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

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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 20/06/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8953 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Hui Zhao Telstar Technology Park No. 12&14, Gangbei Industrial Zone, Ailian, Longgang District Shenzhen, Guangdong China REPRESENTATIVE OF THE HOLDER Markplus International 39, rue Fessart Boulongne-Billancourt France HOLDER Aiptek International Inc. 5F, No.2, Li-Hsin 6th Rd Hsinchu Science Park Hsin-Chu Taiwan REPRESENTATIVE OF THE HOLDER METIDA LAW FIRM OF REDA ŽABOLIENÉ Business Center VERTAS Gynéjų str. 16 LT Vilnius Lituania Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Jakub Pinkowski (member) and Ingeborg Mendieta Vetter (member) took the following decision on 20/06/2013: 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 03/04/2012. In the RCD the indication of products reads pocket projectors for mobile device. The RCD was published in the Community Designs Bulletin with the following views: ( (2) Using the Office s form the Applicant indicated as grounds for invalidity other(s) according Article 25 (1)(c), (d), (e), (f) or (g) CDR. 2

3 (3) As evidence the Applicant submits a copy of the publication of the RCD ( prior design ) which was filed and registered on 28/03/2012 in the name of the Applicant and published on 04/06/2012 with the following views: (4) In the reasoned statement, the Applicant claims that the contested RCD is in conflict with a prior design and hence must be declared invalid on the ground of Article 25(1)(d) CDR. The Applicant argues that the contested RCD produces the same overall impression on an informed user as the prior design and hence falls in the scope of protection of the prior design according to Article 10 GGV leading to said conflict. In a comparison between the two designs, the Applicant finds that they agree in almost all the features, except for some details. Regarding the freedom of the designer, the Applicant argues that the general shape could have been made different as it is the case for competitive products of other manufacturers. Therefore, degree of freedom of a design is wide. Finally, the Applicant claims that the contested RCD was filed in bad faith. (5) In response to the Application, the Holder observes that the two opposing designs are different in a number of features and hence are not in conflict with each other. As regards the degree of freedom of the designer, the Holder finds it to be severely limited due to the constraints imposed by the function of the device, namely to serve as a pocket projector for a mobile device. (6) For further details to the facts, evidence and arguments submitted by the parties reference is made to the documents on file. 3

4 II. GROUNDS OF THE DECISION Substantiation A. Conflict with prior design (7) The Applicant raises the ground of Article 25(1)(d) CDR which provides that A Community design may be declared invalid : d) if the Community design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if a priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date by a registered Community design or an application for such a design, or by a registered design right of a Member State, or by an application for such right. (8) The contested RCD is in conflict with the prior design in the meaning of Article 25(1)(d) CDR whenever the later design does not create a different overall impression as the earlier design within the meaning of Article 10 CDR (judgment of the General Court of 18 March 2010, T-9/07, Metal rappers ). (9) In the assessment of the overall impression produced by a registered Community design all views of the graphical representation of the design must be taken into account. (10) The contested RCD and the prior design differ in a number of features which have a significant impact on the overall impression produced on an informed user. The differences are illustrated in the following pictures: 4

5 (11) The label 1 refers to a knob for adjusting the sound, and the label 4 concerns cooling openings. The shapes of the knob and the openings are not predefined by any technical constraints and hence must be taken into account with their full weight when assessing the overall impression on an informed user. (12) In contrast, the overall shapes of the devices are predefined by the functionality of the device and none of the similarities resulting from this functionality counts in the assessment of the overall impression. As it is obvious from the shape of the connector, both designs are made to fit exactly the same mobile device, namely an iphone. Therefore, the similarity between the two designs results from a must-fit condition and cannot be taken into account according to Article 8(2) CDR. (13) The Applicant did not provide evidence in support of his allegation that the degree of freedom of a designer of these devices is wide. In particular, the Applicant did not prove that competitive products of other manufacturers have different overall shapes. The purpose of the device points to the opposite direction, namely a limited degree of freedom of the device. Only specific evidence to the contrary provided by the Applicant could result in a finding of a larger degree of freedom than an informed user would assume. (14) As regards the argument of the Applicant that the contested RCD was registered in bad faith, it is noted that bad faith is not a ground of invalidity and hence cannot be taken into account in invalidity proceedings. C. Conclusion (15) The evidence provided by the Applicant does not support the grounds of invalidity of Article 25(1)(d) CDR. Therefore, the Application must be rejected. 5

6 III. COSTS (16) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (17) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of 400 Euro for the costs of representation. IV. RIGHT TO APPEAL (18) 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 this 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 Ingeborg Mendieta Vetter 6