OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 21/11/2012 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8508 COMMUNITY DESIGN 001709593-0003 LANGUAGE OF PROCEEDINGS English APPLICANT ALEN MAK AD 148 Vasil Levski Str. 4000 Plovdiv Bulgaria REPRESENTATIVE OF THE APPLICANT Yordan Politov 13B Tintyava Street, Iztok Dstr. floor 6 1113 Sofia Bulgaria HOLDER VVPP Investment Anstalt AG Vaduz Landstrasse 25, Postfach 439 9490 Vaduz Liechtenstein REPRESENTATIVE OF THE HOLDER INTELLEXIS SRL 1 Hristo Botev Blvd. 3 rd floor, room 37 030231 Bucharest Romania 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 21/11/2012: 1. The registered Community design nº 001709593-0003 is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design nº 001709593-0003 (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 19/05/2010. In the RCD the indication of products reads labels. The RCD was published in the Community Designs Bulletin with the following view: (http://oami.europa.eu//bulletin/rcd/2010/2010_131/001709593_0003.htm) (2) On 20/07/2011, the Applicant filed an application for a declaration of invalidity ( the Application ). (3) The Applicant requests a declaration of invalidity of the RCD on the grounds of Articles 25(1)(b) of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). 2
(4) As evidence, the Applicant provides inter alias - a copy and an English translation of an extract from the trademark register of the Bulgarian Patent Office (BPO) concerning the Bulgarian trademark no. 35496 (application number 99044996N) registered in the name of the Applicant on 27.04.1999 and published by the BPO in 1999 as follows: - a copy and an English translation of an extract from the design register of the BPO concerning the Bulgarian design no. 6311 (application number 8344) registered in the name of the Applicant on 30.11.2006 and published by the BPO in February 2007as follows ( prior design ): (5) In the reasoned statement the Applicant claims that the contested RCD lacks individual character in view of the prior design which was made available to the public several years before the date of filing of the contested RCD. (6) In response to the Application, the Holder claims that the Application should be dismissed as inadmissible because the applicant does not enjoy full legal capacity to act as a consequence of having gone in bankruptcy before the date of filing of the Application. (7) In reply to the observations of the Holder the Applicant explains that despite the insolvency proceedings it continues to exist as a legal entity. The insolvency has only the effect has limiting its right to manage and dispose of its assets. The company has not been deleted from the Bulgarian Commercial Register and the insolvency proceedings are still pending. As regards the invalidity application, the Applicant explains that the Bulgarian court in charge of the insolvency has ordered the trustee in bankruptcy to initiate the invalidity 3
proceedings. As evidence the Applicant submits a copy of the Court Ruling No. 1343 and an English translation thereof wherein the Plovdiv District Court obligates the creditor of the Applicant to provide a sum of 30,000 BGN to initiate a procedure of cancellation of the registration of marks of products manufactured by Alen Mak AD, registered as property of a Liechtenstein company. (8) In response to the reply of the Applicant, the Holder insists that the Applicant has no legal capacity to act due to its bankruptcy and that the Application should have been filed in the name of the trustee. (9) 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 (10) According to Article 28(1)(c)(i) CDIR the Application must contain the name and the address of the Applicant. According to Article 52(1) CDR the Application may be submitted by any natural or legal person. (11) The Application contains the name and the address of the company of the Applicant. According to the evidence on file the Applicant is a registered company in Bulgaria and hence a legal entity. The fact that the company of the Applicant is in bankruptcy and hence lost access to its assets does not change the fact that it continues to exist. The submission of the Application was authorized by the trustee in charge of the affairs of the Applicant. The trustee has the power to act in the name of the Applicant. The trustee was explicitly ordered by the competent Court to initiate the invalidity proceedings. (12) 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. (13) The other requirements of Article 28(1) CDIR are fulfilled as well. The Application is therefore admissible. B. Substantiation B.1 Disclosure (14) The prior design was published by the Bulgarian Patent Office and hence made available to the public several years before the date of filing of the contested RCD within the meaning of Article 7(1) CDR. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4
B.2 Novelty (15) According to Article 5 CDR, the contested 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. (16) The prior design and the contested RCD both concern label. All the features of the RCD are identically copied from the prior design. The fact that the prior design contains additional features, namely some text elements, which the RCD did not take over, does not change the finding that the RCD lacks novelty in view of the prior design. C. Conclusion (17) The contested RCD is declared invalid due to lack of novelty on the ground of Article 25(1)(b) CDR. III. COSTS (18) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder shall bear the costs of the Applicant. (19) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750 Euro, namely 400 Euro for the costs of representation and 350 Euro for the reimbursement of the invalidity fees. 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