OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 29/09/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9550 COMMUNITY DESIGN 001924341-0002 LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF THE APPLICANT CROCS, INC 7477 East Dry Creek Parkway Niwot 80503 Colorado United States of America Field Fisher Waterhouse LLP IP Protection Department 8 th Floor Riverbank House 2 Swan Lane EC4R 3TT London United Kingdom HOLDER New Generation, s.r.o. Symfonická 5/1426 CZ-15800 Praha 5 Czech Republic REPRESENTATIVE OF THE HOLDER PROPATENT - PATENT. ZNÁMK. GRAF. KANCELÁŘ Ke Kateřinkám 1393 CZ-149 00 Praha 4 Czech Republic Avenida de Europa, 4 E - 03008 Alicante Spain Tel. +34 96 513 9100 Fax +34 96 513 1344
The Invalidity Division composed of Martin Schlötelburg (rapporteur), Jakub Pinkowski (member) and Ludmila Čelišová (member) took the following decision on 29/09/2014: 1. The registered Community design No. 001924341-0002 is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design No 001924341-0002 ( the RCD ) has been registered in the name of the Holder with the date of filing of 29/09/2011. In the RCD, the indication of products reads footwear and the design is represented in the following views published in the Community Designs Bulletin (https://oami.europa.eu/esearch/#details/designs/001924341-0002): 2
(2) On 29/04/2014, the Applicant filed an application for a declaration of invalidity ( the Application ). The fee for the Application was paid by current account. (3) The Applicant requests a declaration of invalidity of the RCD on the grounds of Article 25(1)(b) Commission Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, as amended, ( CDR ). (4) As evidence, the Applicant provided a copy of the publication of the Community design 001626300-0001 ( prior design ) published on 23/10/2009 in the Community Designs Bulletin with the following views: (5) In the reasoned statement, the Applicant claims that the overall shape of the contested RCD is virtually identical to the prior design. The strap mechanism of the RCD comprising a solid strap and a flat circular fastener connecting the strap to the shoe is closely similar in the prior design and the RCD. Therefore, the RCD should be declared invalid due to lack of novelty and lack of individual character. (6) The Holder did not submit observations in response to the Application. (7) For further details to the facts, evidence and arguments submitted by the Applicant reference is made to the documents on file. 3
II. GROUNDS OF THE DECISION A. Admissibility (8) The Application complies with the formal requirements prescribed in the CDR and the Commission Regulation (EC) No 2245/2002 of 21 October 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. Substance B.1 Disclosure (9) The prior design has been published in the Community Designs Bulletin before the date of filing of the contested RCD and hence was made available to the public in the meaning of Article 7(1) CDR. B.2 Novelty (10) 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. Designs shall be deemed to be identical if their features differ only in immaterial details. (11) The RCD and the prior design both relate to shoes in the shape of clogs with straps and holes in the upper surfaces of the shoes. The shoes are identical as regards their shapes and proportions. (12) The RCD and the prior design are different as regards the shape of holes on the upper surface of the shoe. In the RCD, the holes are heart-shaped whereas in the prior design the holes are round. Furthermore, there are three hearts on a label at the back of the shoe in the RCD whereas in the prior design the label is present but does not show any elements. Finally, the RCD shows the sole of the shoe in full whereas the prior design does not include a full view of the sole. (13) The shapes of the holes are not immaterial details. Therefore, the prior design and the RCD are not identical 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 it produces 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. When assessing the individual character of the RCD it is taken into account that the degree of freedom of the designer is limited in so far as the device has to fulfil its function. 4
(15) The informed user is familiar with the basic features of the products to which the contested RCD relates, namely shoes in the form of clogs. Clogs exist in various shapes and forms. In particular, as regards the surface pattern and the strap mechanism of clogs a designer has a considerable degree of freedom to apply his/her creativity. (16) The overall impressions produced by the RCD and the prior design are dominated by the overall shape of the shoe, the provision of straps for holding the shoe and the arrangement of holes on the upper surface of the shoe and at the side. The two opposing designs share these characteristic features. In comparison to these similarities, the differences between the two designs are minor. The visual impression derived from the holes in the upper part of the shoe does not depend on the exact shape of the holes. The pattern of the sole of the shoe is of minor importance because in use, i.e. when a user is wearing the shoes, the sole is hardly visible. Furthermore, from what is visible of the sole in the graphical representation of the shoes of the RCD, the sole of the RCD is very similar to the sole of the prior design. Finally, the label with the three hearts in the RCD is placed at the back of the shoe which makes it less visible than the features on the front and the top of the shoe. A label bears smaller weight in the assessment of the design because it is known to relate more to the producer and the trademark of the shoe than to the design. In view of the many similarities and the few differences, the Invalidity Division finds that the overall impressions produced on an informed user by the prior design and the RCD, respectively, are the same. C. Conclusion (17) The RCD is to be declared invalid on the ground of Article 25(1)(b) 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 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 Martin Schlötelburg Jakub Pinkowski Ludmila Čelišová 5