OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 19/02/2013.

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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 19/02/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8820 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT FU, Xijiong Appartmnet No. 404, Building 135 Xushan Jiediao Chengdong Xin Cun Cixi City China Meiting Zhu Brückenstraße Köln Germany HOLDER REPRESENTATIVE OF THE HOLDER Grainne Kelly 31 Rosswater Derry BT47 6YR United Kingdom FRKelly 4 Mount Charles Belfast BT7 1NZ Northern Ireland United Kingdom 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 19/02/2013: 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 (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 booster cushions for children. The design was published in the Community Designs Bulletin in the following views: (2) On 12/06/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). The fee for the Application was paid via bank transfer. (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: - two photographs of a booster seat, undated, as follows (hereinafter D1): 2

3 - a copy of the registration of the Chinese utility model No. CN U, filed on 27/03/2009 at the Sino Intellectual Property Office of P. R. of China (hereinafter SIPO), registered in the name of the Applicant, and published on 24/11/2010 (hereinafter D2); - a copy of the registration of the German utility model No. DE U1, filed on 31/01/2010 at the German Patent and Trademark Office (hereinafter DPMA), registered in the name of the Applicant, and made available to the public by the registration on 05/01/2011 (hereinafter D3); - a copy of the UK Patent Application No. GB A, filed on 31/01/2010 at the Patent and Trademark Office of United Kingdom (hereinafter UK IPO), registered in the name of the Applicant, and made available to the public on 20/04/2011 (hereinafter D4). All three documents contain the following graphical representation of the invention: 3

4 - three photographs, undated, according to the Applicant made on the Hong Kong Baby Products Fairs held in the Hong Kong Convention and Exhibition Centre on 11/01/2010, and a list of exhibitors, which includes Ningbo Yuanyan Car Accessories Col., Ltd., the Applicant s company, exhibiting at the booth No. 3EF37 (hereinafter D5): 4

5 - a copy of the international application published under the PCT No. PCT/EP2010/001910, filed on 26/03/2010 at World Intellectual Property Organization (hereinafter WIPO), registered in the name of the Holder, and published on 07/10/2010 (hereinafter D6). The graphical representation of the invention is as follows: 5

6 (5) In the reasoned statement, the Applicant claims that he designed and he has been producing the booster seat as represented in D1 D5 since The Applicant also claims that after the filing of the national patent application at SIPO (D2), he applied for the international application No. WO 2010/ published under the PCT on 30/09/2010. Thus the RCD lacks novelty and individual character, as the identical design of the booster seat was made available prior to the date of filing of the RCD. (6) In his response the Holder claims that the disclosures referred to in the Application for invalidity were made public by a third party as a result of information provided or action taken by the designer, Mrs. Grainne Kelly, and during the twelve months period preceding the date of filing of the Application. Therefore such disclosures shall not be taken into consideration for the purpose of applying Articles 5 and 6 CDR. The RCD was developed in December 2008, and in February 2009 it was provided to John McGlinchey in the form of sketches as follows: for the reproduction in better quality illustrations, as follows: 6

7 The RCD was disclosed in confidence to the Applicant in Ningbo Yuanyuan Auto Accessories Co.l, Ltd. (hereinafter Yuanyuan ) on a meeting held on 25-27/03/2009 as it is evident from the correspondence negotiating the trip to China submitted by the Holder. The patents documents referred in the evidence by the Applicant were filed by the Applicant without the Holder s knowledge or permission. The product shown at the Hong Kong Baby Products Fair by Yuanyuan in 2010 was clearly manufactured to the Holder s design without the Holder s logo and shown without the Holder s permission and acknowledgement. (7) In the response, the Applicant holds that the evidence provided by the Holder does not prove that the Holder is the designer of the RCD and insists that his product was developed by him before the meeting with the RCD Holder. As a prove of it the Applicant submits pictures of the product as follows (hereinafter D7): 7

8 (8) In the rejoinder, the Holder submits a witness statement signed by John McGlinchey confirming the authenticity of the earlier submitted drawings as received written instructions to prepare formal drawings (see paragraph 6 above). The instructions were delivered to him on 06/02/2009. (9) The Holder further submits, that the design according to D2-4 in comparison with the Holder s PCT application (D6) demonstrates a lack of understanding of the invention by the Applicant and supports the Holder s submission that D2 was filed upon incomplete information obtained from the Holder during their meetings in China on 25-27/03/2009 and filed without the Holder s knowledge and consent. The booster cushion according to Figure 1 of D2 is very different from the RCD. Figure 2 of D2 was added to the draft patent application following receipt of the Holder s drawings, suggesting that an external mantle is added to the booster cushion according to Figure 1. The seat belt receiving clips of the cushion shown in Figure 2 are very different from those of the cushion shown in Figure 1. By contrast, the embodiment of the invention according to Holder s application (D6) corresponds to the representation of the RCD. (10) Regarding the provided photographs of the Applicant s product in D7, the Holder claims that they do not prove that the product, which they represent, was made before the meetings of 25-27/03/2009. The fact that the Applicant disclosed a similar product at the said trade fair does not support the Applicant s claim that he developed the design. 8

9 (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. 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. B. Substantiation B.1 Disclosure (13) 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 filing date of the contested RCD, except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality. (14) According to Article 7(2) CDR a disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6 if a design for which protection is claimed under a registered Community design has been made available to the public by the designer, his successor in title or a third person as a result of information provided or action taken by the designer or his successor in title, and during the 12-month period preceding the date of filing of the application. According to Article 7(3) CDR, paragraph 2 shall also apply if the design has been made available to the public as a consequence of an abuse in relation to the designer or his successor in title. (15) The Applicant claims disclosure of a prior design in several patent documents: In Chinese utility model registration (D2) on 24/11/2010, in German utility model registration (D3) on 05/01/2011 and UK patent application (D4) on 20/04/2011. The Applicant also claims disclosure of his international application WO 2010/ (based on the prior Chinese filing D2) published under the PCT on 30/09/2010. The Applicant further submits the PCT application (D6) of the Holder published on 07/10/2010. (16) Out of the provided patent documents only the PCT applications were made available to the public before the date of filing of the contested RCD, i.e. 02/11/2010. Documents D1 and D7 do not bear any date, and either on their 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 9

10 own or in conjunction with other evidence they do not prove the disclosure of the designs shown in them before the date of filing of the application for registration of the contested RCD. (17) The disclosure of the RCD in the PCT application of the Holder is excluded from the assessment of novelty and individual character of the RCD by virtue of article 7(2) CDR as it was made available within the grace period upon provided information and the action taken by the Holder of the design. The disclosure of the design in the PCT application of the Applicant and the disclosure of the design shown on the trade fair in Hong Kong according to D5 are considered further. (18) The Holder claims that the RCD was disclosed to the Applicant under the condition of confidentiality pursuant to article 7(1) CDR and further that the Applicant abused the information provided by the Holder and disclosed the design without the Holder s knowledge and consent. On the other hand the Applicant claims the authorship of the design disclosed by him, and that the RCD is not new with respect of his design. (19) While the Holder submitted drawings of the design and the witness statement of the author of professional drawings based on the designer s sketches, the Applicant failed to prove the origin of his design. Both the Applicant and the Holder filed PCT applications claiming the priorities from national filings in China on 27/03/2009 and in UK on 03/04/2009, which supports the arguments of the Holder that the parties filed the applications upon the results of the meeting in China. The Office further agrees with the Holder that the Chinese filing contains discrepancies in the representation of the invention according to figures 1 and 2 and its description. (20) Considering all the facts and submissions provided by both the parties, the Office finds the disclosures in the WO 2010/ and according to D5 being made as the consequence of an abuse of information provided by the Holder to the Applicant. Under such circumstances, disclosures shall not be taken into consideration for the purpose of assessment of novelty and individual character of the contested RCD if made within a twelve-month grace period according to Article 7(2) CDR. As it is the case, there are no relevant disclosures. C. Conclusion (21) In the absence of evidence of prior designs supporting the ground of invalidity invoked by the Applicant, the application must be rejected as unfounded. III. COSTS (22) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (23) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of 400 Euro for the costs of representation. 10

11 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 11