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

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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 8995 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Julius Sämann Ltd. Bahnhofstrasse Zug Switzerland REPRESENTATIVE OF THE APPLICANT ELZABURU, S.L.P. Miguel Ángel, Madrid Spain HOLDER MTM INDUSTRIES Sp. z o.o ul. Wysoka 5a Kalisz Poland REPRESENTATIVE OF THE HOLDER PATENT-SERVICE KANCELARIA ul. Starorudzka Łódź Poland 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 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 ( the RCD ) has been registered in the name of the Holder with the date of filing of 20/03/2012. Its indication of products reads air fresheners and the design was published in the Community Designs Bulletin in the following view: (2) On 19/11/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). (3) Using the Office s form the Applicant indicates as grounds for invalidity that the contested RCD does not fulfil the requirements of Articles 4 to 9 CDR 1, and other(s) according Article 25 (1)(c), (d), (e), (f) or (g) CDR. In the reasoned statement, the Applicant points explicitly to Article 25 (1)(e) CDR. (4) As evidence, the Applicant provides inter alia: - Community trade mark No registered in the name of the Applicant at the Office as of 01/12/1998, designating Air-fresheners in the class 05 of the Nice Classification. The trade mark application was published in the Office Bulletin on 29/09/1997 as follows (hereinafter TM1): 1 Council Regulation (EC) No. 6/2002 on Community designs. 2

3 - International trade mark No registered in the name of the Applicant at the International Office of WIPO as of 09/12/1993, designating Air freshening preparations in the class 05 of the Nice Classification, for, inter alia, the following countries: Austria, Bulgaria, Benelux, Czech Republic, Germany, Spain, France, Hungary, Italy, Poland, Portugal, Romania, Slovenia and Slovakia. The trade mark was published on 21/03/1994 showing the same figurative element as TM1 (hereinafter TM4). - Community trade mark No registered in the name of the Applicant at the Office as of 11/05/2005, designating Air-fresheners in the class 5 of the Nice Classification. The trade mark application was published in the Office Bulletin on 18/10/2004 as follows (hereinafter TM5): - Finnish trade mark T (109644) registered in the name of the Applicant on 20/11/1990 as follows (hereinafter TM6): 3

4 - International trade mark No registered in the name of the Applicant at the International Office of WIPO as of 20/11/1991, designating the following products in the classes 01, 02, 03 and 05 of the Nice Classification: Antifreeze, preservatives against rust, cosmetics, perfumery, essential oils, hair lotions, waxing and polishing preparations for automobiles, air purifying and deodorizing preparations, sanitary preparations, in Bulgaria and Poland. The trade mark was published on 16/03/1992 and registered for the same figurative element as TM6 (hereinafter TM7). - International trade mark No registered in the name of the Applicant at the International Office of WIPO as of 07/02/1983, designating the following products in the classes 01, 02, 03 and 05 of the Nice Classification: Antifreeze, air-purifying and freshening products, sanitary preparations, for, inter alia, Austria, Benelux, Czech Republic, Germany, Spain, Hungary, Portugal, Romania, Slovenia and Slovakia. The trade mark was published on 01/05/1983 and registered for the same figurative element as TM6 (hereinafter TM8). - Trade mark No registered in the name of the Applicant at the National Board of Patents and Registrations of Finland as of 20/11/1990, designating the following products in the class 05 of the Nice Classification: Air freshening and purifying products and deodorants. The trade mark was registered for the same figurative element as TM6 (hereinafter TM9). - Trade mark No registered in the name of the Applicant at the Royal Patent and Registration Office of Sweden as of 26/07/1991, designating the following products in the class 05 of the Nice Classification: Air-fresheners, deodorants (not for personal use). The trademark was published on 03/05/1991 and registered for the same figurative element as TM6 (hereinafter TM10). - International trade mark No registered in the name of the Applicant at the International Office of WIPO as of 30/11/1966, designating the following products in the classes 03 and 05 of the Nice Classification: Cosmetics, disinfectants, preparations for improving air quality, disinfectants, for, inter alia, Austria, Benelux, Czech Republic, Germany, Spain, France, Hungary, Italy Portugal and Romania. The trade mark was published on 01/01/1967 and registered as follows (hereinafter TM11): 4

5 - International trade mark No registered in the name of the Applicant at the International Office of WIPO as of 30/11/1966, designating the following products in the classes 03 and 05 of the Nice Classification: Cosmetics, disinfectants, preparations for improving air quality, disinfectants, for, inter alia, Benelux, Czech Republic, Germany, Spain, France, Hungary, Italy Portugal, Romania, Slovakia and Slovenia. The trade mark was published on 01/01/1967 and registered as follows (hereinafter TM12): - Trade mark No registered in the name of the Applicant at the Austrian Patent Office as of 11/07/1985, designating the following products in the class 05 of the Nice Classification: Products for air improvement. The trade mark was published on 20/11/1985 and registered for the same figurative element as TM12 (hereinafter TM13). - International trade mark No registered in the name of the Applicant at the International Office of WIPO as of 21/08/1954, designating the following products in the classes 03 and 05 of the Nice Classification: Airpurifying products, cosmetics, bath additives, bath oils, perfumes, essences and bath additives, for, inter alia, Austria, Benelux, Czech Republic, Germany, Spain, France, Italy, Portugal, Slovenia and Slovakia. The trade mark was published on 01/10/1974 and registered as follows (hereinafter TM14): 5

6 - International trade mark No registered in the name of the Applicant at the International Office of WIPO as of 17/01/1959, designating the following products in the class 05 of the Nice Classification: Air-fresheners, for, inter alia, Austria, Benelux, Czech Republic, Spain, France, Italy, Portugal and Slovakia. The trade mark was published on 01/03/1979 and registered as follows (hereinafter TM15): - Trade mark No. VR registered in the name of the Applicant at the Dannish Patent Office as of 10/10/1964, designating the following products in the class 05 of the Nice Classification: Air fresheners and deodorants, not including skin and hand care products. The trademark was published in 1988 and registered for the same figurative element as TM15 (hereinafter TM16). - Trade mark No registered in the name of the Applicant at the National Board of Patents and Registrations of Finland as of 20/11/1965, designating the following products in the class 03 of the Nice Classification: Deodorants. The trademark has been registered for the same figurative element as TM15 (hereinafter TM17). - Trade mark No registered in the name of the Applicant at the German Patent Office as of 10/04/1979, designating the following products in the class 05 of the Nice Classification: Deodorants. The trademark was registered for the same figurative element as TM15 (hereinafter TM18). - Trade mark No registered in the name of the Applicant at the Royal Patent and Registration Office of Sweden as of 22/04/1960, designating the following products in the class 05 of the Nice Classification: Air fresheners 6

7 for rooms and motor vehicles. The trade mark was registered for the same figurative element as TM15 (hereinafter TM19). - International trade mark No registered in the name of the Applicant at the International Office of WIPO as of 30/11/1966, designating the following products in the classes 03 and 05 of the Nice Classification: Cosmetics, air-freshening products for, inter alia, Austria, Benelux, Czech Republic, Germany, Spain, France, Hungary, Italy, Portugal, Romania, Slovenia and Slovakia. The trade mark was published on 01/01/1967 and registered as follows (hereinafter TM20): - Trade mark No registered in the name of the Applicant at the Spanish Patent and Trade Mark Office as of 05/11/1991, designating the following products in the class 05 of the Nice Classification: Air fresheners, deodorants not for personal use. The trade mark was published on 16/11/1990 and registered as follows (hereinafter TM21): - Trade mark No registered in the name of the Applicant at the Royal Patent and Registration Office of Sweden as of 06/07/1990, designating the following products in the class 05 of the Nice Classification : Air freshener, deodorants (not for personal use). The trade mark was published on 20/04/1990 and registered for the same figurative element as TM21 (hereinafter TM22). (5) In the reasoned statement, the Applicant holds that he is the holder of various trade marks, which have been registered prior to the contested RCD, and which are deemed to be distinctive signs within the meaning of Article 25(1)(e) CDR. All of them comprise of a substantially identical representation of a tree shown with branches formed by outgrowths and indents on the sides and a very short 7

8 trunk on top of a wider part serving as a base. The silhouette of a tree which is the principal component in the contested RCD is nothing more than a variant of the characteristic shape of the trade marks. Use of the contested RCD and the cited trade marks for identical goods and the overall similarity between them from the view of an average consumer for whom it is a seldom occasion to see the conflicting signs together, entail a likelihood of confusion and of association in particular. The Applicant s trade marks, as proved by the evidence, have had such an impact on the markets in various geographical regions, including EU member states, that they have become a part of their everyday culture, they have established their presence in drawings, films, comic strips and similar items and they are reproduced in media as an outline. The Applicant s trade marks are well known and they have a high reputation within EU. The identical sign with the Applicant s trade marks is clearly applied on the contested RCD in relation to goods, which are identical with those for which the TMs are registered. (6) Furthermore the Applicant s trademarks provided were disclosed before the filing date of the contested RCD. As said before the RCD is used for an air freshener in the shape of a tree. The designer of air fresheners has unlimited freedom to choose other shape to design the product. According to the established case law the assessment of individual character should be done globally, not in a detailed analysis. Taking this into account the RCD is not distinguishable from prior disclosures as all its salient features are present in the previous disclosures. The RCD is devoid of novelty and individual character. (7) In response to the Application the Holder observes that the signs of the trademarks of the Holder are different to the design of the contested RCD and hence the Application should be rejected. (8) For further details to the facts, evidence and arguments submitted by the Applicant, reference is made to the documents on file. II. GROUNDS OF THE DECISION A. Admissibility (9) 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 Art. 28(1)(b)(i) CDIR 2. Furthermore, the Application complies with Art. 28(1)(b)(iii) and Art. 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 Art. 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 8

9 B. Substantiation B.1 Evidence (10) Provided printouts of registrations of the earlier trade marks published by the administrative offices are sufficient evidence of proving the rights of the Applicant conferred by the registrations of his trade marks. The evidence further shows that the said trade marks have been registered before the date of filing of the RCD and they are valid with the following exceptions: A cancellation procedure concerning TM1 is pending before the Office. As TM4 is registered for the same goods and the same figurative element designating several member states of EU, and thus the outcome of the cancellation proceedings cannot alter the outcome of the invalidity proceedings concerning this RCD, TM1 is taken into consideration without waiting to the outcome of the cancellation proceedings. (11) It is not proved by the evidence on file if TM13 is valid or the registration has expired. Therefore TM13 is not taken into consideration. According to the evidence on file TM22 was renewed till 06/07/2010, TM9 was renewed till 20/11/2010, TM18 was renewed till 30/06/2008, TM10 was renewed till 26/07/2011 and TM19 was renewed till 22/04/2010. As the validity of the rights was not proved, these trade marks cannot be taken into considerations as prior rights. (12) The copies of certificates of the trade marks indicating the date of publishing of the trade marks are sufficient evidence of disclosure of the trade marks before the date of filing of the RCD. It concerns all provided trade marks except TM9 TM17, TM18, and TM19. The evidence on file concerning these trade marks does not indicate the date of disclosure, therefore the trade marks are not taken into consideration for the tests of novelty and individual character. (13) Though office disregards some of Applicant s submissions as insufficient to prove earlier rights or disclosures, due to the existence of several registrations for each tree variant, all tree variants are considered further based at least at one piece of evidence submitted by the Applicant. (14) Regarding the claimed high reputation of Applicant s trade marks, the Applicant submitted evidence of use and advertising various trademarks but did not indicated which particular trade mark/s enjoy/s the high reputation or is well known in some EU member states. Therefore the Applicant s trade marks are considered as being registered. B.2 Right to prohibit use (15) Article 25(1)(e) CDR establishes that a Community design may be declared invalid if a distinctive sign is used in a subsequent design, and the Community law or the law of the Member States governing that sign confers on the right holder of the sign the right to prohibit such use. (16) Pursuant to Section 2 Article 9(1) of the Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark, a Community trade mark shall confer on the proprietor exclusive rights, among others to 9

10 prevent all third parties not having his consent from using in the course of trade any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the community trade mark is registered, and any sign where, because of its identity with or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark. (17) The same provision is enclosed as Article 5(1) of Directive 2008/95/EC of the European Parliament and of the Council to approximate the laws of the Member states relating to trade marks. Thus national trade marks registered in or for any member state of European Union shall confer on the proprietor the same rights. (18) The Applicant is the proprietor of the earlier trade marks. Therefore, the Applicant has the exclusive right to use them for the goods and services for which they are registered, and to prohibit the use of them by others. (19) For the purpose of determining whether the goods and services, for which the earlier trade marks are registered, are identical or similar with the contested RCD, the indication of the products in which the design is intended to be incorporated and the nature of the design in so far as it makes clear the nature of the product, its intended purpose or its function, has to be taken into account (see The Manual concerning the Examination of Designs Invalidity Applications, section C.7.4). (20) The product for which the RCD is indicated to be used is an air freshener and the representations show a product which can be used as a disposable air freshener. The earlier trade marks TM1, TM4, TM5, TM6, TM7, TM8, TM11, TM12, TM14, TM15, TM16, TM17, TM20 and TM21 are registered for the same or similar goods therefore they are relevant prior rights. (21) The rights conferred by the registrations of the earlier TM1, TM4, TM5, TM6, TM7, TM8, TM11, TM12, TM14, TM15, TM16, TM17, TM20 and TM21 subsist in the use of the figurative element of a fir tree for the given goods and services. The signs have the same shape and lines of a coniferous tree stretching branches to the sides and down, with short stem and a rectangular base. The signs vary in decorations and wording applied on the fir tree. The RCD is an air freshener in the shape of a leaf with indents stretching to the sides and up, with a short stem. No features identified in the earlier trade marks are used in the RCD. The distinctive sings and the RCD are different in the shape, lines and decoration. The RCD neither contain a feature which could be perceived as a sign identical or similar to the sings of the earlier trade marks. The figurative elements forming the signs and the RCD are not visually identical or similar. The earlier trade marks are therefore not used in the contested RCD within the meaning of Article 25(1)(e) CDR. 10

11 B.3 Novelty (22) According to Article 5 CDR, the RCD lacks novelty when an identical design has been made available to the public prior to the date of filing of the RCD or the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details. (23) The earlier disclosed trade marks TM1, TM4, TM5, TM6, TM7, TM8, TM10, TM11, TM12, TM13, TM14, TM15, TM16, TM20, TM21 and TM22, as said before, differ from the RCD in the shape, lines and decorations. The differences are not immaterial details. Therefore earlier disclosed trade marks TM1 to TM8, TM10 to TM16 and TM20 to TM22 do not form the obstacle to the novelty of the contested RCD. B.4 Individual Character (24) According to Article 6 CDR, the RCD lacks individual character if the overall impression produced on the informed user is the same as the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the RCD or the date of the priority claimed. In assessing individual character of the RCD, the degree of freedom of the designer in developing the design shall be taken into consideration. (25) According to the established case law, the informed user is particularly observant, is aware of the state of the art in the sector concerned, and uses the product related to the RCD in accordance with the purpose for which the product is intended (see judgment of 09/09/2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (26) In the present case the informed user is familiar with designs of disposable air fresheners which are usually hanged up in a car or a room. The informed user is aware of the designs of products which were available before the date of priority of the contested RCD, and s/he is aware of considerably large freedom of the designer of this kind or similar products. There are no technical constraints regarding the shape or decoration of the product to perform its function. (27) The informed user can compare the products related to the RCD, the prior designs side by side. The informed user considers the visual features of the products, in particular lines, contours, shape and decoration. In all the features the contested RCD differs from the earlier disclosures. The designer of the contested RCD used sufficiently the freedom to develop the design and s/he sufficiently departed from the prior art to deliver the RCD overall different impression from the earlier designs and trade marks. The earlier disclosures TM1 to TM8, TM10 to TM16, TM20 to TM22 do not form the obstacle to the individual character of the contested RCD. 11

12 C. Conclusion (28) The facts and evidence provided by the Applicant do not support the grounds of invalidity under Article 25(1)(b) and Article 25(1)(e) CDR. The Application is rejected as unfounded. III. COSTS (29) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (30) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of 400 Euro for the costs of representation. IV. RIGHT TO APPEAL (31) 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 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 (Art. 57 CDR). THE INVALIDITY DIVISION Martin Schlötelburg Jakub Pinkowski Ludmila Čelišová 12