OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS)

OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 12/08/14 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9333 COMMUNITY DESIGN 002237354-0002 LANGUAGE OF PROCEEDINGS English APPLICANT HLT Sp. z o.o. ul. Kolejowa 5 48-340 Głuchołazy Poland REPRESENTATIVE OF APPLICANT JWP RZECZNICY PATENTOWI Dorota Rzążewska sp. j. ul. Żelazna 28/30 00-833 Warszawa Poland HOLDER SKOFF Spółka z o.o. Legionów 243 D 43-500 Czechowice-Dziedzice Poland REPRESENTATIVE OF HOLDER KANCELARIA PRAWA WŁASNOŚCI PRZEMYSŁOWEJ TERESY KARCZMITOWICZ ul. Królewska 7 Lok. 2 30-045 Kraków Poland 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 12/08/2014: 1. The application for a declaration of invalidity of registered Community design No 002237354-0002 is rejected. 2. The Applicant shall bear the costs of the Holder. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No 002237354-0002 (the RCD) was registered in the name of the Holder with the filing date of 15/05/2013. The RCD s indication of products reads luminaires. The design was published when registered with the following views: 2.1 2.2 2.3 2.4 2.5 2.6 (https://oami.europa.eu/esearch/#details/designs/002237354-0002) (Please note that all images in this document are not necessarily to scale) (2) On 27/11/2013 the Applicant filed an application for a declaration of invalidity (the Application) contesting the validity of the RCD. (3) The Application is based on the grounds of invalidity pursuant to Article 25(1)(b) Council Regulation (EC) No 6/2002 on Community designs (CDR), in particular on the grounds of lack of novelty and individual character. 2

(4) The Applicant submits the following facts and evidence in support of the grounds: a copy of the production documentation of the Applicant for the product PRISMATIC DUOLED ALUMINIUM RLZPRDUO1AC0490N 01; the document is in Polish, dated 2009, and contains the following images of the product (hereinafter design 1): copies of 19 invoices issued by the Applicant in the period between December 2009 and March 2011 in the name of two Polish business entities for, inter alia, the product PRISMATIC DUOLED ALUMINIUM RLZPRDUO1AC0490N 01 related to design 1; a copy of an implementation card in Polish, dated 20/11/2009 containing the following images of the product PRISMATIC SLIM (hereinafter design 2): copies of the front page and pages 4, 5 and 18 of a catalogue from the Applicant dated 08/04/2011, containing the following images of the product PRISMATIC Duo LED (hereinafter design 3): 3

an extract of the front page, pages 14 and 15, and the last page of a catalogue for TOPMET Light, dated 03/2012, and containing the following images of the product profil LED TWIN (hereinafter design 4): (5) In its statement, the Applicant claims that designs 1 and 2, and their slightly modified versions - designs 3 and 4, were made available to the public before the RCD s filing date. As the RCD is identical with the prior designs 1 to 3 and only differs slightly from design 4, it lacks novelty and individual character and should be declared invalid. The Applicant states that design 4 differs in the position of the lath with the LED lights, which is placed closer to the bottom edge than in the RCD. However, this element is an immaterial detail. Fixing elements on the back lath of the RCD, which are not present in design 4, should be disregarded since only the front of the luminaire is visible during normal use. (6) On 27/01/2014 the Applicant submitted a document filed by the RCD Holder in civil court proceedings against the Applicant in Poland. The document is in Polish and it was partly translated into the language of the invalidity proceedings. The Applicant claims that the Holder admitted during the said court proceedings that the product, in which the RCD is embodied, has been produced for several years, and since even the Holder of the RCD confirms the fact, and since the RCD s application was filed as late as 2013, there is no doubt that the RCD lacks novelty and individual character. (7) The translation provided with the document reads: The plaintiff has been producing lighting strips called Listwa LED typu LEO by the plaintiff for several years and, thanks to its innovative solutions and original design, the plaintiff acquired the certificate of registration No 002237354-0002 issued by the Office for Harmonization in the Internal Market. (8) In reply to the Application, the Holder made a request to disregard evidence concerning designs 1, 2 and 3, as it was not filed in the language of the proceedings and no translation was provided within the time limit stipulated by law. (9) Design 1 is different from the RCD, mainly because it is related to a different product it is composed of two separated parts: a channel section connected to a T-shaped unit. Design 2 represents electrical wiring diagrams, which have no correlation with the RCD. Evidence of disclosure of design 3 and 4 is not trustworthy because the date of publishing is not indicated on all of the pages 4

provided. Moreover, there is no similarity between design 3 and the RCD. The disclosures of alleged prior designs are not sufficient enough to allow proper assessment of the novelty of the RCD. The RCD, according to view 2.6 of the registration, for instance, has a channel-shaped section along the whole length of the product. The disclosures of the prior designs do not show this feature and, therefore, it cannot be assessed. (10) In the reply to the Holder s observations, the Applicant submits that the relevant parts of evidence were translated in the reasoned statement, which is part of the application, or that they are self-explanatory dates, images and numbers, and therefore do not require any translation. The products related to prior designs and the RCD belong to the same category, namely luminaries, therefore the argument that the designs of the products are incomparable has to be dismissed. The Applicant further submits a declaration from Mr Janusz Góra, the CEO of the Applicant, who confirms publication of the catalogue disclosing design 3 prior to the RCD s filing date, and a certificate of RCD registration of design 4 dated prior to the RCD s filing date. The Applicant also submits a second declaration from Mr Janusz Góra confirming that the Prismatic Duo LED product has been manufactured, offered and put on the market with one channel section from 2009; the declaration is accompanied by images of the product. (11) In its rejoinder, the Holder claims that the Applicant did not submit any supporting evidence of the earlier disclosure of the RCD by the Holder, and it reiterates that the evidence does not prove the lack of novelty and individual character of the RCD. According to the Holder, the contested RCD does not result directly and clearly from the former solutions available to the public. On the contrary, it is characterized by distinctness resulting from its shape, method of connection and arrangement of its elements: all this proves the contested RCD does have individual character. (12) For further details of the facts, evidence and arguments submitted by the Applicant, reference can be made to the documents on file. II. GROUNDS OF THE DECISION A. Admissibility (13) 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. 1 Commission Regulation (EC) No 2245/2002 of 21/10/ 2002 implementing Council Regulation (EC) No 6/2002 on Community designs. 5

B. Substantiation B.1 Evidence (14) The Holder claims that the evidence concerning designs 1, 2 and 3 should be disregarded because it was not translated into the language of proceeding. The images, the identification of the products, the dates of issue of invoices, catalogues and company details do not require a translation. Therefore, the evidence will not be disregarded. (15) The Applicant s assertion that all the disclosures relate to the same design is not correct. The designs in the provided documents bear different features and the products to which they relate have different names and indications. For these reasons every disclosure is considered separately and each disclosed design is assessed individually. (16) The Office notes that in the course of the proceedings both the parties submitted images of different products allegedly related to the RCD or the prior designs in their observations. Because all these submissions (coming to the Office after the filing the Application) are fax submissions, the quality of images are not sufficient to be used for the purpose of comparing the designs, and for this reason the images provided in these submissions will not be taken into account. 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) Design 1 was disclosed in the course of business. The product RLZPRDUO1AC0490N 01 in the technical documentation was sold by the Applicant to at least two business entities in Poland before the RCD s filing date, as proven by the provided invoices. Design 1 is, therefore, deemed to have been made available to the public in compliance with Article 7(1) CDR. (19) Design 2 is represented by three drawings a), b) and c). The images do not show the same subject matter in different views but each of the drawings represents a different object or different variant of the same object with the addition or removal of some features. It suggests various and ambiguous interpretations. (20) According to the established case-law where the representation of a prior design fails to adequately represent it, thereby rendering any comparison with the contested design impossible, this does not amount to disclosure for the purpose of Article 7(1) CDR (decision of 10/03/2008, Barbecues, R-586/2007-3, paragraphs 22 et seq.). The Applicant failed to identify which of the three provided images the RCD is supposed to be compared with, nor did it provide any clarification of how the images relate to each other or to the RCD. Design 2 is, therefore, not deemed to be disclosed in compliance with Article 7(1) CDR. 6

(21) Design 3 was disclosed in a product catalogue, which is printed material targeted at potential business clients. The catalogue bears a publishing date preceding the RCD s filing date. Though the Applicant submitted only extracts from the catalogue and the date is only on the last page, the layout and character of the extracts is consistent and there is no doubt that the extracted pages form part of one catalogue. (22) Design 3 is represented by two drawings: an overall view showing how the luminaire is fixed to a shelf and a detailed cross-section view showing an illuminated diode embedded in the arm of the luminaire. Both the images are schematic, and do not show details such as the layout of the diodes in the arm, the fixing elements, the length of all the moulding arms or any additional elements. (23) As said before, where the representation of a prior design fails to adequately represent it, thereby rendering any comparison with the contested design impossible, this does not amount to disclosure for the purpose of Article 7(1) CDR (decision of 10/03/2008, Barbecues, R-586/2007-3, paragraphs 22 et seq.). In the absence of details allowing proper assessment of the prior design, the disclosure of design D3 must be disregarded from the application of novelty and individual character tests. The design is not deemed to be made available to the public in compliance with Article 7(1) CDR. (24) Design 4, like design 3, forms part of a business catalogue dated prior to the RCD s filing date. It is represented by one schematic drawing showing a crosssection view with a diode, and a photograph showing a moulding. The views are inconsistent in the way that the schema contains a diode, whereas in the photograph there is a plain moulding without a diode. Design 4 is not disclosed in a way that allows unambiguous interpretation. (25) Where the representation of a prior design fails to adequately represent it, thereby rendering any comparison with the contested design impossible, this does not amount to disclosure for the purpose of Article 7(1) CDR (decision of 10/03/2008, Barbecues, R-586/2007-3, paragraphs 22 et seq.). The Applicant failed to identify which of the two provided images the RCD is supposed to be compared with, neither clarified a relation between the two representations of the design. Design D4 is, therefore, not deemed to be disclosed in compliance with Article 7(1) CDR. (26) The Applicant s claim that the RCD s Holder admitted earlier disclosure of the RCD in the submitted writ in the court proceedings has to be dismissed. The document itself is not a proof of the earlier disclosure of the RCD. The mare proclamation of the Holder without any supporting evidence is insufficient. The representation of the cited product of the Holder, namely Listwa LED typu LEO is not provided. The Applicant therefore failed to prove the earlier disclosure of the RCD. B.3 Novelty (27) According to Article 5 CDR, the 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. 7

(28) The RCD and prior design D1 both relate to luminaires in the form of mouldings. The RCD s shape is an elongated moulding with a number of led diodes embedded in its arm (lath) on one side, and on the other side having two arms (lathes) of which the upper one is equipped with fixing rivets. (29) Design 1, as it is disclosed, is a part (probably one end) of a similar moulding. It also shows one arm with diodes on one side and two arms on the other side, of which the lower one is equipped with a screw or a rivet. Differently from the RCD, design 1 has two additional holes to fix wires leading from the diodes and a kind of cover or film covering the diodes. The diodes are positioned closer to each other in design 1 than in the RCD. The disclosure of design 1 does not allow assessing a larger portion of the moulding, namely the length of the arms and their position with respect to the central vertical arm. (30) Features of the prior design which are not of a sufficient quality allowing all the details to be discerned in the representation of the prior design cannot be taken in consideration for the purpose of Articles 5 and 6 CDR (decision of 10/03/2008, R-586/2007-3, Barbecues, paragraphs 23-26). In the absence of more information on prior design and as the differences between the design 1 and the RCD are not only immaterial, design D1 does not constitute an obstacle to the novelty of the RCD. (31) The difference in the construction of products claimed by the Holder, namely that the moulding in the prior design is made of two pieces whereas the RCD is made of just one, has no impact on the appearance of the products in the considered representations of designs; therefore, it is not decisive in the outcome of the assessment. B.4 Individual character (32) According to Article 6 CDR, the 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 the RCD s individual character, the designer s degree of freedom in developing the design shall be taken into consideration. (33) The informed user, from whose perspective the test is performed, according to the established case-law, is a particular observant, is 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). It is not necessary to categorize such an informed user. Based on the facts in the proceedings, the informed user is able to compare the designs in concern side by side with an appropriate attention and knowledge of the sector concerned as defined in the following paragraph. (34) In the present case, the informed user is aware of the luminaires in the form of furniture mouldings that illuminate shelves and spaces as shown, for instance, in the illustrative photograph of the disclosure of design 3 above (see paragraph 4, point 4). (35) The informed user is familiar with the basic features of the products concerned. The illuminating moulding is usually shaped like an elongated lath (of different 8

length, shape, fitting and illumination features). The products on the market are similar in this regard but the products differ in the actual design and manufacture of the lath and its components. (36) The designer s freedom is limited to the extent that the luminaire has to fit the space and furniture for which it is intended. The product has to be also safe in terms of the use of electric appliances. Despite these restrictions, the products differ substantially in their appearance. (37) Prior design 1 and the contested RCD both have parts which are common to the sort of products they belong to: a moulding with embedded diodes and fixing rivets. The mouldings have the same number of arms. In both designs, the diodes are rectangular but the way they are fixed to the moulding and the distance between them are different. The overall shape of the moulding of the prior design, its arms and their position in relation to each other are not clearly discernible from the representation of the prior design due to the fact that only part of the design is disclosed. (38) The compared designs show several differences, as described in the previous paragraph, which are not negligible but contribute to the different overall impression the designs produce on the informed user. Other features are not disclosed enough to form the obstacle to the novelty and individual character of the RCD. The Office must conclude that the Applicant failed to prove that prior design 1 produces the same overall impression on the informed user as the RCD. The RCD therefore has individual character with respect to design 1. C. Conclusion (39) The facts and evidence provided by the Applicant do not sufficiently support the grounds of invalidity under Article 25(1)(b), therefore, the Application is rejected. III. COSTS (40) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (41) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of EUR 400 for the costs of representation. 9

IV. RIGHT TO APPEAL (42) 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 10