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 8743 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT DELABLI SAS 77, Boulevard Haussmann Paris France Cabinet Beau de Loménie 158 Rue de l Université Paris Cedex 07 France HOLDER Klaas Puul B.V. Lupinestraat JT Volendam Netherlands REPRESENTATIVE OF THE HOLDER OCTROOIBUREAU LOS EN STIGTER B.V. P.O. BOX HB Amsterdam Netherlands 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 01/04/2003. In the RCD, the indication of products reads packaging for shrimps. The design was published in the Community Designs Bulletin in the following views: (2) On 21/05/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). The fee for the Application was paid from the current account at the Office. 2

3 (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, and unauthorised use of a work protected under the copyright law of a Member State. (4) As evidence the Applicant provides inter alia: - a copy of a registration of the design No , filed on 21/02/2001 at the Institut national de la propriété industrielle (hereinafter INPI), registered in the name of PLASTIQUES DE L'ARVOR, and published on 25/05/2001 in the Bulletin of INPI in the following views (hereinafter the prior design): (5) In the reasoned statement, the Applicant holds that the RCD should be declared invalid because it lacks novelty or, at least, has no individual character because a prior design registered at IMPI was disclosed before the date of filing of the contested RCD. Both the RCD and the prior design relate 3

4 to packaging for food, particularly to packaging for shrimps. Both the designs consist of two parts: a tray and an inner receptacle. The inner part of the RCD is identical to the inner part of the prior design. The tray of the prior design is round while the tray of the contested RCD has a protrusion in the round shape. According to the Applicant the difference is immaterial detail and thus both the designs are identical within the meeting of Article 5 CDR. Moreover, the difference does not make a significant impact on the overall impression and the protrusion has only technical function enabling easily hold the goods. The informed user, who is aware of wide degree of freedom of the designer of the food packaging with respect to the shape, size and decorative elements of the products, will pay attention to the general proportions and shape. (6) The Holder of the RCD repeatedly requested extension of the time limit for sending the rejoinder. As the reason the Holder stated negotiations of friendly settlement with the Applicant. According to the Office practice, a time limit extension can be granted repeatedly only if the opposite party agrees on it. The parties can also jointly ask for suspension of the invalidity proceedings until they negotiate the friendly settlement. (7) The office communicated the repeated request of the Holder to the Applicant with the offer to suspend the proceedings. The Applicant agreed on the extension of the time limit for sending the rejoinder by the holder. The Office extended the time limit and informed the Holder that another extension, if requested, would not be granted. Upon the expiration of the provided time limit the Holder requested the third extension without sending any observations. The Office informed the Holder that the time limit cannot be further extended and terminated the written proceedings. The parties were informed that the information on friendly settlement may be delivered to the Office before issuing the invalidity decision, and in that case the proceedings would be terminated. The Office has not obtained any instructions from the parties in this sense. (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 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. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4

5 B. Substantiation B.1 Disclosure (10) According to Article 7 CDR for the purpose of applying Articles 5 and 6, a prior design shall be deemed to have been made available to the public if it has been published following registration before the date of filing of the application for registration of the contested design. The prior design was made available to the public when being published following the registration in The application for registration of the contested RCD was filed in The prior design was made available to the public within the meaning of Article 7(1) CDR. B.2 Novelty (11) 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. (12) Both the RCD and the prior design relate to packaging for food, particularly to packaging for shrimps. Both the designs consist of two parts: a tray and an inner removable part. The inner part of the RCD is identical to the inner part of the prior design. The tray of the prior design is round, while the tray of the contested RCD has a protrusion. The protrusion forms part of the design and the appearance of the product. In the shape of an internal triangle in the tray, copying the lines of the inner removable part, is recognizable in the design without any particular effort. The protrusion in the contested RCD is not an immaterial detail in the sense of Article 5 CDR. The prior design thus does not form obstacle to the novelty of the contested RCD. B.3 Individual character (13) 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. (14) An informed user within the meaning of the Article 6 CDR is a particular observant, has some awareness of the state of art and uses the product in which the design is incorporated in accordance with the purpose for which the product is intended. (15) In the present case both the assessed designs relate to food packaging, which is made particularly for storage, transport and serving shrimps. The informed user is thus familiar with designs of packaging for shrimps available on the market before the filing date of the contested RCD. The informed user takes into account that the freedom of the designer of packaging for shrimps is not limited by any substantial technical constraints, and a quite large choice of materials, shapes and decorative elements is available. Designs of shrimp packaging can be clearly distinguishable even though the market is rather 5

6 saturated with a large number of products of the same or similar purpose. The informed user is thus not too sensitive to individual elements but s/he is able quite clearly differ between the products on the market. (16) The introduced protrusion, though easily spotted by the informed user, when, actually, the prior design is copied, does not change the overall impression of the appearance of the product. The overall shape of the RCD is round, with the same depth, rim and inner part like the prior design. For these reasons, the contested RCD does not have individual character as its overall impression produced on the informed user does not differ from the overall impression of 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. 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 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 (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 (Article 57 CDR). THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 6