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

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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 18/09/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9440 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Jeronimo Martins Polska S.A. ul. Żniwna, 5 Kostrzyn REPRESENTATIVE OF APPLICANT Ryszard Skubisz Kancelaria Prawno Patentowa ul. Piastowska Lublin HOLDER INTERTRADE-PATIO Sp. z.o.o. Pojezierska Łódź REPRESENTATIVE OF HOLDER Jarzynka i Wspólnicy Kancelaria Prawno-Patentowa ul. Słomińskiego 19/ Warszawa Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Jakub Pinkowski (member) and Ludmila Čelišová (member) has taken the following decision on 18/09/2014: 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 ) is registered in the name of the Holder with a date of filing of 19/12/2012. The indication of products reads correction pens and the design is published in the Community Designs Bulletin with the following views: ( (2) On 26/02/2014, the Applicant filed a request for a declaration of invalidity (hereinafter the Application ) contesting the validity of the RCD. (3) Using the Office form for the application, the Applicant requests a declaration of invalidity on the ground that the RCD does not fulfil the requirements of 2

3 Articles 4 to 9 of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). (4) The Applicant claims that the contested RCD lacks novelty and individual character because it is identical to a prior design. (5) As evidence, the Applicant provides inter alias the following documents: - a copy of a catalogue of the company PATIO dated 2009/2010 downloaded from the internet and showing a correction pen correction fluid 2in1 (in the following: prior design) in the following image: - an internet print-out of a sale offer of the company REMA on, bearing a date of introduction of 25/11/2009 and including a picture of the prior design as follows: ( Patio.html) 3

4 (6) In response to the Application, the Holder observes that the prior design shows the pen with colourful labels whereas the contested RCD shows the pen in plainly white with no labels on it. The decorative, colourful, element is eye-catching and clearly different than the plain, white body of the design in question. Furthermore, the Holder claims that the comparison of the contested RCD with the prior design is not possible because the Applicant has not provided pieces of evidence which shows the entire product. Finally, the Holder claims that the evidence for the disclosure of the prior design should be disregarded because the Applicant has not provided evidence that the catalogue was distributed. (7) 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 (8) The indication of the grounds for invalidity in the Application is a statement of the grounds on which the application is based in the meaning of Article 28(1)(b)(i) CDIR. 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 thus admissible. B. Substantiation B.1 Disclosure (9) The prior design has been disclosed in a catalogue available on a website of the internet and dated as of 2009/2010. The website belongs to a company, namely Patio, specialized in all sorts of stationaries, including correction pens. The access to the website is not restricted and can be found by search machines such as Google. It lies within the normal course of business of the circles specialized in the sector concerned to make searches on the internet. 4

5 (10) Therefore, the prior design is deemed to have been made available to the public in the meaning of Article 7(1) CDR prior to the date of filing of the contested RCD. B.2 Novelty (11) According to Article 5 CDR the RCD lacks novelty if 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) All the features of the correction pen of the RCD, namely the shape and the contour of the pen, are identically included in the prior design. The design of the RCD is graphical represented by black & white drawings and hence does not claim a specific colour. Therefore, the colours visible in the prior design are not an issue in the comparison with the RCD. Likewise, the trademarks and elements of ornamentation on the prior design do not alter the finding that the prior design discloses the same features as claimed by the RCD. C. Conclusion (13) The contested RCD is to be declared invalid on the grounds of Article 25(1)(b) CDR due to lack of novelty. III. COSTS (14) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the costs of the Applicant. (15) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750 Euro corresponding to the costs of representation of 400 Euro and the reimbursement of the invalidity fee of 350 Euro. IV. RIGHT TO APPEAL (16) 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 (Art. 57 CDR). THE INVALIDITY DIVISION Martin Schlötelburg Jakub Pinkowski Ludmila Čelišová 5