OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 26/05/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9049 COMMUNITY DESIGN 002055053-0001 LANGUAGE OF PROCEEDINGS English APPLICANT collectingsystems GmbH Am Steinhaus 6 85134 Stammhamm Germany REPRESENTATIVE OF THE APPLICANT WINTER, BRANDL, FÜRNISS, HÜBNER, RÖSS, KAISER, POLTE PARTNERSCHAFT PATENT- UND RECHTSANWALTSKANZLEI Bavariaring 10 D-80336 München Germany HOLDER TEXLAND Marek Brocławski Narutowicza 321 05-400 Otwock Poland REPRESENTATIVE OF THE HOLDER Łukasz Sommer ul. Grochowska 172 lok. 47 04-357 Warszawa 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 26/05/2014: 1. The registered Community design No 002055053-0001 is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No 002055053-0001 (hereinafter the RCD ) was registered in the name of the Holder with the filing date of 11/06/2012. The RCD s indication of products reads containers, deep collection containers, recycling containers, and the design is depicted by the following views: 1.1 1.2 1.3 1.4 1.5 1.6 1.7 (https://oami.europa.eu/esearch/#details/designs/002055053-0001) 2
(2) On 08/03/2013, the Applicant filed a request for a declaration of invalidity (hereinafter the application ) contesting the validity of the RCD. The application fee was paid by current account with OHIM. (3) Using the Office application form, 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 ). (4) As evidence, the Applicant provides, inter alia, an extract from the Register of the German Patent and Trade Mark Office concerning German design No 402011001297-0001, filed on 07/03/2011, registered for drop-off boxes for used clothes and published on 21/10/2011 in the following views (hereinafter the prior design ): 1.1 1.2 1.3 1.4 (5) In the reasoned statement, the Applicant claims that the RCD lacks novelty and individual character with respect to the prior design and it should be declared invalid. The contested RCD and the prior design share all substantial features, and if there are any differences between them, they are insignificant details. (6) In its response, the Holder submits that the RCD is not identical to the prior design and does not produce the same overall impression on the informed user. The similarities indicated by the Applicant are determined by the technical function of the containers. The designs differ in the lock holder, the angle of the rain-drip rails, the opening hatch and guiding path, the slide mechanism, handles, the feet and the colour. As regards the designer s degree of freedom, the boxes for used clothes comprising a slide mechanism and guiding path usually have a shape close to a cube and a certain layout of components. The components such 1.5 3
as the slide mechanism with handle, guiding path, rain-drip rails, door or feet must be located in certain places, due to their functions. There are a lot of technical constraints applied to the products and therefore the designer s freedom is limited. The informed user is familiar with boxes for used clothes, their aspects and working methods. They are aware that the shape of parts such as the slide mechanism is dictated by technical function rather than by aesthetic reasons and this mechanism has been known for years. (7) In its response, the Applicant reiterates that the RCD satisfies neither the requirement of novelty nor the requirement of individual character. The technical function of the design does not limit the designer s choice of design and the placement of various elements. In designing a container for used clothes, the designer s freedom is restricted insofar as the container has to have a receptacle for receiving the objects via an opening. The opening can be actuated by means of an appropriate mechanism. The design colour has no effect on the individual character either, because it does not constitute a characterising feature. (8) The Holder did not send a rejoinder. (9) For further details of the facts, evidence and arguments submitted by the parties, reference is made to the documents on file. 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) Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (hereinafter CDIR ). 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 these grounds. The other requirements of Article 28(1) CDIR are also met. The application is thus admissible. B. Substantiation B.1 Evidence (11) The prior design was published by the German Patent and Trade Mark Office prior to the contested RCD s filing date, and hence was made available to the public within the meaning of 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 RCD s filing date. Designs shall be deemed to be identical if their features differ only in immaterial details. (13) The RCD and the prior design both relate to collection containers. They have at least the following features in common: 4
- the shape and contours of the body of the container; - the door in the front lower part of the container; - the slide mechanism to deposit items in the container; - drip rails leading rain water away from the container entrance. (14) The RCD differs from the prior design in the following features: - the shape of the handle to operate the slide mechanism; - the latch of the container door; - the angle of the drip rail; - the angle at which the slide mechanism recesses into the container; - the feet of the container; - the boltless door of the container; - the colour of the container. (15) The differences between the compared designs are not completely immaterial. The prior design therefore does not constitute an obstacle to the novelty of the RCD. B.3 Individual character (16) 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 prior to the RCD s filing date or the priority date claimed. In assessing individual character of an RCD, the designer s degree of freedom in developing the design shall be taken into consideration. (17) The informed user, from whose perspective the test is performed, according to established case-law, is particularly 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 it is intended (see judgment of 09/09/2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (18) In the present case, the informed user is aware of designs of collection containers available on the market before the filing date of the contested RCD. The informed user is familiar with the basic features of the products concerned: the container must have a body to store the collected items, it must have an opening to receive the content and another to remove it. The designer s freedom in developing a design of a collection container is limited as regards the volume appropriate to the content the container and the nature of it (the material, size, etc.). However, the designer s freedom is not substantially limited as regards the shape and other components the container can have. Concerning the depositing and removal mechanisms, some security and safety precautions may be necessary to make sure that items can be deposited safely but not removed by unauthorised persons. However, the Holder did not submit any evidence of such normative or technical requirements. The choice of the depositing and removal mechanisms can also depend on the nature of the items to be collected, but this does not limit the choice to only one depositing and removal mechanism either. (19) The Office does not agree with the Holder that severe technical constraints prevent the designer from departing substantially from the prior design. 5
(20) Comparing the contours, shape and main components present in both the RCD and the prior design, they are deemed to be identical or almost identical. This concerns mainly the characteristic shape of the rectangle and the top, which slants downwards toward the back. The RCD and the prior design differ in the following details: the handle element attached to the hatch and the bolts on the front door in the prior design (and omitted in the RCD); the shape of the handle of the slide mechanism, which is trapezoidal in the prior design but rectangular in the RCD; the feet, which are different in both designs but which are almost invisible under the body of the containers; and the angle at which the rain-drip rails are bevelled, although this difference is almost unnoticeable. The designs also differ in the angle at which the slide mechanism recesses into the container, but they do not differ in the design of the slide opening. The colours of the containers, though different, are basic and very common ones. The identified changes do not substantially alter the appearance of the product related to the RCD. The similarities with the prior design undisputedly prevail. The designer of the RCD did not necessarily have to copy the design s characteristic features, such as the shape and composition of the components. From the informed user s perspective, both designs produce the same overall impression. C. Conclusion (21) 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 (22) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (23) 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. IV. RIGHT TO APPEAL (24) 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