OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 19 SEPTEMBER 2006.

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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 19 SEPTEMBER 2006 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS Spanish APPLICANT REPRESENTATIVE OF THE APPLICANT EQUIPAMIENTOS Y MATERIALES DEPORTIVOS, S. L. POLIGONO ROYALES ALTOS CARRETERA BARCELONA KM 334,3 C/G, NAVE 18 E LA PUEBLA DE ALFINDEN (ZARAGOZA) J. ISERN PATENTES Y MARCAS, S.L. AVDA. DIAGONAL, 463 bis, 2ª planta E BARCELONA HOLDERS BENITO JULIAN JEREZ MELENDEZ MIGUEL ANGEL GUTIEZ AGUERRI P. I. MALPICA-ALFINDEN C/LA MORA, NAVES E LA PUEBLA DE ALFINDEN (ZARAGOZA) REPRESENTATIVE OF ALMAZÁN PELEATO PATENTES Y MARCAS, S.L. THE HOLDERS PLAZA DEL PILAR, 12-1º, OFICINA 1 E ZARAGOZA Avenida de Europa, 4, Apartado de Correos 77, E Alicante, Spain Tel Fax Internet:

2 The Invalidity Division, composed of José J. Izquierdo Peris (Rapporteur), Peter Rodinger (Member) and Martin Schlötelburg (Member), took the following decision on 19 September 2006: 1. To reject the application for a declaration of invalidity of registered Community design No To order the applicant to pay the costs of the proceedings. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No (hereinafter the CD ) was registered in the name of its holders, Benito Julián Jerez Meléndez and Miguel Ángel Gutiez Aguerri, with a filing date of 23 September 2005 (without priority being claimed). It was published in the Community Designs Bulletin of 1 November 2005 ( The CD relates to metal hooks (general). The CD is depicted in the following four views: (2) On 22 February 2006, the applicant filed an application for invalidity with regard to the CD. The applicant was of the opinion that the CD should be declared invalid as it conflicted with the application for registration of Spanish utility model No for hook for securing nets and cords in goals or similar uprights, published on 16 December 2002 in the Boletín oficial de la Propiedad Industrial (BOPI) [Official Industrial Property Bulletin] of the Spanish Patent and Trade Mark Office (reproduced infra) and on account of the CD s lack of individual character. In particular, the applicant argued that the CD contravened the object described in the Spanish utility model as it infringed the special features defined in its claims. The applicant compared the CD and the utility model, producing a series of points of identity with regard to the body (grooves, mouth, orifice, sides) and to the base (curved surface) and deducing that the two objects were identical in terms of configuration, and that therefore the general impressions created by the two hooks were practically identical, making them capable of being confused and generating a high level of confusion for the user/consumer. To that end, a copy of the BOPI publication was included, together with a copy of the 2002 catalogue and a number of lists of sales, as proof of the prior hook having been used in trade. The applicant 2

3 based its application on the grounds for invalidity in Article 25(1)(b) 1 CDR, with reference to Articles 4 to 9 CDR, and on Article 25(1)(d) CDR citing a conflict with the prior application in respect of the utility model. (3) For its part, the holder, having been invited to file observations on 17 March 2006, neither appeared nor filed any observations. On 8 August 2006, the Office declared the written stage of the proceedings closed, advising the parties that it would rule in accordance with the evidence available to it. (4) Further information and details of the facts and arguments submitted by the applicant may be found in the file concerning the application for a declaration of invalidity. II. GROUNDS FOR THE DECISION A. Admissibility (5) The application for invalidity is based on the grounds in Article 25(1)(b), with reference to Articles 4 and 6 CDR, on account of the lack of individual character of the CD, and in Article 25(1)(d) CDR citing a conflict with a prior application. The 1 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs 3

4 requirements listed in Article 28(1)(b)(i) 2 CDIR are therefore met. As regards the second ground in particular, ownership of the prior right is substantiated in accordance with Article 28 (1)(b)(ii) CDIR. (6) The fee for the application for invalidity has been paid. The application complies with the other formalities laid down in Article 28(1) CDIR and is therefore admissible. B. On the substance B.1. On the ground established by Article 25(1)(d) CDR (7) Pursuant to Article 25(1)(d) CDR, a Community design may be declared invalid if it is in conflict with a prior design which has been made available to the public after the date of filing of the application for registration and which is protected from a date prior to said date of filing. (8) According to the exhibits adduced by the applicant, and given the absence of any observation or reply on the part of the holder, it is proved that on 16 February 2002 a utility model was disclosed in the Boletín oficial de la Propiedad Industrial of the Spanish Patent and Trade Mark Office (SPTO). By means of said publication, the applicant substantiates publication of a model prior to the date of filing of the CD (23 September 2005). (9) As Article 25(d) is only applicable when the prior model cited by the applicant was made available to the public after the filing date for the CD or, as appropriate, the date of priority, the claim for invalidity on the ground of Article 25(1)(d) CDR should be dismissed since the prior model was published before, not after, the CD. B.2. Individual character (10) Disclosure of the prior model for the purposes of Article 25(1)(d) CDR having been proven, said disclosure is also proven for the purposes of Article 7 CDR. It should therefore be determined whether the CD exhibits individual character. To that end, the designer s degree of freedom in terms of developing the CD should be taken into account. Regarding metal hooks, in particular those used to secure nets and ropes in goals or similar uprights, said degree of freedom is limited by the function they fulfil, which consists in securing containment or protective nets, be these in the area of sport or any other field, a function where the attachment must meet a certain level of reliability (to prevent the net becoming loose) and safety (to reduce the risk of accident in the event of a possible impact), such that certain models of hooks, such as those configured in the form of an open steel eye bolt, provide a level of fastening that does not generally fulfil the necessary reliability and safety conditions, as is acknowledged in the description of the utility model adduced by the applicant. (11) Informed users are familiar with the characteristics of this type of hook. Specifically, they are aware of the existing design corpus known in normal trade by the specialist circles in the sector in question. They know that such hooks form part of a sector of equipment where there is a variety of forms, materials, configurations, colours and lines, and therefore different components may mean that the overall impression given by one model differs from that given by others, despite their having identical components in common. In particular, such users are aware of the existence of a variety of securing models designed such that they cannot injure players, and know that other models are restricted or simply prohibited by the competent authorities in 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing the CDR 4

5 so far as safety conditions so require. The evidence adduced by the applicant does not, however, show the variations in this type of model, to which both the CD and the prior model belong, but merely substantiates the prior model, and not other models in the corpus. (12) In the present case, the overall impression given by the CD differs from the overall impression given by the prior model. Both share the external appearance deriving from the configuration of a securing hook composed of a series of common elements: - composition having a body and a base of rounded forms, with an opening, a central orifice, with lateral grooves and with mouths (as the applicant calls them); - the rounded forms reduce the likelihood of physical injury in the event of impact, fulfilling an essential safety function; - the base is an essential component, allowing securing; the surface of the base is curved to allow securing to the upright; - the body of both models has an upper aperture where the net can be introduced for the purpose of fulfilling the aforesaid securing function. Said aperture is therefore an essential element for fulfilling said function; - the orifice is an essential element, allowing the passage of a screw for securing to the upright; - both models have lateral grooves or apertures on the sides of the base, designed for mounting on guide profiles on the corresponding uprights. (13) However, both are distinguished by the following elements: - the form of the model (1): whereas the CD has an ellipsoidal form, the prior model has a round form; - the configuration of the body (2): whereas the CD has a body composed of two halves separated by an aperture or groove arranged diagonally, a rounded form appearing in the central part thereof, the prior model has a body in the form of a practically complete circle; - the mouths of the body (3): whereas the CD has a mouth in the lower part and in the upper part of the model, as a result of the diagonal aperture, the prior model has a mouth in the sides of the body of the model, in its lower part; - the lateral grooves (4): whereas the CD has individual lateral grooves of ellipsoidal shape defined by the model and with curved endings, the prior model has grooves in the rounded form defined by the model, with straight ends. (14) The characteristics deriving from the configuration are common to both models. However, the elements cited in point (13) are elements that differ in the CD and in the prior model. These differences are significant in terms of producing, in the informed user, a different overall impression of the CD as compared with the prior model, particularly when the informed user pays greater attention to the nonessential elements than to the essential elements, such as the shape of the hook or the configuration of the aperture. In the present case, the CD gives a general impression of an elongated securing hook separated into two halves, whilst the prior model gives an overall impression of a round hook with a moon form. Therefore, the ground for invalidity based on the lack of individual character of the CD should be dismissed. 5

6 C. Conclusion (15) In light of the aforesaid, after examining the evidence contained in the file, the application for a declaration of invalidity should be dismissed as neither of the two grounds cited have been proven. III. COSTS (16) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the losing party shall pay the fees incurred by the other party as well as the costs incurred in the proceedings. In the present case, the applicant is ordered to pay costs. IV. RIGHT TO APPEAL (17) Notice of appeal may be filed in writing at the Office within two months of the date of notification of the decision appealed from. The notice shall be deemed to have been filed only when the fee for appeal has been paid. If an appeal is filed, a written statement setting out the grounds of appeal must be filed within four months of the date of notification of the decision (Article 55 et seq. CDR). THE INVALIDITY DIVISION José J. Izquierdo Peris Peter Rodinger Martin Schlötelburg 6