OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 21/02/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9121 COMMUNITY DESIGN 002148692-0020 LANGUAGE OF PROCEEDINGS English APPLICANT BUNKER & BKR, S.L. Velazquez, 9 02640 Almansa Spain REPRESENTATIVE OF APPLICANT J. ISERN PATENTES Y MARCAS, S.L. Avenida Diagonal, 463 bis, 2 Planta 08036 Barcelona Spain HOLDER J. MOREIRA, LDA. Apartado 30 P-4614-909 Felgueiras Portugal 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) has taken the following decision on 21/02/2014: 1. The registered Community design nº 002148692-0020 is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design nº 002148692-0020 (hereinafter the RCD ) has been registered in the name of the Holder with the date of filing of 06/12/2012. In the RCD, the indication of products reads footwear and the design is represented in the following view: 20.1 (https://oami.europa.eu/esearch/#details/designs/002148692-0020) (2) On 24/04/2013, the Applicant filed a request for a declaration of invalidity (hereinafter the Application ) contesting the validity of the RCD. The fee for the Application was paid by current account. (3) Using the Office form for the application, the Applicant requests a declaration of invalidity of the RCD on the ground 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, a reference to Community design n 001956624-0001 (hereinafter the prior design) registered for footwear on 01/12/2011 and published on 07/12/2011 in the following views: 2
1.1 1.2 1.3 1.4 1.5 (https://oami.europa.eu/esearch/#details/designs/001956624-0001) (5) In the reasoned statement, the Applicant claims that the general impression the RCD produces, generates a high degree of confusion on the informed consumer in relation to the prior design. Both the designs are incorporated in flat half-legged boots with round toe-caps, decorative buckle in the bridge zone and a lace in the upper part. The RCD does not create a different impression, the slight differences are not eye-catching enough and considering almost unlimited designer s freedom, the informed user will concentrate on the striking similarities. The RCD lacks individual character with respect to the prior design and it should be declared invalid. (6) In the response the Holder claims that his RCD is based on his previous model of 2009 and the lace part is used in the industry for several years, therefore it falls in the public domain. The RCD is new deriving the novelty from the previous model. The compared designs can be considered similar but not being copies. (7) For further details to the facts, evidence and arguments submitted by the parties, reference is made to the documents on file. II. GROUNDS OF THE DECISION A. 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) 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 the Application contains an indication of the facts, 3
evidence and arguments submitted in support of those grounds. The other requirements of Article 28(1) CDIR are fulfilled as well. The application is thus admissible. B. Substantiation B.1 Evidence (9) The prior design has been published in the Community Design Bulletin before the filing date of the contested RCD and hence was made available to the public in the meaning of Article 7(1) CDR. B.2 Novelty (10) According to Article 5 CDR the RCD lacks novelty when an identical design has been made available to the public prior to the date of filing of the RCD. Designs shall be deemed to be identical if their features differ only in immaterial details. The RCD and the prior design relate both to footwear, namely half-legged boots. They have at least the following features in common: - a lace or embroidery in the upper part; - a decorative buckle bridging the upper of the shoes; - the leather-like upper and heel part with visible stitches; - a low heel and a leather-like upper rim. (11) The RCD and the prior design differ in the following details: - the motive of the lace; - the details of the buckle; - the shape of the uppers, which is more curved towards the tip of the shoe in the prior design than in the RCD. (12) The differences between the RCD and the prior design are not immaterial details. Therefore, the RCD and the prior design are not identical within the meaning of Article 5 CDR. The prior design does not form an obstacle to the novelty of the RCD. B.3 Individual Character (13) According to Article 6 CDR, the RCD lacks individual character if the overall impression produced on the informed user is the same as the overall impression produced on such a user by any design which has been made available to the public prior to the date of filing of the RCD or the date of the priority claimed. In assessing individual character of the RCD, the degree of freedom of the designer in developing the design shall be taken into consideration. (14) The informed user is familiar with the footwear. The degree of freedom of the designer is not substantially limited. New and innovative design solutions are 4
not hindered by severe technical or standardization constraints. The only limitation is that a shoe designer has to follow the ergonomics of the foot. (15) The boots of the RCD and the prior design both are characterized by the embroidery around the calf section which is not present on the rest of the boot and the decorative buckle in the upper zone of the shoe. The combination of these two decorative features is unusual in boots and consequently visually eye-catching. In comparison with these clearly more dominant features, the existing differences between the contested RCD and the prior design are of minor importance. Therefore, the RCD fails to produce a different overall impression from the overall impression produced by the prior design and thus lacks individual character within the meaning of Article 6 CDR. C. Conclusion (16) The RCD is declared invalid on the ground of Article 25(1)(b) CDR in conjunction with Article 6 CDR, due to lack of individual character. 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 (Art. 57 CDR). THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 5