OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 24/07/07. English

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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 24/07/07 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT SIACO Soc. Ind. Com de Art p/ Calçado, SA Rua Combatentes do Ultramar, 152 Zona Industrial S João da Madeira Portugal HOLDER VAPESOL Fábrica de Componentes para Calçado, Unipessoal, LDA Devesa Escura - Revinhade Felgueiras Portugal REPRESENTATIVE OF THE HOLDER Arlindo de Sousa Marcas e Patentes, LDA Rua de Sá da Bandelra, Porto Portugal Avenida de Europa, 4 Apartado de Correos 77 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Peter Rodinger (member) and Eva Vyoralova (member) has taken the following decision on 24/07/07: 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 (in the following: the RCD ) has been registered in the name of the Holder with the date of filing of 15/12/06. In the RCD, the indication of products reads Soles for footwear and the design is represented in the two following views (published at (2) On 05/02/07, the Applicant filed an application for a declaration of invalidity (in the following: the Application ) contesting the validity of the RCD. The fee for the Application was paid by bank transfer with effect of 05/02/07. (3) The Applicant requests the invalidation of the RCD based on Article 25(1)(b) and (d) CDR 1 because the contested design is a copy of the Applicant s previous registered Community design He argues that the RCD presents an identical design structure, contours, lines, texture and identical ornamental elements. 1 Council regulation (EC) No 6/2002 of 12 December 2001 on Community designs 2

3 (4) As evidence, the Applicant provided the following documents: - A copy of a RCD-Online printout of the Community design registration no (in the following: D1), filed on 02/11/06 and published on 21/11/06, showing the following two views of the registered design (in the following: prior design): - A copy of a technical report elaborated by Centro tecnológico do calçado de Portugal (in the following D2 ) in Portuguese. (5) The Holder replies that the prior design is no obstacle for the novelty and the individual character of the RCD. Furthermore, he observes that D2 was not submitted in the language of the proceedings. (6) On 31/05/07 the Office informed both parties that the written proceedings were closed and that a decision concerning the invalidity would be taken. (7) For further details to 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 (8) The indication of the grounds for invalidity on the form of the Office is a statement of the grounds on which the Application is based in the meaning of Art. 28(1)(b)(i) CDIR 2. Furthermore, the Application complies with Art. 28(1)(b)(vi) CDIR, since the attachment contains an indication of the facts, evidence and arguments submitted in support of those grounds. The other requirements of Art. 28(1) CDIR are fulfilled as well. The Application is admissible. (9) The request to declare the RCD invalid based on Article 25(1)(d) CDR was not taken into consideration, because this invalidity ground does not apply, as the prior design has been made available to the public before the filing date of the RCD. B. Substantiation B.1 Evidences (10) The document D2 could not be taken into consideration as an evidence since it was not submitted in the language of the proceedings according to Article 29(5) CDIR. B.2 Novelty (11) According to Article 5 CDR the RCD lacks novelty when 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. (12) The RCD and the prior design concern both soles for shoes. Both designs have a similar longish and rounded form which is derived from the natural form of a foot: The front part is broader than the back part. On the upper side both soles show a lattice-like structure. The underside of the sole has two elliptical areas which are both framed. In these areas you can find different ornamentations: the contested RCD shows an unsystematic arrangement of longish leafs. In contrast, the prior design shows a pattern which appears to symbolize a single leaf. The pattern of the prior design and the leaf ornamentation of the RCD are very different in appearance. 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs 4

5 (13) The ornamentation on the sole is not an immaterial detail. Therefore, the two designs having different ornamentations are not identical within the meaning of Article 5 CDR. B.3 Individual character (14) A design has an individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any prior design which has been made available to the public. (15) The informed user is familiar with the design of soles for shoes and their variety on the marketplace. He is aware that the degree of freedom of a designer concerned with such soles is limited by their technical function in so far as the sole is the lower part of a shoe and therefore it should allow safe walking and stability for the foot. (16) In the present case, the overall impression produced on the informed user by the contested RCD differs from the overall impression produced by the mentioned prior design. The informed user knows the standardised form of soles and therefore recognizes in particular the significant differences regarding the ornamentation of the two sections of each design. (17) Therefore, the prior design does not form an obstacle to the individual character of the RCD. C. Conclusion (18) The facts and evidence provided by the Applicant do not support the invoked ground for invalidity of Article 25(1)(b) CDR. Therefore, the Application has to be rejected. III. COSTS (19) Pursuant to Article 70(1) CDR and Art. 79(1) CDIR, the Applicant shall bear the fees and the costs of the Holder. 5

6 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 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 Peter Rodinger Eva Vyoralova 6