OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 10/07/14 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9351 COMMUNITY DESIGN 01965104-0001 LANGUAGE OF PROCEEDINGS English APPLICANT A.B.A. S.R.L Via B Zenale, 70/72 20024 Garbagnate Milanese (Milan) ITALY REPRESENTATIVE OF APPLICANT DOTT. PROF. FRANCO CICOGNA Via Visconti di Modrone, 14/A I-20122 Milano ITALY HOLDER VESMAR 23 EOOD Prof. N. Mihailov No 7, en.b, App 1 1142 Sofia BULGARIA REPRESENTATIVE OF HOLDER Ivan Nikolov Ivanov IP Consulting Ltd. 6-8, Mitropolit Kiril Vidinski Str., vh. 8, Floor 2, Office 2 1164 Sofia BULGARIA 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 10/07/2014: 1. The application for a declaration of invalidity of registered Community design No 001965104-0001 is rejected. 2. The Applicant shall bear the costs of the Holder. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No 001965104-0001 (the RCD) was registered in the name of the Holder with the filing date of 19/12/2011. The RCD s indication of products reads spray bottles. The design was published when registered with the following views: 1.1 1.2 1.3 1.4 1.5 (https://oami.europa.eu/esearch/#details/designs/001965104-0001) (2) On 16/12/2013 the Applicant filed an application for a declaration of invalidity (the Application) contesting the validity of the RCD. (3) The Applicant requests a declaration of invalidity of the RCD on the grounds of Articles 25(1)(a), (b) and (e) Council Regulation (EC) No 6/2002 on Community designs (the CDR). 2
(4) The Applicant submits the following facts and evidence in support of its arguments: a database extract of the registration of international trade mark No 831701 (the IR), filed in the name of the Applicant at the International Office of the World Intellectual Property Organisation (WIPO) on 12/05/2004 designating goods in Classes 3 and 5 of the Nice Classification for several EU countries. According to the extract, the IR was expected to expire on, or was to be renewed by 12/05/2014. The representation of the trade mark is as follows: a database extract of registration of Italian trade mark No 0000929470 (Italian TM), which is the priority trade mark of the IR; printouts of internet pages and copies of printed materials, which the Applicant calls material in commerce ; images of Applicant s product meglio lo sgrassatore universale (the Applicant s design), undated, as follows: an extract of the registration of Community trade mark No 10 801 447 (the CTM), filed in the name of the Applicant at the Office on 12/04/2012, designating goods in Classes 1, 3 and 5 of the Nice Classification. The representation of the trade mark is as follows: 3
copies of invoices and documents which the Applicant calls accounting documentation from the public investments and listings of the Applicant s TV advertisements for different meglio products in Albania, Bulgaria, Croatia, Poland, Romania and Slovenia in the period 2002 to 2010; a certified copy of an affidavit of 02/12/2013 by Mr William Emilio Banfi, the managing director of the Applicant, stating that Meglio lo sgrassatore universal 750 ml has been sold in the bottle Madrid in, Albania, Bulgaria, Croatia, Italy, Poland, Romania and Slovenia, and containing the product s turnover; and an image of the bottle as follows: a copy of Declaration of 18/07/2013 made on behalf of McBride Spa stating that the declarant has been the manufacturer of the item Meglio since 1997 using the bottle named Madrid. The Declaration contains an image of the bottle as follows: a database extract of registration of Polish trade mark No 147 473 (the 4
Polish TM) filed in the name of the Applicant at the Polish Patent Office on 23/08/2001, designating goods in Class 3 of the Nice Classification. The trade mark is represented as follows: (5) In the reasoned statement the Applicant claims that it is the owner of a family of trade marks and mainly the IR, comprising the word meglio, which is similar to the word migliore used in the RCD. This constitutes a likelihood of confusion for the relevant public. Furthermore, the label used in the RCD is almost identical to the CTM. The IR, the CTM and the RCD are used for the same goods, are marketed through the same distribution channels and the products have the same nature and function. As proven by the submitted accounting and advertising documentation, the Applicant is very commercially active and, therefore, there is a high risk of the infringement of its trade mark rights by using a design bearing a similar label and indication. The RCD should be declared invalid on the grounds of Article 25(1)(e). (6) As regards novelty and individual character of the RCD, the Applicant holds that the contested RCD is a simple detergent container which, for the sake of easy manipulation and marketing purposes, has an identical shape to containers used by the majority of companies operating in the sector. The protection for the shape of containers made of features which fall in the public domain and therefore generally pass unobserved should be denied. To support its arguments, the Applicant submits a number of detergent containers available on the market. These containers are identical not only in their shape but, also, the yellow colour of the detergent, which simply identifies the product type. The Applicant further presents images of its own product meglio lo sgrassatore universale to compare it side by side with the images of the RCD. The contested RCD is not new and does not have individual character with respect to the submitted examples from the market and, therefore, should be declared invalid on the grounds of Article 25(1)(b). (7) As regards the invalidity grounds of Article 25(1)(a), the Applicant states that the RCD is incorporated in the shape of container only to bear the trade mark shown in view 1.5. The trade mark should be protected by virtue of trade mark registration but not by the registration of a design. (8) The Holder did not send its observations. (9) For further details of the facts, evidence and arguments submitted by the Applicant, reference can be made to the documents on file. 5
II. GROUNDS OF THE DECISION A. Admissibility (10) 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 it contains an indication of the facts, evidence and arguments submitted in support of those grounds. The other requirements of Article 28(1) CDIR are also fulfilled. The Application is, therefore, admissible. B. Substantiation B.1 Not a design (11) According to Article 25(1)(a) CDR, a Community design is declared invalid if it does not correspond to the definition under Article 3(a) CDR. (12) Pursuant to Article 3(a) and (b) CDR, design means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. Product means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs. (13) The Applicant claims that the RCD should not be kept in register because the purpose of the registration is to protect a distinctive sign (the container label), which is the domain of trade mark registration. The container itself serves solely to carry the sign. (14) The invalidity ground according to Article 25(1)(a) does not allow the Office to examine the Holder s intentions but it obliges the Office to objectively assess them if the subject matter of the registration meets the definition of design stipulated in Article 3(a). (15) The RCD is incorporated in a container. According to Article 3(b), the packaging (including a container) is an industrial item. The contested design registration also meets the conditions of Article 3(a) as it discloses the product s visual features such as its shape, colours and decoration. (16) The RCD meets all of the requirements of a design and, therefore, the grounds of invalidity pursuant to Article 25(1)(a) is unfounded. The question whether or not the container falls in the public domain and is, therefore, not protectable within the Community design registration system is the subject of a novelty test in which it is compared with earlier disclosed designs. 1 Commission Regulation (EC) No 2245/2002 of 21/10/ 2002 implementing Council Regulation (EC) No 6/2002 on Community designs. 6
B.2 Disclosure (17) 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 filing date 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. (18) The Applicant submitted a number of internet printouts showing various detergent containers, and it states that they illustrate the shape of the container used in the RCD as being commonplace. In the reasoned statement the Applicant pointed to its product meglio lo sgrassatore universale. (19) The images of the Applicant s product are undated so do not prove disclosure of the product. Taking into account all the submitted evidence, the disclosure might be proved by the invoices provided by the Applicant to prove the use of its trade marks. The invoices contain an item meglio lo sgrassatore universal 750ml but the Applicant does not provide any indication whether this item is the product shown in the images. The label on the Applicant s product does not contain the volume of 750 ml. Moreover, according to the invoices, the enlisted items were sold in different countries, having different labels in the local languages. From the submission of the Polish and Community TM, it is evident that the appearance of the Applicant labels changed not only their language but also their contents. Therefore, without reasonable doubts and further evidence and explanation from the Applicant, the invoices do not prove that the product shown in the images was subject to the trade transactions in the invoices in the period between 2002 and 2010. The design of Applicant s product is, therefore, not deemed to be disclosed within the meaning of Article 7(1) CDR. (20) As mentioned in paragraph 18, the Applicant submitted a number of printouts of detergent containers, stating only that it was submitting examples of products available on the market, without any indication as to how particular products would constitute an obstacle to the novelty and individual character of the RCD. (21) The Office is not required to determine through assumption and deduction which earlier designs among those presented in the applicant s documentary evidence may be relevant where the applicant does not provide further specifications. Earlier designs other than those specifically cited as relevant prior art by the applicant will therefore be disregarded (decision of 04/10/2006, ICD 2228). (22) Moreover, the Applicant s internet printouts contain thumbnails which, due to their image size and resolution, render any reasonable comparison with the RCD impossible. Most of the printouts are undated. The internet printouts and copies of the printed materials that are dated are not in the language of proceedings, which cannot establish the date of disclosure with reasonable certainty. The copies of printed materials are isolated single pages of unclear origin. For the reasons given above, the evidence does not prove disclosure of earlier designs within the sense of Article 7(1) CDR. (23) The Applicant further provides an affidavit stating that the container enclosed in the statement was sold in several EU countries. 7
(24) A statement made by a person related to the Applicant has low probative value and the enclosed image of the container is low quality. Moreover, the design shown in the affidavit is so far different from the contested RCD showing a simple container without closure and etiquette in comparison with the very concrete appearance of the product related to the RCD, that any comparison would be superfluous. The same concerns the Declaration, which cannot be taken into account because it is impossible to identify the person making the declaration on behalf of the McBride Spa company. (25) The trade mark registrations concern labels and do not prove the disclosure of any detergent container. (26) The Applicant failed to prove the disclosure of a design of a detergent container before the RCD filing date. Therefore, there is no prior design in which to assess novelty and individual character. B.3 Conflict with an earlier distinctive sign (27) Where the applicant claims that the contested RCD makes unauthorised use of a distinctive sign according to Article 25(1)(e) CDR, the application must contain (see Section 5.7.3 Guidelines for examination of design invalidity applications): particulars establishing the content of the national law of which the applicant is seeking application, particulars showing the existence and validity of the earlier rights relied on by the applicant and the acquisition of such rights before the RCD filing date, and particulars showing that the applicant satisfies the necessary conditions in accordance with that law to prohibit the use of the earlier right in the RCD. (28) As a matter of principle and established case-law, the Applicant is responsible for providing the relevant particulars, namely the national law and to show that it would succeed under that national law to prevent use of the distinctive sign in the later design. The Office is not always in a position to determine with sufficient accuracy on its own motion what the law relating to the prohibition of use of the sign in all Member States is and to monitor the corresponding changes of legislation or the developments of case-law. (29) The Applicant failed to provide the contents of the national law of at least one EU country for which the IR is designated, and the contents of the national law with respect to the Italian TM. (30) The submitted extract from the Polish trade mark database concerning the Polish TM contains only information on the filing date of the trade mark. The Polish TM was filed in 2001. Ten years from the filing date, trade mark registrations has to be renewed according to the harmonised EU trade mark law. Therefore, in the absence of information on its renewal and the validity of the trade mark (see Guidelines for examination, Part C, Opposition, Section 4.2.3.6), the Polish TM cannot be taken into account as the prior right in the sense of Article 25(1)(e). (31) The CTM was filed following the RCD filing date, claiming no priority and it is therefore not an earlier right in the sense of Article 25(1)(e). (32) For the reasons given above, the Applicant failed to prove a prior right derived from its trade marks registrations. 8
C. Conclusion (33) The facts and evidence provided by the Applicant do not sufficiently support the grounds of invalidity under Article 25(1)(a), (b) and (e), therefore, the Application is rejected. III. COSTS (34) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (35) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of EUR 400 for the costs of representation. IV. RIGHT TO APPEAL (36) According to Article 57 CDR, a 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 9