OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 12/02/08. English

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DESIGNS DEPARTMENT- INVALIDITY DIVISION DECISION OF THE INVALIDITY DIVISION OF 12/02/08 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Stokke AS Håhjem 6260 Skodje Norway REPRESENTATIVE OF PLESNER SVANE GRØNBORG THE APPLICANT Amerika Plads Copenhagen Ø Denmark HOLDER Hong Zhang Flat 101, Unit 3, 7/F, No. 13 Donghai Zhong Road Shinan District, Qingdao City Shandong Province China REPRESENTATIVE OF Johann Schlüter THE HOLDER Højbro Plads Copenhagen Denmark Avenida de Europa, 4 Apartado de Correos 77 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Peter Rodinger (member) and Eva Udovc (member) took the following decision on 12/02/08: 1. The registered Community design No is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The registered Community design No (hereinafter: the RCD ) has been registered in the name of the Holder with the date of filing of 15/05/06. In the RCD, the indication of products reads infant highchairs and the design is represented in the 5 following views (published at ): (2) On 02/07/07 the Applicant filed an application for a declaration of invalidity (hereinafter: the Application ). The fee for the Application was paid by current account with affect of 02/07/07. (3) The Applicant requests the invalidation of the RCD based on Article 25(1)(b), (e) and (f) CDR. More specifically, the RCD is claimed to lack novelty and 2

3 individual character; it is claimed to constitute unauthorised use of a distinctive sign as well as an unauthorised use of a work protected under the copyright law of a member state. (4) The Applicant provides inter alia the following document: - A copy of the Danish patent No B titled adjustable chair, especially dining table chair (in the following: D1) and an English translation thereof. The patent application has been published on 27/07/1983 and the patent specification was printed on 08/10/1990. The specification includes the following five figures (in the following the prior design ): (5) The Applicant claimed that the RCD does not posses novelty and individual character. He added that the Tripp Trapp chair is protected by the Danish copyright legislation as a work of applied art and constitutes a distinctive sign in the meaning of Article 25(1)(e) CDR. The Contested Design is to be declared invalid as it constitutes unauthorised use of this distinctive sign. Further, he contended that Contested Community Design is to be declared invalid as the design constitutes an unauthorised use of a work protected under the copyright law of a member state. 3

4 (6) On 30/08/07 the Holder was notified of the Application and invited to submit his observations. In his reply the Holder argued that the present Community Design is not identical to the Applicant s design, since the differences between the two designs are material and that the overall impression which the Applicant s Tripp-Trapp chair produces on the informed user is characterised by the straight lines, whereas the Design Holder s highchair produces on the informed user an overall impression characterised by its curved lines and the non-stringent appearance. Moreover, the Holder claimed that since numerous features of appearance of a highchair are dictated by their technical functions, and are, thus, excluded from independent design protection, and since such technical features moreover imply limitations to the freedom of the Designer when designing a new chair, the necessary technical features of a highchair must be given less weight in the assessment of the individual character of the Community Design Holder s highchair design. (7) As regards the informed user, the Holder explains that he is familiar with the design of highchairs and their variety on the marketplace. He is aware that the degree of freedom of a designer concerned with highchairs is limited by their technical function in so far as the highchair must be stable and allow safe sitting of the small child at the dinner table. In support for his explanations, the holder provides several examples of previously registered Community designs concerning highchairs, inter alias the registered Community designs No and , including the following views, respectively: (8) Concerning Article 25(1)(e) the Holder contends that a copyright is not a distinctive sign within the frames of Art. 25(1)(e) but is rather covered by Art. 25(1)(f). He claims that the differences of the chair, and the differences of the overall impression produced by said chairs [ ], excluding the features of said chairs which are dictated by their technical function, and taking into account the freedom of the Designer, make it entirely clear that the Community Design Holder s chair does not constitute any use of the alleged copyright protected work of the Applicant. (9) On 12/11/07 the Office informed both parties that the written proceedings were closed and that a decision concerning the invalidity would be taken. 4

5 (10) For further details to the facts, evidence and arguments submitted by the Applicant and the Holder, reference is made to the documents on file. II. GROUNDS OF THE DECISION A. Admissibility (11) The indication of the grounds for invalidity on the form of the Office is a statement of the grounds on which the Application is based in the meaning of Art. 28(1)(b)(i) CDIR 1. Furthermore, the Application complies with Art. 28(1)(b)(vi) CDIR, since the attachment contains an indication of the facts, evidence and arguments submitted in support of those grounds. The other requirements of Art. 28(1) CDIR are fulfilled as well. The Application is admissible. B. Substantiation B.1 Disclosure (12) D1 is a copy of a patent specification which has been published by the Danish Patent Office prior to the filing date of the contested RCD and therefore its contents have been made available to the public in the meaning of Article 7(1) CDR. B.2 Novelty (13) 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. (14) The RCD and the design of D1 both concern highchairs. They both are characterized by basic structures in the shape of an acute angular L and independently horizontally and vertically adjustable seats and foot plates which are fitted into the basic structure like steps in a ladder. Transverse bars are fixed between the two L shaped legs. Furthermore, the two designs are of almost identical proportions. The two designs differ in the following aspects: The legs in the RCD are curved to the back in the top half, to the front in the bottom half and upwards at the back part of the leg base and have rounded edges, whereas in the prior design the legs and their bases are straight and have sharp edges. The RCD has a transverse brace at the lower edge of the L-shaped leg, whereas the prior design does not have it. The back of the RCD includes a rounded upper extension whereas the back of the prior design has straight borders. The RCD includes a front bar with a strap, which is not very clearly depicted in the prior design, where such a front bar is only shown from a lateral view in figure 2. The front bar in the RCD is curved and rounded to the front, wherein the front bar in the prior design appears to be straight in its side view. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs 5

6 (15) Due to the above mentioned differences, the prior design and the RCD are not identical. D1 does not form an obstacle to the novelty of the RCD. B.3 Individual character (16) A design has individual character if the overall impression it produces on the informed user differs from the overall impression produces on such a user by any prior design which has been made available to the public. (17) As correctly explained by the Holder, the informed user is familiar with the design of highchairs and their variety on the marketplace. He is also used to deal with situations where children need to be sitting at tables in a safe manner. He is aware that the degree of freedom of a designer concerned with highchairs is limited by their technical function which consists in that a highchair must be stable and allow safe sitting of a small child at the table. The informed user is furthermore aware of the need to adjust the seat and the foot plate to the size of the child. He also knows that children can be put on such chairs in a relatively easy manner. The examples of prior designs of highchairs given by the Holder demonstrate that despite these technical constrains there is still a large degree of freedom for designers of highchairs. In particular, there is no need for using a characteristic L-shaped structure which characterizes the prior design. (18) As rightfully observed by the Applicant, the characteristic features of the L- shaped structure and the ladder-like insertion of the seat and foot plates are identical in the prior design and the RCD. The modifications of the RCD with respect to the prior design are limited to the addition of a rounded front bar in comparison to a straight front bar in the side view of the prior design, and to the rounding of edges which do not change the basic design of the chair. When considering that the freedom of the designer in developing this type of the highchair is almost unlimited and that there is no need for using the L- shaped structure of the chair, these modifications in the RCD do not render its overall impression different from the overall impression of the prior design. (19) Therefore, both designs produce the same overall impression on the informed user. (20) The RCD does not fulfil the requirements of individual character in the meaning of Art. 6 CDR. C. Conclusion (21) The RCD is to be declared invalid on the ground of Article 25(1)(b) CDR due to lack of individual character. For this reason there is no need to take a decision on the other grounds of invalidity claimed by the Applicant. 6

7 III. COSTS (22) Pursuant to Article 70(1) CDR and Art. 79(1) CDIR, the Holder bears the fees and costs of the Applicant. IV. RIGHT TO APPEAL (23) 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 this 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 Martin Schlötelburg Peter Rodinger Eva Udovc 7