OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 14/06/04. English

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DESIGNS DEPARTMENT- INVALIDITY DIVISION DECISION OF THE INVALIDITY DIVISION OF 14/06/04 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT José Mallent Castello c/ 235, 6 E Cañada-Paterna, Valencia Spain REPRESENTATIVE OF APPLICANT J. Isern Patentes y Marcas, S.L. Avda. Diagonal, 463 Bis, 2 Planta E Barcelona Spain HOLDER 3M Innovative Properties Company 2501 Hudson Road St. Paul, MN USA REPRESENTATIVE OF THE HOLDER Ms. Cecilia A. Hill 3M Europe S.A./N.V. 7 Hermeslaan B-1831 Diegem Belgium Avenida de Europa, 4 Apartado de Correos 77 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), June Davies (member) and José Izquierdo Peris (member) took the following decision on 14/06/04: 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 (in the following: the CD ) has been registered in the name of the Holder with the date of filing of 11/04/03. In the CD, the indication of products reads skin antiseptic composition dispenser and the design is represented in the following five views (published at (2) On 12/12/03, the Applicant filed an application for a declaration of invalidity (in the following: the Application ) contesting the validity of the CD. The fee for the Application was paid by current account with effect of 12/12/03. (3) The Applicant, by making use of the right recognized by article 25 point 1 paragraph d) of the valid and applicable Community Designs Regulation, claims that the dispenser of the CD is totally anticipated by his Spanish utility model No. U for a disposable sterile swab. As evidence, the Application includes a copy of page 9255 of the Boletín Oficial de la Propiedad Industrial dated 01/11/2000 (in the following: D1). In D1 the following figures are disclosed in relation to the Spanish utility model No U (application No. U ): 2

3 (4) In comparing the dispenser of the CD with the swab disclosed in D1, the Applicant argues that both devices are constituted of an applying body linked to a support suitable for handling the conjunct and the application of the antiseptic (aseptic) composition on the skin. He observes that the applying body of the Community design presents a perceptible trapezoid form, which configuration is comprised in the first claim of the Spanish utility model claiming an applying body of any form and size, which representation in the figures defining the same presents a perceptibly square form. He points out that the support of the dispenser of the CD represents a cylindrical, stylized and stiff configuration, just as the claimed support in the Spanish utility model." He claims that the applying body of the impugned Community design is disposed in the interior of a transparent container, just as the applying body of the Spanish utility model is disposed in the interior of a transparent package containing it. The container presented by the impugned Community design, just as the container presented and claimed by the Spanish utility model, is fixed near the neck of the support, allowing a considerable length of the same to be uncovered. He requests to declare the nullity of the CD due to lack of novelty, and due to its anticipation by the Spanish utility model. (5) On 12/01/04 the Holder was notified of the Application. (6) On 11/03/04 the Holder submitted his observations. He argues that according to the application form, the design registration is challenged only on one or more grounds specified in Article 25(1)(c)-(g) CDR. The accompanying argument, however refers specifically to article 25 point 1 paragraph d). He observes that the invalidity application fails to identify a prior design, since the argument in support of the invalidity application identifies only Spanish utility model No U (application No. U ): that is not a registered design right and was, moreover, apparently available to the public prior to 14 October Therefore, as a first request, the Holder submits that the invalidity application should be rejected because the ground(s) for 3

4 invalidity have not been clearly identified and substantiated. As additional submissions, in the event that the Invalidity Division of the Office is not inclined to grant the above request, the Holder argues that there are clear differences between the appearance of the wedge-shaped head and the surrounding casing of the challenged Community design registration and the appearance of the cylindrical head 1 and the surrounding casing 3 shown in the drawings of the Spanish utility model. The Holder submits that the reference in claim 1 of the Spanish utility model to the head 1 being of any form is not a clear disclosure of a head that has the form shown in the challenged registration, still less of a casing that has the form shown in the challenged registration. Therefore, he concludes, the design of the CD is not only new, but has individual character. (7) On 22/03/04 the Office communicated the observations of the Holder to the Applicant with an invitation to reply. Since no reply has been received by the Office, both parties were informed on 01/06/04 that the written proceedings are closed and that the Office would take a decision. (8) For further details to the facts, evidence and arguments submitted by the Applicant and the Holder reference is made to the documents on file. II. GROUNDS OF THE DECISION A. Admissibility (9) The request of the Applicant to declare the nullity of the CD due to lack of novelty, and due to its anticipation by the Spanish utility model is a statement of the grounds on which the Application is based. Therefore, the requirement of Art. 28(1)(b)(i) CDIR 1 is fulfilled. The legal basis for a declaration of invalidity of a registered Community design due to lack of novelty is constituted by Art. 25(1)(b) CDR 2. The Applicant s reference to Art. 25(1)(d) CDR as juridical ground is an obvious error which does not affect the admissibility of the Application. The further requirements of Art. 28(1) CDIR are fulfilled as well. The Application is admissible. B. Substantiation (10) From the request of the Applicant to declare the nullity of the CD due to lack of novelty, and due to its anticipation by the Spanish utility model in conjunction with the facts and evidence submitted with the Application, it is obvious that the Applicant seeks the declaration of invalidity of the CD on the ground that the requirements for protection are not fulfilled in view of an earlier disclosure. The requirements for protection affected by an earlier disclosure are novelty and individual character (Art. 5 and 6 CDR). Therefore, in the examination of the Application, novelty and individual character of the CD have to be assessed. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs 2 Council Regulation (EC) No 6/2002 on Community designs 4

5 B.1 Novelty (11) The disposable sterile swab of D1 and the skin antiseptic composition dispenser of the CD comprise each a stem and a head attached to one end of the stem. However, the head depicted in D1 has the shape of a cylinder, whereas the head of the dispenser according to the CD is wedge-shaped. (12) D1 does not disclose any other shape for the head than the cylinder shown in Fig. 1 and 2. The reference to a swab (1) of any form, size and texture in claim 1 of the Spanish utility model does not constitute a disclosure of a specific form; in particular the reference does not anticipate the wedge-shaped form of the head represented in the CD. Where the figures in D1 disclose a perceptibly square form they refer to the first and the second container (3, 4), but not to the swab (1). (13) Furthermore, the dispenser of the CD includes a casing surrounding the end of the stem to which the head is attached, however, the casing is longer than the head so that it extends around, but is not fitted to, part of the length of the stem. No such casing is disclosed in D1. The container of the Spanish utility model, to which the Holder refers, is meant to contain the head, along with certain quantity of the antiseptic substance, insulating it from outside, as it is explained in Claim 1 and shown in Fig. 1 of the Spanish utility model. (14) The design disclosed in D1 is not identical to the design represented in the CD. Therefore, the submission of the Applicant that the CD lacks novelty is not founded. B.2 Individual Character (15) The informed user is familiar with products of the type to which the CD relates. He knows that a skin antiseptic composition dispenser is a medical device used in antiseptic preparation of patient s skin for surgery. (16) In assessing the individual character, the informed user takes into consideration the degree of freedom of a designer in developing the CD. The functionality of the product to which the CD applies affects the degree of freedom of the designer and hence has to be taken into consideration. (17) The functionality of such a medical device implies that it has a stem and a head attached to one end of the stem. The stem serves as a handle for the head; the head is soaked with antiseptic fluid. By means of the stem, the head is brought in contact with the patient in order to apply the antiseptic fluid to his skin. (18) Having in mind that the basic structure of such a device is a consequence of its functionality, the informed user focuses his attention to the features not necessarily implied by this function. (19) The head of the device does not need to be of a specific form in order that the device can fulfil its function. On the contrary, claim 1 of the Spanish utility model explicitly states that the head may be of any form, size and texture. 5

6 (20) The head of the device shown in Fig. 1 and 2 of D1 is cylindrical in shape, whereas the head of the dispenser according to the CD is wedge-shaped. The design depicted in D1 combines a cylindrical-shaped head with a cylindricalshaped stem, whereas in the CD the shape of the head has no similarity with the shape of the stem. Using the same geometrical shape for stem and head produces a different overall impression than a combination of two different shapes. (21) In addition, the dispenser according to the CD includes a casing surrounding the end of the stem to which the head is attached, however, the casing is longer than the head so that it extends around, but is not fitted to, part of the length of the stem. No such casing is disclosed in D1. The casing adds to the differences in the overall impressions produced by the CD and the design disclosed in D1, respectively. Therefore, the submission of the Applicant that the CD lacks individual character is not founded. C. Conclusion (22) The design disclosed in D1 is different to the design represented in the CD. The submissions of the Applicants that the CD lacks novelty (Art. 5 CDR) and individual character (Art. 6 CDR) are not founded. Therefore, the Application is to be rejected. III. COSTS (23) Pursuant to Article 70(1) CDR and Art. 79(1) CDIR, the Applicant bears the costs incurred by him essential to the proceedings. 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 (Art. 57 CDR). THE INVALIDITY DIVISION Martin Schlötelburg June Davies José Izquierdo Peris 6