OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 24/07/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8870 COMMUNITY DESIGN 001947722-0002 LANGUAGE OF PROCEEDINGS English APPLICANT ETEM AD Bul Ilienzi No 119 A 1000 Sofia REPRESENTATIVE OF THE APPLICANT Elena Bozinova Miller Alabin Str. 38 1000 Sofia HOLDER Q VENT AD z.k. Darvenitsa, bul. Kliment Ohridski No.18, floor 7, office 708 1756 Sofia REPRESENTATIVE OF THE HOLDER ZLATAREVI-SARSIN INTELLECTUAL PROPERTY AGENCY Dianabad bl. 31b., vh. b, et. 1 1172 Sofia 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 Ingeborg Mendieta Vetter (member) took the following decision on 24/07/2013: 1. The registered Community design nº 001947722-0002 is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design 001947722-0002 (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 15/11/2011. In the RCD the indication of products reads shaped building elements. The RCD was published in the Community Designs Bulletin with the following views: http://oami.europa.eu//bulletin/rcd/2011/2011_268/001947722_0002.htm (2) On 09/12/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). (3) Using the Office s form the Applicant indicated as grounds for invalidity challenged Community design does not fulfil the requirements of Articles 4 to 9 CDR 1 and other(s) according to Article 25(1)(a), (c), (d), (e), (f) and (g) CDR. (4) As evidence, the Applicant provides inter alias the following documents: - A copy of the n design registration 7140 ( prior design ) which was filed in the name of the Applicant on 06/11/2008 and published on 27.2.2009 with the following views: 1 Council Regulation (EC) No 6/2002 on Community designs 2
- An extract of a manual explaining how the element of the n design works. The Manual includes the following drawing: (5) In the reasoned statement the Applicant explains that the contested RCD and the prior design both concern brackets for mounting ventilated façade systems for buildings. The brackets serve as connections between the façades and the building. The main purpose of the brackets is to absorb the weight of the system and to resist pressures from winds. The brackets are fixed to profiles which hold the claddings of the façade. The bracket of the RCD is a so-called double bracket, whereas the prior design is a single bracket. The double bracket is used to resist higher weights or wind pressures. According to the Applicant, the double bracket design of the RCD follows exactly the design of the single bracket covered by the prior design. The Applicant claims that the RCD falls in the scope of protection of the prior design. Therefore, the RCD should be declared invalid on the ground of Article 25(1) CDR. Furthermore, the Applicant claims that the contested RCD does not fulfil the requirements of Article 4 to 9 of the Council Regulation (EC) n 6/2002 on Community designs (CDR) ), more specifically it lacks the required novelty and individual character. 3
(6) In response to the Application the Holder observes that all the features of the RCD, which are represented by the Applicant as identical or similar to the features of the prior design, are solely defined by the technical requirements and the actual function of the product. The Applicant claims that in addition to these identical or similar features the contested RCD comprises other features which are not present in the prior design and which give the contested RCD novelty and individual character. (7) 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 (8) 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 2. 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 Visibility (9) According to Article 4(1) CDR, a design shall be protected by a Community design to the extent that it is new and has individual character. (10) Article 4(2) CDR stipulates that a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character: (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character. (11) "Normal use" within the meaning of Article (2)(a) CDR shall mean use by the end user, excluding maintenance, servicing or repair work. (12) OHIM s Manual on the Examination of Design Invalidity Applications confirms that in the assessment of novelty and individual character features of a Community design applied to, or incorporated in a component part of a complex product, will be disregarded if they are invisible during normal use of the complex product in question (Art. 4(2) CDR). 2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4
(13) It follows that OHIM must examine whether the conditions of Article 4(2) CDR are fulfilled where an Applicant raises the ground that the contested RCD lacks novelty and individual character. (14) In the present proceedings the Applicant provided evidence showing that the contested RCD is a design of a component part of a complex product and that this design is completely invisible during the normal use of that product. The component part is the bracket which is part of the façade system. The facade system is a complex product comprising elements such as profiles, claddings and the brackets. The elements are put together by screws which allow assembly and disassembly of the façade system. The normal use of the brackets is to hold the façade to the building. During the normal use, the brackets are completely covered by the claddings. Therefore, none of the features of the brackets is visible during normal use. Therefore, none of the features of the contested RCD can make a contribution to its novelty and its individual character. C. Conclusion (15) The contested RCD is declared invalid due to lack of novelty and lack of individual character. III. COSTS (16) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder shall bear the costs of the Applicant. (17) 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 (18) 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 Ingeborg Mendieta Vetter 5