OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION. German

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DESIGNS DEPARTMENT INVALIDITY DIVISION DECISION OF THE INVALIDITY DIVISION OF 20/01/06 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS German APPLICANT AUDI AG Patentabteilung I/EX D Ingolstadt REPRESENTATIVE OF THE APPLICANT Harald Engelhardt AUDI AG Patentabteilung I/EX D Ingolstadt HOLDER Röder Zelt- und Veranstaltungsservice GmbH Am Lautenstein D Büdingen REPRESENTATIVE OF Kutzenberger & Wolff THE HOLDER Theodor-Heuss-Ring 23 D Cologne Avenida de Europa, 4, Apartado de Correos 77, E Alicante, Spain Tel. (+34) Fax: (+34) Internet:

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Eva Udovc (member) and Eva Vyoralova (member), took the following decision on 20/01/06: 1. The application for a declaration of invalidity of registered Community design No is rejected. 2. The Applicant shall bear the costs incurred by the Holder. I. Facts, evidence and arguments (1) The contested Community design No (in the following: the CD ) was applied for in the name of the Holder on 02/05/03 and, taking into account the priority claimed, has been registered with the date of filing of 06/11/02. In the CD, the indication of products reads Tents. The design is represented in the following four views published in the Community Designs Bulletin ( (2) The Applicant filed an application for a declaration of invalidity of the CD, received on 17/05/05. The fee for the Application was paid by current account with effect as of 17/05/05. (3) The Applicant asked that the CD be declared invalid, since the requirements for protection in accordance with Article 4(1) of the Community Design Regulation (CDR) have not been fulfilled and the CD constitutes an impermissible use of a work which is protected under German copyright law. In its view, all the characteristic features of the CD were already known on the priority date. The remaining differences could not form the basis for protection since they serve functional purposes (e.g. door) or are part of the general abundance of shapes which exist. 2

3 (4) The Applicant provides the following evidence, inter alia: - Copies of a brochure entitled Architektur Richtlinie 1.3: Fassaden [ Architecture guidelines 1.3: Facades ] (in the following: D1 ), which contains the following figure: - Copies from the periodical Autohaus 13/1999 [ Garage 13/99 ] (in the following: D2 ), which contains the following photograph: - Evidence of witnesses to confirm that the building was erected in accordance with the documents submitted prior to the CD s filing date. (5) The Holder has submitted observations on the application. It points out the differences between the CD and the abundance of shapes submitted and presents arguments with regard to the degree of freedom of the designer and the informed user who would direct his attention in particular to the design of the roof, the height and inclination of the longitudinal sides, the building material of the side parts, the arrangement of the entrance area and the design of the sun and rain protection. These areas were designed differently in the abundance of shapes submitted than in the CD and the CD therefore had individual character. (6) For further details of the facts, evidence and arguments submitted by the Applicant and the Holder, reference is made to the documents on file. 3

4 II. Grounds of the decision A. Admissibility (7) The application filed by the Applicant for a declaration of invalidity of the contested CD on the grounds that the requirements for protection in accordance with Article 4(1) of the Community Design Regulation (CDR) have not been fulfilled and the Community design constitutes an impermissible use of a work which is protected under German copyright law complies with Article 28(1)(b)(i) of the Community Design Implementing Regulation (in the following: CDIR ), in accordance with which the application shall contain a statement of the grounds on which the application for a declaration of invalidity is based. The application also complies with the other provisions of Article 28(1) CDIR and is therefore admissible. B. Substantiation B.1 Evidence (8) Exhibits D1 and D2 submitted by the Applicant prove that a prior design of a building, as depicted in D1 and D2, was available to the public before the CD s priority date within the meaning of Article 7(1) CDR. In view of these circumstances, the hearing of witnesses offered by the Applicant is not necessary. B.2 Novelty (9) As individual comparison of the opposing designs reveals, the subject of the CD and the prior design differ at least in the following features: In the prior design, the roof is continuously arcuate, whereas in the CD the roof is composed of a straight part and an arcuate segment. The arcuate segment in the CD projects far over the longitudinal side of the building and the projecting roof is supported by upright pillars at its ends. In the prior design, the arcuate segment does not project substantially over the longitudinal side of the building and consequently there is no projecting roof supported by pillars either. In the prior design, the entrance and window area is provided at the lower part of the building; a workshop area is located on the higher side of the building. In the CD, conversely, the entrance and window area is located on the higher side. In the CD, the side view is a uniform surface, whereas in the prior design it consists of a glass surface and a masoned square. (10) The differences mentioned above are not insignificant details. The CD is therefore not identical to the prior design within the meaning of Article 5 CDR. The prior design is not prejudicial to the novelty of the RCD. B.3 Individual character (11) Informed users are familiar with forms of appearance of buildings. In particular, they are aware that limits have been placed on the degree of freedom of the designer on the basis of the purpose of the product as a building. Thus, a building necessarily includes elements such as a roof, side walls and an entrance. However, the designer has a wide degree of freedom in developing the elements, e.g. the shape of the roof or the arrangement of the entrance. 4

5 (12) The subdivision of the roof in the CD into a straight part and an arcuate segment brings about a different overall impression among informed users than the uniformly arcuate roof in the prior design. The roof of the contested CD has a ridge from which the two parts drop away downwards in a straight and, respectively, curved form. As a result, the building in the CD appears more like a traditional style of house or tent. In contrast, the building in the earlier design consists of a single arcuate segment and thus seems more modern. The precisely opposite arrangement of the entrance on the higher side in the CD and on the lower side in the prior design also results in different overall impressions. In the CD, a user who is approaching the building from the entrance side sees the full height of the building, while in the prior design an observer standing in front of the entrance sees only the lower side of the building; the full height of the building is only revealed to him after he steps into the entrance area. (13) The CD produces the overall impression of a traditional, heavy style of building, while the prior design appears more modern and lighter. The CD therefore has individual character in comparison with the prior design. B.4 Copyright (14) On the basis of the differences mentioned above, the building shown in D1 and D2 is not a use of the work which is the subject of the contested CD. In view of these circumstances, the question of whether the subject of the CD enjoys copyright protection in can be left open. The grounds for invalidity of Article 25(1)(f) CDR asserted by the Applicant do not prevent the maintenance of the contested CD. C. Conclusion (15) The facts, evidence and arguments submitted by the Applicant cannot substantiate the asserted grounds for invalidity of Article 25(1)(b) and (f) CDR. The application is therefore to be rejected as unfounded. III. Costs (16) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the fees and the costs incurred by the Holder which were essential to the proceedings. IV. Right to appeal (17) An appeal shall lie from the present decision. Notice of appeal must be filed in writing 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. THE INVALIDITY DIVISION Martin Schlötelburg Eva Udovc Eva Vyoralova 5