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

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 27/08/14 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9470 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT JOHN MILLS LIMITED JML House Regis Road Kentish Town London NW5 3EG United Kingdom REPRESENTATIVE OF APPLICANT Graham Watt & Co LLP St Botolph s House 7-9 St Botolph s Road Sevenoaks, Kent TN13 3AJ United Kingdom HOLDER REPRESENTATIVE OF HOLDER HOMELAND HOUSEWARES, LLC Wilshire Boulevard Suite 1150 Los Angeles CA United States of America DENNEMEYER & ASSOCIATES P.O. Box Luxembourg Luxembourg 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), takes the following decision on 27/08/2014: 1. Registered Community design No is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No (the RCD) was registered in the name of the Holder with the filing date of 03/09/2004, claiming the priority from US patent No 10/824,531 of 13/04/2004. The RCD s indication of products reads blenders. The design, when registered, was published with the following view: ( (2) On 10/03/2014 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 Article 25(1)(b) of Council Regulation (EC) No 6/2002 on Community designs (CDR), namely of non-compliance with the requirements of novelty and individual character of the RCD, and on the grounds of Article 25(1)(d), namely that the RCD is in conflict with prior designs. (4) The Applicant submits, inter alia, the following facts and evidence in support of the invalidity grounds: Two undated copies of the user s manual for the KISS Mixer produced by ILJIN Precision Ind. Co. Ltd, Seul, Korea; a copy of the main cover of the product packaging posted on 04/01/01 and mailed to Hestia in the Czech Republic; a copy of a facsimile from Hestia to WS Teleshop International s Czech subsidiary, dated 02/01/2001; indicating that a product sample will be sent, and a copy of a mail delivery order for a package from Hestia to WS Teleshop International s Czech subsidiary posted on 04/01/01 (D1). The manuals and the packaging contain, inter alia, the following images of the product: 2

3 A printout from the United States Patent and Trademark website concerning the status of the trade mark KISS MIXER registered in the name of STP America Inc, the US distributor of the KISS Mixer (D2). Printouts from the internet page of STP America Inc., filed in the WayBackMachine internet archive on 30/11/2001 and 27/09/2002 (D3). 3

4 An undated copy of a brochure of Shunde Ronggui Qu Sheng Electrical Appliance Factory, China, showing a design of the blender Mx-T8GN (as follows), and a printout from WayBackMachine s internet archive of the same product, dated 08/08/2002 and 21/08/2003 (D4). (5) In the reasoned statement the Applicant submits that the RCD does not meet the required conditions of novelty and individual character over prior designs in the evidence shown. (6) The Holder did not submit its observations. (7) For further details of the facts, evidence and arguments submitted by the Applicant, reference is made to the documents on file. II. A GROUNDS OF THE DECISION 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 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. B. Substantiation B.1 Convention Priority (9) An application for a Community design may claim the priority of one or more previous applications for the same design or utility model in or for any State party 1 Commission Regulation (EC) No 2245/2002 of 21/10/ 2002 implementing Council Regulation (EC) No 6/2002 on Community designs. 4

5 to the Paris Convention, or to the Agreement establishing the World Trade Organization (Article 41 CDR; Article 8 CDIR). The right of priority is six months from the date of filing of the first application. (10) The effect of the right of priority shall be that the date of priority shall count as the date of filing of the application for a registered Community design for the purpose of Articles 5, 6, 7 and 22, Article 25(1)(d) and Article 50(1) CDR (Article 43 CDR). (11) The application from which the RCD s Holder claims the priority is neither a design nor a utility model application. The priority claim in the contested RCD must therefore be rejected. The provision of Article 42 CDR does not provide the Office with any discretion to extend the priority claim to the US utility patent application. As the priority claim is invalid, the date determined for the application of Articles 5 and 6 CDR is the RCD s filing date, namely 03/09/2004. B.2 Disclosure (12) 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 or the date of priority 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. (13) Documents in D1 to D3 are evidence that the Kiss Mixer, as shown in D1, was used in the course of business prior to the RCD s filing date and therefore it is deemed to be made available to the public within the meaning of Article 7(1) CDR. (14) Documents D4 are evidence of disclosure of the MX-T8Gn Blender Mill Mincer Juice on internet prior to the RCD s filing date. The design is deemed to be disclosed in compliance with Article 7(1) CDR. B.3 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 filing date of the RCD. Designs shall be deemed to be identical if their features differ only in immaterial details. (16) Documents D1 to D4 and the contested Community design registration all concern kitchen utensils such as blenders, mixers and their accessories. (17) The RCD, consisting mainly in a threaded cover is registered in the form of a black and white drawing with no colours or material specification or decoration, therefore none of these are considered in the earlier disclosed designs either. (18) Documents D1 to D4 show containers of different heights with screw-threaded covers attached to them. As there is no visible difference between these covers, they are compared with the RCD all together in the following assessment. (19) The RCD consists of in a round flat cover with threads inside. The prior designs all consist in round flat covers threaded on the inside. No differences between the 5

6 RCD and prior designs can be noticed. The designs are identical within the meaning of Article 5 CDR, therefore the prior designs constitute an obstacle to the novelty of the RCD. C. Conclusion (20) The RCD is declared invalid on the grounds of Article 25(1)(b) CDR in conjunction with Article 5 CDR due to its lack of novelty. III. COSTS (21) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (22) 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 (23) 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 6