OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 10/07/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9282 COMMUNITY DESIGN 002272690-0002 LANGUAGE OF PROCEEDINGS English APPLICANT Mariusz Adamski ADAMS GROUP ul. Kamila Baczyńskiego 20 63-500 Ostrzeszów Poland REPRESENTATIVE OF THE APPLICANT Kanceleria Patentowa ipat Tomasz Szelwiga ul. Sanocka 1/14 53-304 Wrocław Poland HOLDER ABAKUS DIRECT LTD Unit 4, Norbury Court 7 Welcomb Street Manchester M11 2NB United Kingdom REPRESENTATIVE OF THE HOLDER TR INTELLECTUAL PROPERTY LTD Ground Floor, Adamson House Towers Business Park Wilmslow Road Didsbury, Manchester M20 2YY United Kingdom Avenida de Europa, 4 E - 03008 Alicante Spain Tel. +34 96 513 9100 Fax +34 96 513 1344
The Invalidity Division composed of Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Martin Schlötelburg (member), takes the following decision on 10/07/2014: 1. Registered Community design No 002272690-0002 is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No 002272690-0002 (the RCD) was registered in the name of the Holder with the filing date of 11/07/2013. The RCD indication of products reads furniture accessories, seating furniture, reclining furniture and furniture. The design was published after the registration in the following views: 2.1 2.2 2.3 2.4 2.5 2
2.6 2.7 (https://oami.europa.eu/esearch/#details/designs/002272690-0002) (2) On 18/10/2013, the Applicant filed an application for a declaration of invalidity (the application). The fee for the application was paid via bank transfer. (3) The Applicant requests a declaration of invalidity of the RCD on the grounds of Articles 25(1)(b) Council Regulation (EC) No 6/2002 of 12/12/2001 on Community designs (CDR). (4) As evidence, the Applicant provides printouts from the internet pages archiwum.allegro.pl, containing images and description of the BALTIMORE corner sofa auction with the closing auction date of 21/02/2013. The auctioned sofa is depicted in several fabric combinations, one of which is as follows (the prior design): (5) In its reasoned statement, the Applicant claims that the contested RCD is not new and does not have individual character because the prior design, which is identical to the RCD in the sense of Article 5 CDR, was made available to the public before the contested RCD s filing date. The prior design was developed by the Applicant and put on sale on the date when the auction ended. The prior 3
design and the contested one differ only in the mirrored position of the seats in the L shape. (6) In the reply to the application, the Holder submits that its product was offered for sale on ebay as early as 14/09/2012 and encloses a printout of the ebay web page. According the Holder, it used the design before the Applicant and therefore has the earlier right to the design. (7) In its reply, the Applicant states that by offering its product on ebay the Holder proved disclosure of the design prior to the RCD s filing date. The disclosure destroys the novelty of the RCD. The Applicant points to the poor quality of the printout claiming that it is impossible to identify the seller. The Applicant also notes that the Holder does not contest the Applicant s authorship of the prior design. (8) In its rejoinder, the Holder submits that the ebay disclosure does not destroy the novelty of the RCD because it was made within the twelve-month grace period. (9) For further details of 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 application complies with the formal requirements prescribed in the CDR and the Commission Regulation (EC) No 2245/2002 of 21/10/2002 implementing Council Regulation (EC) No 6/2002 on Community designs (CDIR), in particular as laid down in Article 28 CDIR. The application is, therefore, admissible. B. Substantiation B.1 Disclosure (11) 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 or otherwise, or exhibited, used in trade or otherwise disclosed, before the date of filing of the application for registration of the contested design, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. (12) According to Article 7(2) CDR a disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6 if a design for which protection is claimed under a registered Community design has been made available to the public by the designer, their successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title during the 12-month period preceding the date of filing of the application. (13) The prior design was disclosed on Applicant s internet pages. As a matter of principle, disclosures derived from the internet form part of the prior art. Information disclosed on the internet or in online databases is considered to be 4
publicly available as of the date the information was posted. In the case at issue, the date on the internet pages does not indicate when the design was posted or displayed on internet but indicates the date when the product related to the prior design was offered in the public auction. The product was placed on the said internet pages by the Applicant, independently of the designer or the successor in title of the RCD. The Holder does not contest either the disclosure, or the date. In view of these facts and submitted evidence, the disclosure of the prior design on the Applicant s internet pages does not fall into the exception pursuant to Article 7(2) CDR and, therefore, has to be taken into consideration according to Article 7(1) CDR when applying tests of novelty and individual character. (14) The Holder claims that it has earlier right to the RCD derived from its earlier disclosure on the ebay. The disclosure was made within the twelve-month period it was granted to disclose the design before filing the RCD application. (15) There is nothing in the wording of Article 7(2) CDR to indicate that the twelvemonth grace period establishes rights to the registered Community design. The Holder cannot claim the priority right from such a disclosure either. The rights are established only by filing the application for registration of the Community design. It follows that any independent disclosure before the RCD s filing date, unless it is proved that it falls within the exception of Article 7(3) CDR as a result of abuse in relation to the designer or his successor in title, is valid for the purpose of applying the novelty test. The Holder s disclosure on ebay does not negate the disclosure claimed by the Applicant. The prior design disclosed independently of the RCD designer or his successor in title, has to be taken into consideration pursuant to Article 7(1). (16) The Office also agrees with the Applicant that the copy of the ebay internet page sent to the Office by fax is hardly legible, which makes any assessment of its contents difficult. B.2 Novelty (17) According to Article 5 CDR, the RCD lacks novelty when an identical design has been made available to the public prior to the RCD filing date. Designs shall be deemed to be identical if their features differ only in immaterial details. (18) The RCD and the prior design both relate to composite furniture. They consist of two pieces of a divan with back rests arranged in an L shape, two armrests which also serve as shelves, and three cushions. Both the designs are identical in their shape and the contrasting combination of materials, namely, dark divan, backrest and armrest upholstery with a light-coloured divan base, armrest framing and cushions. (19) The RCD and the prior design differ in their arrangement of the divan (when seen from the front view, the right is the longer part of the RCD and the left is longer in the prior design); the RCD has short legs whereas the prior design divan base rests on the floor. The RCD is, according to the provided views, adjustable and allows the divan to be unfolded, or the armrests to be turned inside with the shelves towards the divan. The Community design registration also contains a rear view which is not available in the prior design disclosure. (20) The differences between the RCD and the prior design are not completely immaterial. The RCD and the prior design are, therefore, not identical within the 5
meaning of Article 5 CDR, and the prior design does not constitute an obstacle to the novelty of the RCD. B.3 Individual character (21) According to Article 6 CDR, the RCD lacks individual character if the overall impression produced on the informed user is the same as that produced on such a user by any design which has been made available to the public before the RCD filing date or the priority date claimed. In assessing the RCD s individual character, the designer s degree of freedom in developing the design shall be taken into consideration. (22) The informed user, from whose perspective the test is performed, according to the established case-law, is particularly observant, aware of the state of the art in the sector concerned, and uses the product related to the RCD in accordance with the purpose for which the product is intended (see judgment of 09/09/2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (23) The informed user is aware of sofa designs available on the market before the contested RCD s filing date and is familiar with the basic features of the products concerned. Sofas have a space for sitting and lying and some head and arm rests. Sofas are often collapsible, which enables it to transform into a bed or similar sleeping furniture. The products on the market are similar in this regard but differ in the actual design and fabric of their parts in the addition or omission of other accessories and decorative elements, material combinations and so on. (24) A designer s freedom is not substantially limited. New and innovative design solutions are not hindered by severe technical restrictions or norms. (25) The prior design and the contested design are identical in the shape of all their parts, and differ only in their orientation (left vs. right) and the presence of legs on the RCD sofa. The additional rear view of the RCD does not disclose any special features, therefore its omission in the prior design is not detrimental. The variability of the RCD and addition/omission of cushions in some of the views is not an obstacle to assess the sofa s overall appearance. What creates the overall impression on the informed user is the appearance of the divans, backrests and armrests, in which the designs are identical. The recognised differences do not confer individual character on the RCD with respect to the prior design. (26) For the reasons given above, the prior design constitutes an obstacle to the individual character of the RCD. C. Conclusion (27) The RCD is declared invalid on the grounds of Article 25(1)(b) CDR in conjunction with Article 6 CDR due to the lack of individual character. III. COSTS (28) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the Applicant s fees and costs. 6
(29) The costs to be reimbursed by the Holder to the Applicant are fixed at EUR 750, of which EUR 400 for the costs of representation and EUR 350 for the reimbursement of the invalidity fee. IV. RIGHT TO APPEAL (30) According to Article 57 CDR, a notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid. THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 7