OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 21/01/2013.

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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 21/01/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8891 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT Strawman Limited 34, Lovedon Lane Winchester Hampshire SO23 7NU United Kingdom Patentgruppen A/S Arosgaarden Aaboulevarden Aarhus C Denmark HOLDER Hove ApS Vallensbækvej Brøndby Denmark REPRESENTATIVE OF THE HOLDER LARSEN & BIRKEHOLM A/S Banegårdspladsen 1 P.O. Box København V Denmark 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 21/01/2013: 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 08/12/2006. In the RCD, the indication of products reads packaging containers. The design was published in the Community Designs Bulletin in the following views: (2) On 23/08/2012, 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 ). (4) As evidence the Applicant provides, inter alia: - a copy of the Danish utility model registration DK U3 registered in the name of the Holder of the contested RCD on 25/03/2011 and published on the same date in Dansk Brugsmodeltidende with the following view: 2

3 (5) In the reasoned statement, the Applicant holds that the contested RCD consists of four essential features: Pleated sides, flat bottom, conical neck, and threaded connection device. In relation to pleated sides the Applicant refers to the Holder s later utility model registration of a grease container in a portable lubrication unit. According to the Applicant, in the document, the Holder describes the invention as follows: The grease is kept in a container, which on the figure is formed flexible by means of annular pleatings, so that when the grease 3 in the container is sucked out at the bottom, the container will follow the grease and thereby ensure that vacuum does not develop in the container. In the view of the Applicant the sides are pleated solely for the purpose to be squeezed when the lubricant flows away, and thus they are solely dictated by the technical function. Furthermore, according to the Applicant, the other two features are also dictated by the technical function, because the bottom of the container is flat to allow flow out all the lubrication, and the conical neck leads the lubricant towards the exit at the connected device. The Applicant further claims that, according to the Holder s description in the utility model - the grease container is screwed on to a receiving device 4, which is a part of a mounting flange 21. Thus the threaded connection device should be excluded from the protection pursuant to article 8(2) CDR because it must be reproduced in its exact form and dimensions in order to be mechanically connected to a lubrication unit or lid. (6) In the response to the Applicant s observations the Holder of the RCD submits that pleated sides and threaded connection are features essentially dictated by the technical function, and requests to disclaim these parts from the protection according to Article 25 (6) CDR and to maintain the registration in 3

4 the amended from. According to the Holder, what is new and original about the design, is the ratio between the diameter of the container and its length in both unfolded and folded positions, conical neck and flat bottom which has the same diameter as the widest part of the container. These features deliver to the container a tight and precise impression entirely without round edges and connecting curves. (7) In his response the Applicant observes that the registration of the contested RCD does not disclose anything round or circular and thus Holder s reference to diameter is pointless. Regarding the partial disclaimer, the Applicant is confused as to the scope of protection of the RCD assuming that should be the side walls and the closure disclaimed, the RCD would relate to any kind of packaging container representing a flat bottom and a conical neck portion with a gradient similar to the gradient disclosed in the RCD in suit. The proposed change in the scope of protection results in a change of relevant state of art. (8) In his response the Holder reiterates that the RCD does not relate to the design of the pleated container wall or the conical end as such - but that is the total impression, the appearance of the container, i.e. the dimensions, which the observer understands immediately. (9) 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 (10) 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 Technical Function (11) According to Article 8(1) CDR a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function. (12) In compliance with the Manual of the Office concerning the examination of design invalidity applications (in force as of 01/07/2012) the Article 8(1) CDR must be interpreted the way that CDR denies protection to those features of a product s appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4

5 product s visual appearance. (decision of 22/10/2009, R 690/2007-3, Chaff cutters, para. 30 et seq.). (13) Furthermore, in compliance with the Manual, the design as a whole will be invalid only if all the essential features of the appearance of the product in question are solely dictated by its technical function (decision of 29/04/2010, R 211/2008-3, Fluid distribution equipment, para. 36). (14) In order to determine if all the essential features of the appearance of the product in question are solely dictated by its technical function, it is first necessary to determine what the technical function of that product is. The relevant indication in the application for registration of that design (Article 36(2) CDR) should be taken into account and also, where necessary, the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function (see, by analogy, judgement of 18/03/2010, T/9/07, Representation of a circular promotional item, para. 56). Where Article 8(1) CDR applies must be assessed objectively and not with regard to the perception of the informed user, who may have limited knowledge of technical matter. The technical functionality of the features of a design may be assessed, inter alia, by taking account of the documents relating to patents describing the functional elements of the shape concerned [the same source]. (15) The indication of products, to which the RCD relates, reads packaging containers. The RCD, as disclosed in the registration, represents a container with pleated sides, flat bottom, conical neck and threaded mouth. (16) As the utility model registration documents of the Holder show, the container is intended to be used in connection with a lubrication unit. The invention is described as a container with pleated sides allowing reduction of its volume when the liquid in the container flows out. The Holder confirmed that the pleated body of container was designed to serve its function in interconnection with the lubrication unit. If the body of the container serves to the described function, then the bottom and the neck of the container do the same. The flat bottom allows squeeze out effectively the lubricant from the container. The conical neck serves as a funnel to outflow the liquid from the container to the lubrication unit. The Office does not see any appearance enhancement in the two parts but the completion of the invention. In the view of the Office, the design of the three product features the pleated sides, flat bottom and conical neck, was driven by their function within the lubrication unit but not the appearance of the product to attract the attention of the user. Thus these features of the container are solely dictated by the technical function within the meaning of the Article 8(1) CDR, and excluded from the protection by the registration of the design. B.2 Must-Fit (17) According to Article 8(2) CDR a Community design shall not subsist in features of appearance of a product which must necessarily be reproduced in the exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function. According to Recital 10 of the CDR, the purpose of Article 8(2) CDR is to guarantee that the interoperability of products of different 5

6 makes is not hindered by extending protection to the designs of mechanical fittings. (18) The treaded mouth of the container must fit the mounting flange of the lubrication unit to prevent the leak of the lubricant. Thus the treated mouth is excluded from the protection of the contested RCD pursuant to article 8(2) CDR. The protection cannot subsist in this design feature. C. Conclusion (19) Because three out of four essential features of the contested RCD are solely dictated by the technical function of the product in which the RCD is intended to be used, and the fourth feature is a must-fit feature, no protection can be conferred by the registration, and the contested RCD is declared invalid on the ground of Article 25(1)(b) CDR in conjunction with Articles 8 (1) and (2) CDR. (20) The contested RCD does not comply with the requirements of the protection. Thus it cannot be maintained in an amended form pursuant to Article 25(6) CDR, as requested by the Holder. III. COSTS (21) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (22) 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 (23) 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 6