OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 09/12/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9109 COMMUNITY DESIGN 002156398-0001 LANGUAGE OF PROCEEDINGS English APPLICANT ACTERVIS GmbH c/o Prv Provides Treuhandelsgesellschaft Lindenhof Dorfstraße 38 CH-6341 Baar (Zug) Switzerland REPRESENTATIVE OF THE APPLICANT BARDEHLE PAGENBERG Postfach 860620 81633 Munich Germany HOLDER SC BOHMANN INTERNATIONAL SRL B-dul Unirii 78, BL. J2, SC. 2, Et. 4, Ap. 43 030832 Bucharest Romania REPRESENTATIVE OF THE HOLDER Alina-Eugenia Niculae B-dul Unirii 78, BL. J2, SC. 2, Et. 4, Ap. 43 030832 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 09/12/2013: 1. The registered Community design nº 002156398-0001 is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design n 002156398-0001 (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 19/12/2012. In the RCD, the indication of products reads boxes, boxes [packaging], cardboard boxes [packaging], packaging cases. The RCD was published on 07/01/2013 in the Community Designs Bulletin with the following views: http://oami.europa.eu//bulletin/rcd/2013/2013_004/002156398_0001.htm 1.1 1.2 1.3 1.4 2
1.5 1.6 (2) On 19/04/2013, the Applicant filed an application for a declaration of invalidity (hereinafter the Application ). The fee for the Application was paid from the current account with the Office. (3) Using the Office form for the Application, the Applicant requests a declaration of invalidity of the RCD on the grounds that the RCD does not fulfill the requirements of Articles 4 to 9 of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ), and other grounds according Article 25(1) letters (c), (d), (e), (f) or (g) CDR. (4) As evidence, the Applicant submitted, inter alia, a copy of the Registration for the Community trade mark n 008313091 (hereinafter the CTM ). The CTM was registered on 10/11/2009 in the name of the Applicant. The goods of the CTM comprise machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs in class 7 of the Nice Classification. In the Community Trade Marks Bulletin, the CTM was published with the following graphical representation: (5) In the reasoned statement, the Applicant states that the RCD contains a distinctive sign which is identical to its CTM. The RCD is intended to be used for boxes and packaging material which contains visual and textual information of the product contained. The Applicant claims that the RCD indicates to contain a spray gun driven by an electric engine ( ), a product for which the prior mark is registered and consequently both the prior mark and the RCD concern identical goods. As the Applicant is the proprietor of the earlier CTM governed by the Community law, which is used in the RCD and the Community law confers on the Applicant the right to prohibit such a use, the RCD should be declared invalid. (6) The Holder of the RCD did not send its observations. 3
(7) 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. 1 Admissibility (8) The indication of the grounds for invalidity in the Application is a statement of the grounds on which the Application is based in 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. The other requirements of Article 28(1) CDIR are fulfilled as well. The Application is therefore admissible. B. Substantiation B.1 Evidence (9) The reference to the registration number of the earlier CTM is sufficient evidence of the existence and the legal status of said trade mark. B.2 Distinctive Sign (10) Article 25(1)(e) CDR establishes that a Community design may be declared invalid if a distinctive sign is used in a subsequent design, and the Community law or the law of the Member States governing that sign confers on the right holder of the sign the right to prohibit such use. (11) Where a sign is registered as a Community trade mark and the trade mark is in force, it is presumed that it is a distinctive sign within the meaning of Article 25(1)(e) CDR. Therefore the earlier CTM is deemed to be an earlier right within the meaning of Article 25(1)(e) CDR. B.3 Right to prohibit use (12) Pursuant to Section 2 Article 9(1)(a) of the Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark, a Community trade mark shall confer on the proprietor exclusive rights, among others to prevent all third parties not having his consent from using in the course of trade any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered. (13) The Applicant is the proprietor of the earlier CTM. Therefore, the Applicant has the exclusive right to use it for the goods and services for which it is registered, and to prohibit the use of it by others. 1 Commission Regulation (EC) No. 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 4
(14) The sign of the earlier CTM consist of the words PAINT ZOOM in combination with a figurative element. The design of the RCD contains in the left corner of the upper side, as well as on the back and front sides of the packaging a sign identical to the sign of the CTM. The inclusion into the RCD of a sign identical to the sign of the CTM is a form of use of the sign of the CTM. (15) The RCD is incorporated in boxes and packaging. Taking into account not only the indication of the products to which the design is intended to be applied but also the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function (see the judgment of 18/03/2010, T-9/07, Representation of a circular promotional item, paragraph 56), the textual and graphical information on the packaging indicate that the product is intended to be used in relation to machines and machine tools. Such a use in the course of business may be prohibited by the holder of the earlier sign. The Applicant is thus entitled to request declaration of invalidity the RCD pursuant to Article 25(1)(e) CDR. C. Conclusion (16) The facts and evidence provided by the Applicant proved the ground for invalidity of Article 25(1)(e) CDR. Thus the RCD is declared invalid. III. COSTS (17) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (18) 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 (19) 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