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 05/03/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9141 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT CIARKO Spółka z ograniczoną odpowiedzialnością S.K.A Okulickiego Sanok REPRESENTATIVE OF KANCELARIA PATENTOWA DR W. APPLICANT TABOR SP.J.Katarzyna Tabor-Kmiecik Ul. Mazowiecka 28a/ Kraków HOLDER MAAN Sp. z o.o. Podole Grójec REPRESENTATIVE OF HOLDER PATPOL SP Z.O.O. Nowoursynowska 162 J Warszawa 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) has taken the following decision on 05/03/2014: 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 the date of filing of 14/09/2012. In the RCD, the indication of products reads cooker hoods and the design is published in the Community Designs Bulletin with the following views: ( (2) On 24/05/2013, the Applicant filed a request for a declaration of invalidity (hereinafter the Application ) contesting the validity of the RCD. (3) Using the Office form for the application, the Applicant requests a declaration of invalidity on the ground that the RCD does not fulfil the requirements of Articles 4 to 9 of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). (4) The Applicant claims that contested RCD lacks individual character in view of a prior design because both designs produce the same overall impressions on an informed user. 2

3 (5) As evidence, the Applicant provides inter alias a copy of the publication of the registered Community design ( prior design ) which was published on 19/10/2010 with the following views: (6) In response to the Application, the Holder observed that she is the owner of the prior design. The prior design was developed first and registered in Almost two years it was decided to refresh the design and to develop the contested RCD. The Holder explains that the prior design and the contested RCD belong to the same line of products and consequently have some common features and similar styles. By registering the contested RCD, the Holder wanted to protect the features of the contested RCD that are new in relation to the prior design. For this reason, the Holder claims that the prior design should not be taken into consideration in the assessment of the individual character of the contested RCD. (7) 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 (8) The indication of the grounds for invalidity in the Application is a statement of the grounds on which the application is based in the meaning of Article 28(1)(b)(i) CDIR. 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 thus admissible. 3

4 B. Substantiation B.1 Evidence (9) The prior design was published in the Community Designs Bulletin in the year 2010 and hence was made available in accordance to Article 7(1) CDR to the public prior to the date of filing of the contested RCD in October (10) Despite the fact that the prior design and the contested RCD both belong to the same holder, the prior design must be taken into consideration when assessing the novelty and the individual character of the contested RCD because it has been published more than 12 months prior to the date of filing of the contested RCD and hence is not excluded by virtue of Article 7(2) CDR from the relevant design corpus. B.2 Novelty (11) According to Article 5 CDR the RCD lacks novelty if an identical design has been made available to the public prior to the date of filing of the RCD. Designs shall be deemed to be identical if their features differ only in immaterial details. (12) The RCD and the prior design concern cooker hoods. Each hood consists of a wedge-shaped canopy and a rectangular chimney flue extending upwards from the canopy. The slanted front side of the canopy is covered by three overlapping panels extending left and right from the canopy. The prior design and the contested RCD are different in the following aspects: - In the RCD flat button fields are placed in the middle of the upper panel, whereas no such fields are visible in the prior design; - In the RCD, on each of the left and right ends of each panels, a line is visible which is not present in the prior design. - In the RCD, the lower edge of the canopy extends beyond the lower edge of the bottom panel, whereas it is inverse in the prior design. (13) The button fields, the lines and the lower edge of the canopy are not immaterial details. Therefore, the RCD is not identical to the prior design 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 prior to 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 is familiar with cooker hoods. These hoods are known in a variety of forms. The degree of freedom of a designer of cooker hoods is 4

5 limited in so far as the hoods must comprise chimney flues. However, as regards the shape of the canopy and the front panels, the designer is free to find new design solutions. (16) Obviously, the cooker hoods of the prior design and the contested RCD belong to the same line of products which are characterized by wedge-shaped canopies and triplets of panels covering the front sides of the canopies. The button fields in the upper panel of the RCD and the thin lines at the end of the panels are too small in relation to the hoods to mark a significant difference. Likewise, the differences in the heights of the lower edges of the canopies are technical details. The attention of an informed user is primarily drawn by the front views of the hoods where a cook will stand when the hoods are used. Seen from the front, the hoods of the prior design and the contested RCD are very similar. Therefore, the prior design and the contested RCD produce the same overall impressions on an informed user. C. Conclusion (17) The contested RCD is declared invalid on the ground of Article 25(1)(b) CDR in conjunction with Article 6 CDR due to lack of individual character. III. COSTS (18) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (19) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of 750 Euro corresponding to 400 Euro for the costs of representation and 350 Euro for reimbursement of the invalidity fee. IV. RIGHT TO APPEAL (20) 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 Jakub Pinkowski Ludmila Čelišová 5