OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 31/01/2013.

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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 31/01/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8629 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT Duif s Florist Articles B.V. Legmeerdijk KC Aalsmeer Netherlands AKD PRINSEN VAN WIJMEN H.G.M. Berendschot Bijster HX Breda Netherlands HOLDER AFA Decor B.V. De Lauwers BW Leeuwarden Netherlands REPRESENTATIVE OF THE HOLDER Bijeneveld Van Harmelen Beurs World-Trade center Posbus DC Rotterdam Netherlands Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Martin Schlötelburg (member) took the following decision on 31/01/2013: 1. The registered Community design nº is declared invalid. 2. The Holder shall bear the costs of the Applicant. 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 21/12/2007. In the RCD, the indication of products reads tea-light holders and candle holders. The design was published in the Community Designs Bulletin in the following views: (2) On 19/12/2011, the Applicant filed an application for a declaration of invalidity ( the Application ). The fee for the Application was paid from the account with the Office. (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 fulfill 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, inter alia: - a copy of the official statement of Liu Hong Quan, the General manager of Chinese company Chaozhou Sanhong Ceramics Making Co. (hereinafter Sanhong ) stating that the company has in the course of its business designed and developed the tea-light holder depicted below in 2005 (hereinafter D1): 2

3 - printouts of correspondence between Sanhong and Sytse Bouwer, the owner and director of AFA Decor (the holder of the contested RCD) dated 2008, 2009 (hereinafter D2); - a copy of the statement of Henk Blom, the owner and manager of Henk Blom Decorations, stating that [o]n 20 October 2006 I had the appended design drawing of a tea light holder made by Chaozhou Yongsheng Ceramics Manufacturing Co. Ltd and continuing: I had a number of copies of this product made in 2006 in the hope of being able to generate sales for this product in the European market. I also append a number of photographs [two of them are shown 3

4 below] that I took in the showroom of Yongsheng during my visit to Yongsheng in mid (hereinafter D3): - a copy of the statement of Loek Sloesen, the owner and manager of Keramische Industrie Limburg B.V., who states: I have been shown a picture of a tea light holder in the shape of a lotus (appended). I have been asked whether Keramishe Industrie Limburg has this specific product in its assortment, or did have it in the past. This is the case. This product was produced exclusively for us by our Chinese supplier Chaozhou Yongsheng Ceramics Manufacturing Co. Ltd. (Yongsheng) and we first imported it in I saw this design in the showroom of Yongsheng on 20 June 2007 and subsequently agreed with Mr Steven from Yongsheng that he would make this product solely for Keramishe Industrie Limburg. On my visit to Yongsheng I also took a photograph of the design. I have appended this photograph, taken on 20 June 2007 at 1.46pm, to this statement (hereinafter D4): 4

5 - a printout of confirmation of discussion, dated 20/06/2007, containing the picture from D4 (hereinafter D5); - a copy of Statement of Peng Guilin, the general manager of Chaozhou Yongsheng Ceramics Manufacturing Co. Ltd. (hereinafter Yongsheng ) stating: 1. That the company has in the course of its business designed and developed the tea-light holder depicted bellow in May That the Company has offered and sold the Product depicted below to Keramishe Industrie Limburg B.V. Venloseweg Gr Tegelen; Holland (Mr Loek Sloesen) and so in the territory of Europe before 21 st of December To be exact was produced exclusively for Keramische Industrie Limburg B.V. and shown first on June 20 th and ordered by Keramische Industrie Limburg B.V. on October 1 st 2007 (hereinafter D6): - copies of order 2215 made at Yongsheng on 01/10/2007 by Keramishe Industrie Limburg, among other articles also for Lotus tealightholder 13xH10cm sh.white, Lotus tealightholder 13xH10cm sh.black and Lotus tealightholder 13xH10cm sh.silver, the payment order, sales confirmation, packing list, invoice and shipping documents (hereinafter D7); 5

6 - a copy of Statement of Simon Haanstra, the owner and manager of Glass- Pavilion Import/Export B.V., accompanying Sytse Bouwer at his visit in Chaozhou Xiongxin Ceramics Craft Making Co. Ltd (hereinafter Xiongxin ) on 03/10/2007. Simon Haanstra states: During our purchasing trip in October 2007 we went back to Yongsheng Ceramics to purchase our spring collection. During this visit we saw the Artichoke tea light holder in their showroom in several colours (photographs of the tealight holder in the colours white, black and silver taken at Yongsheng on 3 October 2007 are appended). Mr Bouwer was greatly interested in this product, but Yongsheng told us that it was an exclusive design for Keramische Industrie Limburg, and that we could not buy it. After our visit, we took a taxi to our next appointment with the company Chaozhou Xiongxin Ceramics Craft Making Co. Ltd (Xiongxin). During our taxi ride to the plant Mr Bouwer pulled an artichoke tea light holder out of his bag that, without my knowledge, he had taken from the Yongsheng showroom. We showed it to the director of Xiongxin and asked him what kind of price he could do if we purchased 100,000 of them in various colours. A photograph of the design of Yongsheng Ceramics with a label showing the article number EG005 taken at Xiongxin on 4 October 2007 is appended (hereinafter D8): 6

7 (5) In the reasoned statement the Applicant submits that both the Applicant and the Holder, purchased artichoke shaped candle holders from Sanhong, a proof of which is the correspondence between Sanhong and Sytse Bouwer from 2008, (6) In his response the Holder submits that the Applicant has raised his arguments against the validity of the RCD in legal proceedings before the Court in the Hague. The court declared the RCD valid and dismissed the arguments presented by the Applicant. Regarding D1 the Holder submits that the statement of Sanhong is not supported by any documents showing to whom, how many and precisely when the tea-light holders were disclosed on European market. (7) In the response to the Holder s rejoinder, the Applicant submits that in the summary proceedings before the Community design court in the Hague, of which both the Applicant and the Holder are the parties, the court cannot render declaratory judgments and it cannot invalidate the RCD. Validity of the RCD may be challenged only with a counterclaim for a declaration of invalidity in the main litigation which have not commenced yet. The court only stated that the RCD is valid. (8) The Applicant contests the legitimacy of the Holder s claim to the ownership of the contested design. The Applicant states: Since it cannot be held that the 7

8 Holder is in fact the designer of the Designs [the contested RCD and RCD , which is subject of another invalidity procedure], it cannot be held that the right to the Designs is vested in the Holder. (9) The Applicant further claims that an identical design was created for Henk Blom decorations in 2006 by Yongsheng, it was exclusively produced and bought by Keramische Industrie Limburg in 2007, and brought to Xiongxin by Sytse Bouwer the same year. All these acts are disclosures which form the obstacle to the novelty of the RCD. (10) In his rejoinder the Holder rejects the evidence submitted by the Applicant as falsified and submits an correspondence with Steven Lee, the employee of Yongsheng. According to Steven Lee, Keramische Industrie Limburg B.V. started doing business with his company as of (11) 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. 1 Admissibility (12) 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. A.2 Legal action before the Community design court (13) The Holder claims that the validity of the RCD has been ruled in a legal proceeding before the the Community design court in the Hague. (14) According to Article 85 (1) CDR a validity of an RCD can be challenged only with a counterclaim for a declaration of invalidity in the proceedings in respect of an infringement action or an action for threatened infringement of an RCD. According to Article 86 (2) CDR where in a proceeding before a Community design court an RCD has been put in issue by way of a counterclaim for a declaration of invalidity, the Community design court with which a counterclaim has been filed shall inform the Office of the date on which the counterclaim was filed. The Office shall record this fact in the register. According to Article 91 (2) CDR the Office, when hearing an application for a declaration of invalidity of an RCD, shall, unless there are special grounds of continuing the hearing, on its own motion after hearing the parties, or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the RCD is already in issue on account of a counterclaim before a Community design court. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 8

9 (15) Ruling of the the Community design court in the Hague on prima facie validity of the design right is not the legal action in the sense of Article 85 (1) CDR. The Office has obtained no evidence of filing a counterclaim or launching a legal action at a Community design court concerning declaration of the validity of the RCD. In the absence of such evidence, the Office does not stay this invalidity proceeding. B. Substantiation B.1 Entitlement to a Community design (16) The Applicant submitted as evidence a range of documents, mostly referring to business entities in China. According to these documents a candle holder in the shape of artichoke has been produced by at least three companies (Sanhong, Yongheng and Xiongxin), and two of them (Sanhong and Yongheng) also claim the authorship of the design of their products. The issue of entitlement to the RCD is a matter which should be put aside in this invalidity proceeding to a legal action before a court pursuant to Article 15 CDR. In the absence of any court decision as a result of such a legal proceeding, the right to the RCD vests in the person in whose name the RCD is registered. All the statements of authorship (D1, D3 and D6) are thus considered to the extend they can prove or not disclosure of the designs for the purpose of assessment of novelty of the contested RCD. B.2 Disclosure (17) According to Article 7 (1) CDR, for the purpose of applying Articles 5 and 6, 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 contested RCD, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. (18) The Applicant submitted three statements containing the same design of artichoke or lotus like candle holder (D4, D6 and D8). Loek Sloesen in D4 states that his company ordered a candle holder in October 2007, he attached a picture of it and provided the order and delivery documents dated October 2007 containing three articles titled lotus tealightholders. The transaction is confirmed also by Yonsheng in D6. The availability of the same design in the showroom of Yongheng in October 2007 is further confirmed by Simon Haanstra in D8. The Holder did not submit any evidence to challenge the assertions that in October 2007, which is before the filing date of the contested RCD, the design of artichoke or lotus candle holder as depicted in D4, D6 and D8 was disclosed in China to representatives of three companies operating on European market. This act could reasonably have become known in the normal course of business to the circles specialised in the sector concerned within the Community pursuant to Article 7 (1) CDR, because all the companies did business in China and were aware of the products available there in the sector of decorative items to which candle holders belong. Thus the Office considers the design of candle holder as shown in D4 resp. D5, D6 and D8 (hereinafter the prior design ) being made available to the public in compliance with Article 7 (1) CDR. 9

10 B.3 Novelty (19) 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 or the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details. (20) Both the contested RCD and the prior design relate to decorative items, namely the holder of tea candles. Both are made of leaves forming a blossom of the lotus flower or the artichoke heart. In both designs the tea candle is supposed to be placed in the middle space surrounded by the leaves. The leaves in both the designs are striped. The designs have identical shape and structure, the features, which are discernible from the registration of the contested RCD. Because the RCD does not differ from the prior design it is not new in the meaning of Article 5 CDR. C. Conclusion (21) The RCD is declared invalid on the ground of Article 25(1)(b) CDR in conjunction with Article 5 CDR, due to the lack of novelty. III. COSTS (22) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (23) 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. IV. RIGHT TO APPEAL (24) 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 Jakub Pinkowski Martin Schlötelburg 10