OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF. English. Red Bull GmbH Am Brunnen Fusch am See Austria

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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 12/11/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8934 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Red Bull GmbH Am Brunnen Fusch am See Austria REPRESENTATIVE OF THE APPLICANT Hogan Lovells Avenida Maisonnave Alicante Spain HOLDER S.C. Intermark s.r.l. Lucian Blaga str., nr SteiRomania 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) took the following decision on 12/11/2013: 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 02/11/2010. In the RCD the indication of products reads soft drink bottle. The RCD was published in the Community Designs Bulletin with the following view: (2) On 27/09/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). 2

3 (3) Using the Office s form the Applicant indicats as grounds for invalidity that [the] challenged Community design does not fulfil the requirements of Articles 4 to 9 CDR 1. (4) As evidence, the Applicant submits, inter alia, the following documents: - A printout of the Holder s website ( taken from the internet archive of the WayBack Machine with the date 20th May, Council Regulation (EC) No 6/2002 on Community designs 3

4 - An affidavit of Mr. Jorge Casals, the employee of the Applicant stating that the bottle in the contested design was purchased in Romania on 27th October, The affidavit includes, inter alia, a copy of an invoice of the METRO CASH & CARRY S.R.L. indicating the date of sale and the name of the sold product, namely 0,5L RIENERGY ENERG PET. The invoice is dated 27th October, (5) In the reasoned statement the Applicant claims that the contested RCD does not meet requirements of novelty because an identical design was disclosed to the public prior to the date of filing of the RCD by the Holder, and therefore the RCD should be declared invalid. (6) In response to the Application, the Holder claims that the evidence provided by the Applicant is not sufficient to prove the disclosure of the contested RCD. According to the Holder, the evidence relies solely on the printout of the European Food website ( as archived by the WayBack Machine. The Holder claims that the WayBack Machine is not a database held by a specialized authority and does not offer any guarantees as regards the truthfulness of its contents. With regard to the affidavit, the Holder argues that it was obviously created specifically to serve as evidence in the context of the invalidity proceedings. Concerning the copy of the METRO invoice, the Holder observes that it is not in the language of proceedings and therefore should be ignored. Moreover, the Holder claims that the copy of the invoice is of very poor quality, which makes it impossible to verify the date, as well as its exact object. (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 within the meaning of Article 28(1)(b)(i) CDIR 2. 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. B. Substantiation B.1 Evidence (9) The Applicant submitted printouts of the WayBack Machine. These printouts are extracts of the internet archive Archive.org bearing dates which can be traced back and hence constitute a valid source of evidence (decision of the Boards of Appeal of 3 December 2009, R1743/2007-1, paragraph 40). 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4

5 (10) With regard to the argument of late submission raised by the Applicant, Article 63 CDR establishes that the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. In the present case, the Office exercised its discretion and decided not to disregard the contested submission of the Applicant because it has been received at a stage at which that submission did not delay the proceedings and because the submission was found to be prima facie relevant to the outcome of the decision (OHIM s Invalidity Manual, Section IV). (11) The copy of the METRO invoice indicates the name of the product and the date of the sale. This date is given in Arabic numerals and hence does not need translation into the language of proceedings. The product is indicated by its name 0,5L RIENERGY ENERG PET which is the same in all the languages of the EU. (12) The Applicant has provided overwhelming evidence that the bottle related to the RCD has been disclosed before the date of filing of the contested RCD and hence made available to the public within the meaning of Article 7(1) CDR. B.2 Novelty (13) According to Article 5 CDR, the contested 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. (14) All the features of the contested RCD were known prior to its date of filing. The RCD was disclosed before it was filed and registered. C. Conclusion (15) The evidence provided by the Applicant supports the ground of Article 25(1)(b) CDR. The contested RCD is declared invalid due to lack of novelty. III. COSTS (16) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder shall bear the costs of the Applicant. (17) 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 (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 that decision. The notice is deemed to have been filed only when the fee for appeal has been 5

6 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 Martin Schlötelburg Jakub Pinkowski Ludmila Čelišová 6