OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 11/04/2014.

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 11/04/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF AN INTERNATIONAL DESIGN FILE NUMBER ICD INTERNATIONAL DESIGN DM/ LANGUAGE OF PROCEEDINGS English APPLICANT Peter Reisenthel Zeppelinstr. 4 D Gilching Germany REPRESENTATIVE OF BUSSE & PARTNER THE APPLICANT Postfach D München Germany HOLDER AKRIS AG Felsenstrasse 40 CH-9001 Switzerland REPRESENTATIVE OF SKW Schwarz Rechtsanwälte THE HOLDER Mörfelder Landstraße Frankfurt am Main Germany Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division composed of Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Martin Schlötelburg (member) took the following decision on 11/04/2014: 1. The application for a declaration of invalidity of the effects of the international registered design nº DM/ in the European Union is rejected. 2. The Applicant shall bear the costs of the Holder. I. FACTS, EVIDENCE AND ARGUMENTS (1) The international design nº DM/ (hereinafter the DM ) has been registered in the name of the Holder with the date of filing of 27/07/2010. In the DM, the indication of products reads handbag, and the design is represented in the following views: 2

3 (2) On 05/11/2013, the Applicant filed an invalidity application ( the Application ). (3) The Applicant requests a declaration of invalidity of the DM in EU on the grounds of Articles 25(1)(b) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (hereinafter CDR ). (4) As evidence, the Applicant provides: - an extract from the Community designs database concerning design registration nº for handbags, filed on 24/10/2006 and published on 28/11/2006 in the Community designs bulletin in the following view (hereinafter prior design 1 ): 3

4 - an extract from the international designs database of the World Intellectual Property Organization (WIPO) concerning design registration nº DM/ for shopping bag, registered on 04/10/1999 and published on 31/12/1999 in the international designs bulletin in the following views (hereinafter prior design 2 ): 4

5 - a copy of the affidavit of Mr Peter Leinberger, the sales manager of the company of the Applicant stating that in 2002 the company sold a bag called shopper of the following design (hereinafter prior design 3 ): - an extract from the Community designs database concerning design registration nº for bags, filed on 15/12/2008 and published on 07/01/2009 in the Community designs bulletin in the following view (hereinafter prior design 4 ): - an extract from the Community designs database concerning design registration nº for bags, filed on 31/01/2007 and published on 20/02/2007 in the Community designs bulletin in the following view (hereinafter prior design 5 ): (5) In the reasoned statement, the Applicant claims that the protection by virtue of international design registration is sought for different positions of the bag (unfolded, closed in front, closed inside). The DM does not meet the conditions for protection because all the characteristic features of the design, such as trapezoid shape, straps arranged on the side of the upper border, locking device at the ends of the straps, locking the bag inside, at bottom or in 5

6 front, have been disclosed before its filing date. It is proved by the provided examples from the prior art: locking the bag in front so that it forms a letter A in prior design 1; the trapezoid shape and closing inside the bag in prior design 2, the unfolded open position in prior designs 3 to 5. (6) According to the Applicant the Holder tries to get a functional protection of the product through applying a design in various stages. Each of the individual states is anticipated by the previously known design. The Holder seeks the protection (by virtue of one DM registration), which he would not obtain, should he filed separate applications of the design for each indicated position. The combination of the characteristic features of the design is not new, therefore not registrable. The Applicant makes a reference to German legislation. (7) The Applicant also claims that views 1.2, 1.5 and 1.3 of the DM do not show the same product as the view 1.1 because the handle is made different way and views 1.3 and 1.5 contradict each other. The view 1.2 showing the cover flap from the bottom corner does not correspond to view 1.3 and the view 1.1 does not correspond to 1.3. For these reasons the DM should be also invalidated. (8) In the response to the invalidity Application the Holder submits that the rules governing the formal requirements of a Community design application allow combination of graphic and photographic representations of the RCD and the DM represents one and the same handbag consistently in these two forms of representation. The reproductions shall be interpreted in compliance with the declared intent of the applicant ensuing from the application. (9) As regards the contested novelty and individual character the Holder further submits that the DM represents a simple, purist design of clean lines and geometrical forms. None of the previously known designs as referred by the Applicant represents such a reduced and minimalistic appearance. It appears from the Applicant s objection to the DM that they are related to functional elements without comprising any aesthetical features the consideration of which would have revealed material differences in the overall appearance of the DM but the elements of the DM perceptively deviating from those of the prior designs indicate that differences are sufficient to produce a different overall impression on the informed user. (10) For further details to the facts, evidence and arguments submitted by the parties, the reference is made to the documents on file. II. GROUNDS OF THE DECISION A. Admissibility (11) According to Article 106a(1) CDR, unless otherwise specified in title XIa CDR, this Regulation and any Regulations implementing this Regulation adopted pursuant to Article 109 shall apply, mutatis mutandis, to registrations of industrial designs in the international register maintained by the International Bureau of the World Intellectual Property Organisation designating the Community, under the Geneva Act. 6

7 (12) According to Article 106f(1) the effects of an international registration in the Community may be declared invalid partly or in whole in accordance with the procedure in Titles VI and VII CDR. (13) The DM is an international design filed and registered on 27/07/2001 among others also for the European Union under Geneva act. The proceedings concerning the declaration of invalidity of the effects of the DM in EU are therefore governed by the relevant provisions of CDR and the implementing regulation. (14) The Application for declaration of invalidity complies with the formal requirements prescribed in the CDR and the Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (hereinafter CDIR ), in particular as laid down in Article 28 CDIR. The Application is therefore admissible. B. Substantiation B.1 Consistency of the views (15) According to Article 106e CDR the Office when carrying out an examination of an international registration, may refuse the effects of the international registration in the Community only if the design for which protection is sought does not correspond to the definition under Article 3(a) CDR, or is contrary to the public policy or to accepted principles of morality pursuant to Article 9 CDR. It follows that all the formal requirements, including the requirements concerning the representation of an international design are subject to the examination of the International Bureau of WIPO and the international design may not be refused, neither its effects invalid, for non-compliance with those formal requirements. The formal requirements are governed by the legislation adapted under the Hague agreement, and neither the legislation of the EU nor national legislation, to which the parties refer, is applicable. The DM is therefore assessed as registered before the International Bureau, consisting of 12 views in the form of photographs and drawings. B.2 Disclosure (16) Prior designs 1, 2, 4 and 5 have been published in the Community and International designs bulletins and made available to the public via the Office and the International Bureau designs databases before the filing date of the contested DM, hence they were made available to the public within the meaning of Article 7(1) CDR. (17) Prior design 3 was allegedly disclosed in the course of business. As evidence the Applicant submits the affidavit of the sales manager of the Applicant s company. No supporting documents such as invoices or commercial materials showing numbers, periods or circumstance of the trade were submitted. In view of the Office the affidavit, standing alone and made by the person related to the Applicant, is not sufficient to prove the disclosure of prior design 3 and therefore the prior design is not taken into account in the following assessment of novelty and individual character. 7

8 B.3 Comparison of designs (18) The Applicant claims that the contested DM combines features known from the prior art and therefore it is not eligible for the protection. In support of his arguments he submits examples of prior designs in positions corresponding to the views of the DM. The submitted prior designs, if compared with the individual views of the DM, destroy the novelty of all the features for which the protection is sought. (19) The Office does not agree with the Applicant on this point. According to judgment of 22/06/2010, T-153/08, Communication equipment, para , the Community design must be compared with each and every earlier design relied on by the applicant, individually. Novelty and individual character of a Community design cannot be defeated by combining earlier designs or parts of earlier designs. (20) As concerns the variability of the bag, according to Article 3(a) 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 material of the product itself and/or its ornamentation. Following the definition of the Community design, the assessment has to be done in those visual categories of the appearance of the product as long as they are discernible from the representation of the design. The alternative positions may contribute to different perception of the design depending on a particular view but the design has to be considered globally, taking into account all the views and the overall appearance of the product. The Office will apply this approach in the assessment which follows. (21) As a matter of principle, all features of a Community design must be taken into consideration when examining its novelty and individual character, unless they are features dictated by the technical function of the product or the features of interconnection with other products, or disclaimed features for which the applicant does not seek the protection. No such features excluded from the assessment by virtue of the exceptions referred above were recognized in the DM therefore it will be assessed taking into account all visual features of the product discernible from the registration. (22) The DM relates to a handbag, shopping bag or similar products. It is represented in 12 views showing in particular contours and shape of the product. It is also understood that the bag is made of a material allowing folding its upper corners and fasten them with the strips and fastening either inside the bag or on one side. Disclosing the concrete making of the bag in photographs, the Office understands that the design is intended to be without any decorative elements (except the fastening) or surface patterns. B.4 Novelty (23) 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. 8

9 Designs shall be deemed to be identical if their features differ only in immaterial details. (24) The DM and prior design 1 relate to handbags. They have at least the following features in common: - both the designs have a basic rectangular shape; - the designs have similar proportions, - both the designs have strips in the corners where the bag opens, and the strips are equipped with a fastening; - both the bags are made of flexible material allowing folding the corners with the strips to the bag front and fasten them with a fastener; - both the designs have one loop handle on each side. (25) The DM and prior design 1 differ in the following features: - the DM has enforced rims around the opening, whereas the prior design has an enforced strip under the opening; - the handles of the DM are sunken in the enforced rim, whereas the handles of the prior design are attached to the sides of the bag, - the designs differ in the way the strips are attached to the bag and in the design of the fasteners; - the prior design has a chequered pattern combined with one-colour handles and enforced strip, whereas the DM is made from a material of one shade. (26) The differences between the DM and prior design 1 are not immaterial details therefore the DM and the prior design are not identical within the meaning of Article 5 CDR. Prior design 1 does not constitute an obstacle to the novelty of the DM. (27) Prior design 2 relates to a shopping bag. It has at least the following features in common with the DM: - both the designs have a basic rectangular shape; - the designs have similar proportions, - both the designs have strips in the corners where the bag opens, and the strips are equipped with a fastening; - both the bags are made of flexible material allowing folding the corners with the strips inside the bag and fasten them with a fastener; - both the designs have one loop handle on each side. (28) The DM and prior design 2 differ in the following features: - the DM has enforced rims around the opening, whereas the prior design has an enforced strip only around the handles; - the designs differ in the way the strips are attached to the bag and in the design of the fasteners; - the prior design has a cheetah-like pattern from outside and one colour material inside the bag, combined with enforced strip and handles made of a shiny material, whereas the DM is made from a material of one shade; - the prior design has a pocket with a zipper on the inner side of the bag. 9

10 (29) The differences between the DM and prior design 2 are not immaterial details therefore the DM and the prior design are not identical within the meaning of Article 5 CDR. Prior design 2 does not constitute an obstacle to the novelty of the DM. (30) Prior design 4 relates to a bag. It has at least the following features in common with the DM: - both the designs have a basic rectangular shape; - the designs have similar proportions; - both the designs have strips in the corners where the bag opens, and the strips are equipped with a fastening; - both the designs have one loop handle on each side. (31) The DM and prior design 4 differ in the following features: - the DM has enforced rims at the opening, whereas the prior design has enforced parts at handles with metal eyelets to which the loop handles are attached; - the prior design has a kind of pouches on each side at the opening; - the prior design has a tag attached to one of the eyelets. (32) The differences between the DM and prior design 4 are not immaterial details therefore the DM and the prior design are not identical within the meaning of Article 5 CDR. Prior design 4 does not constitute an obstacle to the novelty of the DM. (33) Prior design 5 relates to a bag. It has at least the following features in common: - both the designs have a basic rectangular shape; - both the designs have an enforced rim at the bag opening; - both the designs have one loop handle on each side. (34) The DM and prior design 5 differ in the following features: - the prior design has enforced strips at the bottom of the bag, whereas such strips are missing in the DM; - the DM has strips in the corners where the bag opens, which allow folding and fixing the corners inside or on a side of the bag, whereas such strips are missing in the prior design; - the prior design combines two materials with a surface pattern and ornamentation, whereas the DM is made of a material of one shade; - the prior design has handles sunken in the seams of the rim of the bag opening, whereas the handles of the DM are sunken in the enforced strip outside the bag. (35) The differences between the DM and prior design 5 are not immaterial details therefore the DM and the prior design are not identical within the meaning of Article 5 CDR. Prior design 5 does not constitute an obstacle to the novelty of the DM. 10

11 B.5 Individual Character (36) 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. (37) The informed user, from whose perspective the test is performed, is, according to the established case-law, 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 judgement of 9 September 2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (38) In the present case the informed user is aware of designs of handbags which were available on the market before the filing date of the contested DM. The informed user is familiar with basic features of the products concerned: a pouch which allows storing personal assets and other items, and handles or any other apparatus which allows carrying it. (39) The designer s freedom in developing a design of a handbag is therefore not substantially limited. A handbag can have different shapes, proportions and decorations as long as it is capable to hold and carry its contents. New and innovative design solutions are not hindered by severe technical constraints. On the other hand, the perception of the informed user may be influenced by the density in the relevant field. The market with handbags and similar goods available before the date of filing of the DM was substantially crowded. Thus though the designer s freedom was not limited, no overwhelming differences may be expected in compared designs. (40) The contested DM has been registered for its shape, as the Holder say purist, simple design of clean lines without any pattern or decoration. To this extent, the closest design from the submitted prior art, as described in paragraphs 26 to 36, is prior design 4 which is also made of one material without any decorations or patterns. Prior design 4 however comprises elements which are not present or which do not substantially differ from the contested DM. These are the pouches on each side of the bag, substantially different fixture of the handles, and presence of metal eyelets and the tag. Absence of these elements and different making of handles deliver to the contested DM different overall impression. The DM has individual character with respect to prior design 4. (41) Prior designs 1 and 2 have very similar shape and proportions with the DM, however both the designs have distinctive patterns and combination of materials. Prior design 1 has also different fixture of handles and position of the enforced strip at the opening of the bag from the DM. The designs further differ in the making of the fasteners of the side strips. The overall impression of the DM differs from both the prior designs 1 and 2. The DM has individual character with respect to them. 11

12 (42) Prior design 5 differs substantially from the contested DM in the used material, its pattern and decorations. Though it has an enforced strip around the opening of the bag its appearance and the fixture of handles differ from the DM. The strip at the opening of the prior design is also used at its bottom, which is not the case in the contested DM. The DM produces different overall impression from prior design 5, therefore the prior design does not constitute an obstacle to the individual character of the DM. C. Conclusion (43) The grounds of invalidity pursuant to Article 25(1)(b) CDR are unfounded. III. COSTS (44) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear the costs of the Holder. (45) 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 (46) 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 (Article 57 CDR). THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 12