OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 02/06/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9298 COMMUNITY DESIGN 002249763-0018 LANGUAGE OF PROCEEDINGS English APPLICANT ORIENT HOME OOD 66, Knyaginya Maria Luiza Blvd. 1202 Sofia REPRESENTATIVE OF THE APPLICANT Valentina Velikova Nesheva PATENT UNIVERSE 20, Dimitar Manov Street 1408 Sofia HOLDER DOORS BULGARIA EOOD j.k. Pobeda, bl. 9, floor 2, app. 10 9000 Varna REPRESENTATIVE OF THE HOLDER Kostadin Manev 73, Patriarh Evtimii Blvd., fl. 1 1463 Sofia 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 02/06/2014: 1. Registered Community design No 002249763-0018 is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No 002249763-0018 (hereinafter the RCD ) was registered in the name of the Holder with the filing date of 05/06/2013. The RCD indication of products reads doors. The design was published in the Community Designs Bulletin with the following view: (https://oami.europa.eu/esearch/#details/designs/002249763-0018) (2) On 31/10/2013, 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 that the RCD does not fulfil the requirements of Articles 4 to 9 of the Council Regulation (EC) No 6/2002 on Community designs (hereinafter CDR ). 2
(4) As evidence, the Applicant provides a copy of Romanian design registration No 019136 for doors, filed on 25/05/2009, and published following registration in the Official Industrial Property Bulletin of the State Office for Inventions and Marks of Romania, No 5/2009 (issued on 11/06/2009). In the registration, the Applicant indicates design No 1 in the following view as the prior design : (5) In the reasoned statement, the Applicant claims that the RCD lacks novelty and individual character with respect to the prior design disclosed in the Romanian design registration. The RCD is a coloured version of the prior design and the only difference is that the two designs are mirror images of each other. The prior design and the RCD are identical, therefore the RCD should be declared invalid. (6) In its response, the Holder submits that the Office has to assess designs as registered and disclosed, namely as the light-brown wood colour of the door board in combination with the grey matte colour of the rectangular elements (decorated with a snowflake pattern) for the contested RCD, and as a black-andwhite photograph for the prior design. The designs differ in colour, which is a substantial difference in view of the customer who is particularly observant when choosing a door to be in harmony with the rest of an interior. Moreover, the doors are mirrored (left to right), the contours around the decorative elements in the RCD are in the colour of the door, whereas they are black in the prior design, and the door related to the RCD is raised with respect to the door frame. (7) According to the Holder the differences in the colour pattern, ornamentation and details are sufficient to create a different overall impression. [T]he attention to detail that the informed user is likely to exercise when making a decision to purchase those goods are sufficient argument to provide that [the] compared designs are producing a different overall impression on the informed user in the sense of art. 6 CDR. The application for declaration of the invalidity of the RCD should be rejected. (8) For further details of the facts, evidence and arguments submitted by the parties, reference is made to the documents on file. 3
II. GROUNDS OF THE DECISION A. Admissibility (9) The indication of the grounds for invalidity that the RCD does not fulfil the requirements of Articles 4 to 9 is clearly stated in the Application, as required in the Article 28(1)(b)(i) CDIR 1. The Application is admissible since it contains an indication of the facts, evidence and arguments submitted in support of those grounds pursuant to Article 28(1)(b)(vi) CDIR, and since it meets the other requirements of Article 28(1) CDIR. B. Substantiation B.1 Disclosure (10) According to Article 7(1) 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. (11) The prior design was published following registration at the national office of one of the EU Member States prior to the filing date of the contested RCD, and hence it has been made available to the public within the meaning of the Article 7(1) CDR. B.2 Novelty (12) According to Article 5 CDR, an RCD lacks novelty when an identical design has been made available to the public prior to the filing date of the RCD. Designs shall be deemed to be identical if their features differ only in immaterial details. (13) The RCD is a wooden-like door with a glass-like filling (of a grainy texture or decorated with a snowflake pattern, as the Holder suggests). The prior design is registered in the form of a black and white photograph having the same woodenlike and grainy glass-like pattern of the door as the RCD. Colours are not disclosed in the prior design. As they are not immaterial details, the RCD is new with respect to the prior design. B.3 Individual character (14) According to Article 6 CDR, an 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 filing date of the RCD or the priority date claimed. In assessing individual character of the RCD, the designer s degree of freedom in developing the design shall be taken into consideration. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs. 4
(15) The informed user, from whose perspective the test is performed, according to 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). (16) In the present case, the informed user is aware of designs of doors available on the market before the filing date of the contested RCD. The informed user is familiar with common features of the products concerned: a board, which fit to the dimensions of the door frame for which the door is intended, and a handle with a lock mechanism, which can be placed on the left- or right-hand side. The appearance of these parts (except for the dimensions and location of the handle and lock) is not subject to any limitation as concerns technical requirements and products on the market differ in their actual designs. The perception of the informed user may be, however, influenced by the market density in the relevant field. (17) The RCD and the prior design are identical in all parts except their colours. Though the colours are easily recognisable features, being the only feature in which the RCD differs from the prior design, they do not endow the contested RCD with individual character. The designs are identical in the dominant elements determining their individual character: the wooden board with rectangular decorative elements and carved vertical lines, and the appearance of the door handle and the lock mechanism. (18) The Office does not find the difference in the colour of the lines of carved frames and the door elevation claimed by the Holder. The placement of the door handle and lock either on the left- or right-hand side is determined by the door frame in which the door is supposed to be hung, which is a technical constraint, as mentioned in paragraph 16 above. (19) The designer of the RCD did not use their freedom in developing the contested design. The RCD does not produce a different overall impression on the informed user. Therefore, it does not have individual character. C. Conclusion (20) 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 (21) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the Applicant s fees and costs. (22) 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. 5
IV. RIGHT TO APPEAL (23) According to Article 57 CDR, 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 6