filing an application for registration of the design within the prescribed period. Therefore the design of the Holder if disclosed in the period of one year preceding the date of filing does not constitute the obstacle to its novelty. The invoices submitted by the Holder are issued for a product of the same indications name and dimensions as shown in the disclosures, and there is no doubt they were issued on the Holder s product related to the RCD. The invoices bear details of those entities which provided the design to the public. The product was sold to be used by the purchasers. The design has therefore been made available to the public by these third entities as a result of action taken by Holder of the design during the twelve month period preceding the date of filing of the application for registration of the RCD. The design is excluded from the assessment of the novelty and individual character. (16) The office did not find any discrepancies between the facts stated by the Holder and the evidence on file as claimed by the Applicant. On the contrary, the evidence supports Holder s arguments. Different layouts of submitted invoices, as claimed by the Applicant, are not obstacle to the credibility of the documents. (17) For the reasons given above the Applicant failed to submit evidence of the disclosure of a prior design pursuant to Article 7(1) CDR. C. Conclusion (18) In the absence of evidence of a prior design supporting the grounds of invalidity invoked by the Applicant, the application must be rejected as unfounded. 4

5 III. COSTS (19) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (20) Since the Holder is represented by its employee, neither fees nor costs need to be reimbursed by the Applicant. 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 Ludmila Čelišová Michele M. Benedetti-Aloisi Martin Schlötelburg 5