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 03/10/2012 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8698 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT ALPINE PRO STORES s.r.o. Business centrum ARUBA Galvaniho 7/D Bratislava Slovakia Advokátní kancelář Kříž a Bělina s.r.o. Dlouhá Praha 1 Czech Republic HOLDER Miroslav Jankovič M. Bella Piešťany Slovakia REPRESENTATIVE OF THE HOLDER Ivan Belička Švermova Banská Bystrica Slovakia 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), has taken the following decision on 03/10/2012: 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 09/02/2012. In the RCD, the indication of products reads surface patterns. The design was published in the Community Designs Bulletin in the following view: (2) On 26/03/2012, 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 ), and on the other grounds according to Article 25(1)(c), (d), (e), (f) or (g) RCD. In the reasoned statement the Applicant points out specifically to not compliance with the requirements of novelty, individual character, public policy and accepted principles of morality, and improper use of item other than covered by Article 6ter of the Paris Convention for the Protection of Industrial Property, which is of particular public interest in a Member State. (4) As evidence the Applicant provides inter alia: - copies of the book Ján LACINA: 1000 zaujímavostí Slovenska, published in Bratislava in 2008, containing the following photo of a folk motif, in the Applicant s statement called Čičmany pattern (according to the village of Čičmany situated in the Slovak Republic), painted on the right house in the picture (hereinafter the prior design ): 2

3 - copies of the following photos without dating but showing the same house: - A copy of the article Marián Šimo: Na olympijské hry s čičmianskym motívom, published on internet site on 25/10/2011. The article 3

4 contains a photo of three people wearing T-shirts on which the RCD is applied: (5) In the reasoned statement, the Applicant holds that the RCD is not new and it does not have individual character because the pattern protected by virtue of the RCD was taken from the ornamentation of one of the wooden buildings in Čičmany, which was built one hundred years ago. It is proved by the publication of the pictures of the building in the above cited book. The Applicant futher submits that repeated simple geometric symbols are typical for the Čičmany pattern. There are about 20 such symbols which give the pattern a unique and easily recognizable style. An informed Sovak user finds the RCD not original but merely a modification of Čičmany pattern associated with the place of origin. The Applicant adds, that the RCD is the result of search for a motif associated with Slovakia to become the motif for the Olympic collection of clothing for the Slovak Olympic atheletes at the 2012 Summer Olympic Games in London. The Holder of the RCD worked as an executive director for the Applicant (until February 2012), he participated in the selection of the motif but not its designing, and he presented it in media together with the Applicant and the Slovak Olympic Committee as Čičmany pattern. The characteristic features of the RCD are identical with the Čičmany pattern and as such it is percieved by the public. The differences, which subsist in the sequence of rows, are not significant in the overall impression. The Applicant is convinced that for an informed user, the differences between the patterns on the wooden buildings and the RCD are not sufficient for claiming the individual character of the RCDs. (6) The Holder of the RCD did not submit any observations. (7) For further details to the facts, evidence and arguments submitted by the Applicant, reference is made to the documents on file. 4

5 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 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 (9) The prior design was made available to the public as a painting on a wall of a house in the village of Čičmany by the end of the year 2008 at latest as proved by publishing the picture of the house in the cited book. Hence the prior design was made available to the public prior to the date of filing of the contested RCD within the meaning of Article 7(1) CDR. B.2 Novelty (10) 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. (11) The contested RCD and the prior design both relate to surface patterns consisting of a sequence of rows of simple geometric symbols. The patterns can be applied on various articles. An example of application of the RCD is given in the internet article quoted above. The RCD and the prior design are compared as follows: (12) The RCD contains 6 different graphic symbols arranged in rows and repeating sequences. The prior design contains 5 symbols which are identical or similar to those used in the RCD. Because the RCD is registered without any color 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 5

6 specification, the color of the prior design is not considered either. To allow the comparison of the patterns, the individual symbols of the RCD and the prior design are extracted and presented individually: A B C D E F Symbol A and F of the RCD are identical to the symbols in the prior design. Symbols B and C are modifications of the symbol in the prior design. Symbol D incorporates identical symbol of the prior design but adds another symbol of a stylized human figure. Symbol E partly repeats the symbol from the prior design and partly it modifies it. The order of the rows of geometric symbols differ in the RCD and the prior design. (13) The differences recognized in the compared designs are not only immaterial, therefore the prior design does not form the obstacle to the novelty of the RCD within the meaning of Article 5 CDR. B.3 Individual character (14) 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. (15) The informed user knows that when designing a decorative pattern, the freedom of the designer is unlimited. There is a vast range of motives and decorations applicable on merchandised articles, and they differ significantly one from the other. Thus from the point of view of the informed user it is legitimate to expect significant difference between the prior design and the RCD. It is also rightful to expect that the informed user is familiar with national symbols and recognized cultural heritage of Slovakia, one of the member states of the EU, for which territory the protection is sought. Thus the informed user is aware of specific patterns which are painted on the exterior walls of the houses in the village of Čičmany. The informed user also knows that these patterns can vary from each other in details but they always contain 6

7 characteristic geometric symbols in a typical row arrangement. Thus the informed user does not pay attention to every single detail in the pattern but rather perceives the style of folk motives and their arrangement. (16) The RCD is formed by folk motives similar to those recognized in the prior design, and arranged in the same style. The RCD produces on the informed user the same overall impression as the prior design. The RCD thus lacks the individual character with respect to the prior design. C. Conclusion (17) The RCD is declared invalid on the ground of Article 25(1)(b) CDR in conjunction with Article 6 CDR, due to the lack of individual character. (18) In view of the above conclusion, there is no need to examine the grounds of invalidity of Article 25(1)b CDR in conjunction with Article 9 CDR, and Article 25(1)(g) CDR. III. COSTS (19) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (20) 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 (21) 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 7