OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 26/07/07. English

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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 26/07/07 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT FLEX EQUIPOS DE DESCANSO, S.A. Torrelaguna, Madrid Spain REPRESENTATIVE OF THE APPLICANT J. ISERN PATENTES Y MARCAS, S.L. Paseo de la Castellana, o Dcha Madrid Spain HOLDER The Procter & Gamble Company One Procter & Gamble Plaza Cincinnati, Ohio United States of America REPRESENTATIVE OF Elzaburu THE HOLDER Miguel Angel, Madrid Spain Avenida de Europa, 4, Apartado de Correos 77, E Alicante, Spain Tel. (+34) Fax: (+34) Internet:

The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Peter Rodinger (member) and Eva Vyoralova (member) has taken the following decision on 25/06/07: 1.

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Peter Rodinger (member) and Eva Vyoralova (member) has taken the following decision on 25/06/07: 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 registered Community design No (in the following: the RCD ) has been registered in the name of the Holder with the date of the filing and the date of registration of 02/02/06. In the RCD, the indication of products reads Ornamentation and the design is represented in the following one view (published at (2) On 14/06/06 the Applicant filed an application for a declaration of invalidity (in the following: Application ) contesting the validity of the RCD. The fee for the Application was paid by bank transfer with effect of 11/07/06. (3) Using the Office s form the Applicant indicated as grounds for invalidity other(s) according to Article 25(1)(c), (d), (e), (f) or (g) CDR 1. In the substantiation, he cited Article 25(1)(e) CDR and claimed that the contested RCD deals with protecting a shape and outline of a decoration, completely confusable with the entirety of the trademarks provided as the basis for this present action of nullity. Therefore, he observes that an application for the declaration of nullity is lodged against the registration of the referenced Community Design, on lacking, in a clear manner, the necessary suitability for protection of its registration. 1 Council regulation (EC) No 6/2002 of 12 December 2001 on Community designs 2

3 (4) He argued that the letters F, L, E and X were totally incorporated in the RCD and therefore the distinctive sign was used identically in the RCD. Furthermore, he claimed that the RCD was filed in EuroLocarno class for decoration which referred to any type of product and service. (5) On 14/06/06 the Applicant provided the following documents as evidences: Spanish PTO regarding the Spanish trademark no (in the following: D1). Spanish PTO regarding the Spanish trademark no (in the following: D2). Spanish PTO regarding the Spanish trademark no (in the following: D3). Spanish PTO regarding the Spanish trademark no (in the following: D4). Spanish PTO regarding the Spanish trademark no (in the following: D5). Spanish PTO regarding the Spanish trademark no (in the following: D6). Spanish PTO regarding the Spanish trademark no (in the following: D7). Spanish PTO regarding the Spanish trademark no (in the following: D8). Spanish PTO regarding the Spanish trademark no (in the following: D9). Spanish PTO regarding the Spanish trademark no (in the following: D10). - A copy of the publication of the Community Trademark no (in the following: D11), registered on 01/12/05 in the name of the Applicant for goods in the classes 6 (metallic tubes, adornments of metallic beds and wheels of metallic beds), 10 (beds especially constructed for medical purposes, stretchers for hospitals; air mattresses, for medical purposes; childbirth mattresses; air pillows for medical purposes;soporific pillows for insomnia; pillows to protect the neck and the vertebrae), 17 (fabric and insulating material) and 20 (beds, spring matresses, straw mattress, mattresses, pillows and metal-reinforced pillows) of The 3

Nice Classification, showing the following representation of the sign: (6) On 07/12/06 he provided English translations of the publication of the Spanish trademarks of D1 - D10 (in the following:

4 Nice Classification, showing the following representation of the sign: (6) On 07/12/06 he provided English translations of the publication of the Spanish trademarks of D1 - D10 (in the following: D12) and English translations of printouts regarding the registration situation of some of the Spanish trademarks (in the following: D13). (7) The Holder replied inter alia that the evidence for the earlier Spanish trademark rights had been submitted in Spanish without any translation into language of proceedings contrary to Article 29(5) CDIR and therefore should not been taken into account. Additionally, he observes that the trademarks of D1 - D10 and the contested RCD were neither identical nor similar and therefore there was no likelihood whatsoever of confusion or association. Especially, he argued that the term Flex was not distinctive and that the Applicant had no right to prohibit the use of the signs in the marketplace. (8) On 03/05/07 the Office informed both parties that the written proceedings were closed and that a decision concerning the invalidity will be taken. (9) 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 (10) The indication of the grounds for invalidity on the form of the Office is a statement of the grounds on which the Application is based in the meaning of Article 28(1)(b)(i) CDIR 2. Furthermore, the Application complies with Article 28(1)(b)(iii) and Article 28(1)(b)(vi) CDIR, since the attachment 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 admissible. 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs 4

5 B. Substantiation B.1. Evidences (11) The documents D1 - D10 are disregarded since they were not filed in the language of the proceedings and no translation has been submitted in due time. According to Article 29(5) CDIR the Applicant shall file a translation of the evidence into the language of the proceedings within two months of the filing of the evidence. In the present case, the Applicant filed the Application and the Spanish supporting documents on 14/06/06. The English translations D12 and D13 were submitted on 07/12/06, almost six month after the filing of the Application. Rightfully, the Holder observed that the submission of the translations is belated and therefore D1 D10 are to be disregarded. (12) In contrast, the document D11 is taken into consideration even though it was only filed in Spanish since it concerns the Community trademark (in the following: CTM) which is published in all official languages of the European Union by the Office. B.2. Distinctive sign (13) According to Article 25(1)(e) CDR a Community design should be declared invalid if a distinctive sign is used in a subsequent design, and Community law or the national law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use. (14) According to Article 4 of the Council Regulation (EC) No 40/94 of 20 December 1993 (in the following: CTMR), a Community trademark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. (15) Consequently, where a sign is registered as a Community trademark in a Member State and the trademark is in force, it is presumed that it is a distinctive sign in the meaning of Article 25(1)(e) CDR. B.2. Right to Prohibit Use (16) In the present case, the distinctive sign is the CTM. The sign itself consists of the term FLEX in red letters and a figurative element in blue, white and red showing a stylized swan. (17) According to Article 9 of the Community Trade Mark Regulation, the proprietor of a registered trademark shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign 5

6 which is identical with the trademark in relation to goods or services which are identical with those for which the trade mark is registered. (18) The contested RCD also comprises the term FLEX in yellow letters on a red background but accompanied by a colourful drawing of a figurative element containing a caterpillar. In contrast, in the CTM the letters are in red on neutral background, using a combination of bold and italic characteristics. The letters used in the design are yellow on red background, with the left and right extreme of the word being extended and the middle of the word being squeezed. The figurative elements used in both signs are completely different. A stylized swan based on blue, white and red colour on the one hand, a colourful caterpillar on the other hand. (19) The RCD does not contain a feature which could be perceived as a sign identical or similar to the sign of the CTM. In particular, the RCD does not contain a figurative element which is visually identical or similar with stylized swan of the CTM. (20) As regards phonetic comparison, there is an identity between parts of the RCD and parts of the CTM due to the common term flex. However, the graphical representation of the term flex is very different. Furthermore, the term flex in relation to the goods of the CTM will be understood by the consumers as the usual short form of flexible describing a quality of these goods. Therefore, the consumer will not reduce the CTM to the term flex when dealing with said goods. Consequently, the term flex as the only element in common is not sufficient to constitute a similarity between a feature of the RCD and the sign of the CTM. (21) It follows that the sign of the CTM is not used in the contested design within the meaning of Article 25(1)(e) CDR. C. Conclusion (22) The Applicant has not provided evidence in support of the ground of Article 25(1)(e) CDR. Therefore, the application for a declaration of invalidity of the RCD has to be rejected. III. COSTS (23) 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 this case, the Applicant shall bear the fees and the costs of the Holder. 6

7 IV. RIGHT TO APPEAL (24) An appeal shall lie from the present decision. Notice of appeal must be filed in writing at the Office within two month after the date of notification of this 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 Martin Schlötelburg Peter Rodinger Eva Vyoralova 7

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

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