OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 18/08/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9345 COMMUNITY DESIGN 002169243-0002 LANGUAGE OF PROCEEDINGS English APPLICANT E. Mishan & Sons 230 Fifth Avenue New York, NY 10001 United States REPRESENTATIVE OF THE APPLICANT Wilson Gunn 5th Floor, Blackfriars House The Parsonage Manchester M3 2JA United Kingdom HOLDER Rama Star International SRL Aleea Marius Emanuil Buteica nr. 2, Bl. 68, Sc. 1, Etaj 8, Ap. 49, Sector 3 031882 Bucharest Romania REPRESENTATIVE OF THE HOLDER Rama Star International SRL Marian Dumitrache Aleea Marius Emanuil Buteica nr. 2, Bl. 68, Sc. 1, Etaj 8, Ap. 49, Sector 3 031882 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 Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Martin Schlötelburg (member), takes the following decision on 18/08/2014: 1. Registered Community design No 002169243-0002 is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No 002169243-0002 (the RCD) was registered in the name of the Holder with the filing date of 18/01/2013. The RCD s indication of products reads logos and graphic symbols and logos, surface patterns, ornamentation. The design was published in the Community Designs Bulletin in the following view: (https://oami.europa.eu/esearch/#details/designs/002169243-0002) (2) On 10/12/2013, the Applicant filed an application for a declaration of invalidity (the Application). (3) Using the Office s 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 (the CDR), and other grounds under Article 25(1) (c), (d), (e), (f) or (g) CDR. In its reasoned statement, the Applicant points explicitly to Article 25 (1)(e) and (f) CDR. (4) As evidence, the Applicant provides, inter alia, a printout of the web page http://www.tryabrocket.com archived in the Wayback Machine internet archive on 29/04/2007. The web page contains an image of an AB Rocket fitness device accompanied with the AB Rocket logo on a yellow oval background (the prior design), as shown below: 2
(5) In its reasoned statement, the Applicant claims that the RCD was not new at the time of filing because the logo in which the RCD subsists was made available to the public by the Applicant several years prior the RCD s filing date. The logo has appeared on numerous websites, including www.thanedirect.co.uk (since 2008), www.tvins.com (since 2010) and www.tryabrocket.com (since 2007), which the Applicant proves by providing extracts of these websites taken from the internet archive Wayback Machine. (6) In its reply, the Holder contests that the prior design was disclosed to the public such that it could reasonably become known during the normal course of business in the sector concerned operating in the EU. The Holder also claims that the Office observed the existence of the name ABROCKET in [its] design and accepted the design for registration. The Application, therefore, should be rejected. (7) 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 (8) 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 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 also. The Application is, therefore, admissible. B. Substantiation B.1 Disclosure (9) 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 date of filing of the application for registration 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. (10) As a matter of principle, disclosures derived from the internet form part of the prior art. Information disclosed on the internet is considered to be publicly available as of the date the information was posted, and such a date may be accorded by providing information relating to the updating of the web page, available from an internet archiving service. ( 1 ) Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs. 3
(11) The Applicant submitted several extracts from websites archived prior to the RCD s filing date in an internet archive. All of them contain the logo as shown in paragraph 4. The logo is, therefore, deemed to have been disclosed on the internet prior to the RCD s filing date. The RCD is deemed to have been disclosed in compliance with Article 7(1) CDR. (12) The Holder contests that the disclosure could reasonably have become known to the business circles operating in the sector concerned within the European Community; however, it does not provide any facts and evidence in support of this argument. In their absence, the argument must be dismissed. (13) The argument of the Holder that the Office accepted the RCD application, that its design was registered and that the design, therefore, cannot be challenged by the Applicant in the present proceedings, must be also dismissed. (14) In registration proceedings, the Office performs only a check of the application formalities and an examination of compliance with the definition of a design and with public policy and accepted principles of morality. The substantive conditions of registrability, such as novelty, may be questioned by a third party and examined by the Office in post-registration invalidity proceedings, as in this case. B.2 Novelty (15) According to Article 5 CDR, an 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. (16) The RCD and the prior design relate both to graphic symbols. In the view of the Office, the symbols are identical; no differences were identified. The prior design, therefore, constitutes an obstacle to the novelty of the RCD. C. Conclusion (17) The facts and evidence provided by the Applicant proved the ground for invalidity of Article 25(1)(b) CDR in conjunction with Article 5 CDR. The RCD is declared invalid. III. COSTS (18) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (19) The costs to be reimbursed by the Holder to the Applicant are fixed at EUR 750, of which EUR 400 for costs of representation and EUR 350 for reimbursement of the invalidity fee. 4
IV. RIGHT TO APPEAL (20) 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 5