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 12/08/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9215 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT R. Schmidtmeister e.k. Im Seefeld 16 D Nidda Germany REPRESENTATIVE OF Reimann Osterrieth Köhler Haft APPLICANT Steinstraße 20 D Düsseldorf Germany HOLDER ICE IP S.A. rue des Tilleuls, Rombach Luxembourg REPRESENTATIVE OF HOLDER Alissia Shchichka ICE IP S.A. Avenue Louise, 66B B-1050 Bruxelles Belgium 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 12/08/2014: 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 a date of filing of 12/10/2012. The indication of products reads wall clocks, clocks and alarm clocks and the design is published in the Community Designs Bulletin with the following view: ( (2) On 26/07/2013, 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 the contested RCD lacks novelty and individual character because it is identical to a prior design. (5) As evidence, the Applicant provides an internet print-out of an offer on Amazon.de ( Damenuhr/dp/B008ZPZM82/ref=pd_sim_watches_12?ie=UTF8&refRID=1Q1X 6VNGSBT8NDPZXH5E) dated 16 August 2012 including a picture of a watch ( prior design ) as follows: 2

3 (6) In response to the Application, the Holder claims that the evidence for the disclosure of the prior design should be disregarded because it is in German language and has not been translated into the language of proceedings. Furthermore, the Applicant argues that the prior design and the RCD are not identical and produce different overall impressions on an informed user due to their different dimensions. The RCD has been registered for wall clocks, clocks and alarm clocks whereas the prior design concerns a wrist watch and consequently both designs/products have absolutely different dimensions. Due to the entirely different nature of the products, when purchasing wrist watches, the informed user would not be considering clocks and vices versa. (7) Furthermore, the Holder argues that the prior design should not be taken into account by virtue of Article 7(2) CDR because it was copied from the RCD design disclosed within the grace period by the holder himself. As evidence, the Holder submits copies of a press-release and promotions by the Holder. (8) 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 (9) 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 Disclosure (10) The prior design has been disclosed in the form of a picture included in an offer on the well-known Amazon page prior to the date of filing of the contested RCD and was thereby made available to the public in the meaning of Article 7(1) CDR. (11) As correctly pointed out by the Applicant, the text portions of the evidence presented by the Applicant is not in the language of proceedings. However, the date and the picture in the evidence are not text portions and hence do not need translation. (12) The disclosure of the prior design is not excluded from consideration by virtue of Article 7(2) CDR. The grace period of Article 7(2) CDR is an exception to the rule that any disclosure of a prior design must be taken into account when assessing the novelty and individual character of the contested RCD. Whether the exception applies must be proven by the Holder invoking the exception as an argument in defence of the RCD. In particular, the Holder must prove that the disclosure of the prior design is a result of information provided or action taken by the designer or his successor in title. No such evidence has been provided. Instead, only evidence as regards the publication of the RCD prior to its date of filing has been submitted. The link between the prior design and the RCD is missing. The evidence for information provided by the designer or successor in title does not prove that the prior design is a result of this information. The grace period of Article 7(2) CDR is not equivalent to a priority claim which automatically excludes all disclosures of prior designs after the priority date. B.2 Novelty (13) 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. (14) The picture of the prior design and the graphical representation of the RCD show both appearances of wrist watches. The fact that the indication of product has been registered for clocks, instead of watches, does not affect the features of the design of the RCD. The assessment of the novelty of RCD must be based on the features of the design which are defined by the lines, contours etc. according to Article 3(a) CDR, not by the indication of product. (15) The prior design and the RCD are different only as regards the color of the dot located at the 0 position which is green in the RCD and silver in the prior design. (16) The color of the dot is not an immaterial detail. Therefore, the prior design and the RCD are not identical. 4

5 C. Conclusion (17) The contested RCD is to be declared invalid on the grounds of Article 25(1)(b) CDR due to lack of novelty. III. COSTS (18) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the 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 the costs of representation of 400 Euro and the reimbursement of the invalidity fee of 350 Euro. 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