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 26/05/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9288 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT PIAGGIO & C. S.P.A. V.Le Rinaldo Piaggio 25 Pontedera (PI) Italy REPRESENTATIVE OF THE APPLICANT JACOBACCI & PARTNERS S.p.A. Piazza della Vittoria, 11 I Brescia Italy HOLDER Lina Meng No. 20 Chaoyuan Road, Huangyan West Industrial Zone, Taizhou Zhejiang Taizhou China REPRESENTATIVE OF THE HOLDER LONDON VOSON INTELLECTUAL PROPERTY SERVICE LIMITED 3rd Floor, 14 Hanover Street London W1S 1YH United Kingdom 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 26/05/2014: 1. Registered Community design No is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design No (hereinafter the RCD ) was registered in the name of the Holder with the date of filing of 04/08/2010. The RCD s indication of products reads motorcycles, and cycles and motorcycles. The design is represented in the following views: ( (2) On 06/11/2013, the Applicant filed a request for a declaration of invalidity (hereinafter the application ) contesting the validity of the RCD. The application fee was paid by current account with OHIM. (3) Using the Office application form, 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 Council Regulation (EC) No 6/2002 on Community designs (hereinafter CDR ). 2

3 (4) As evidence, the Applicant provides, inter alia, certified copies of: - the journal MOTOCICLISMO, issue 92, pages 286 to 289, published in May 2005, containing the following images of motorcycle Vespa LX (hereinafter the prior design ): 3

4 - the journal CITY-X, pages 64 and 66, undated, containing images of Vespa LX (see the first image) and of various motorcycles (see the second image): 4

5 (5) In the reasoned statement, the Applicant claims that the RCD lacks novelty and individual character with respect to the prior design and it should be declared invalid because an identical design of the motorcycle Vespa LX, as shown in the provided collection of images in moto-journals, had been made known to the public before the filing date of the RCD. The RCD and the prior design are identical. (6) The RCD Holder did not send any observations. (7) For further details of the facts, evidence and arguments submitted by the Applicant, 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) 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 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 met. The application is thus admissible. B. Substantiation B.1 Evidence (9) The prior design was published in the Italian moto-journal prior to the contested RCD s filing date, and hence was made available to the public within the meaning of Article 7(1) CDR. (10) The extracted pages of the CITY-X journal are also accepted as supporting evidence. Though undated, the year 2009 appears in the text accompanying the images. It is deemed that the products shown in the images were known to the public in at least in that year. B.2 Novelty (11) According to Article 5 CDR, an RCD lacks novelty when an identical design has been made available to the public prior to the RCD s filing date. Designs shall be deemed to be identical if their features differ only in immaterial details. (12) The RCD and the prior design relate both to motorcycles. They have at least the following features in common: - the contours of the chassis; - the shape and contours of the steering bar and its equipment such as the headlight, two back mirrors and the dashboard display; - the shape of the upholstered saddle; 5

6 - the shape of the back light; - the size of the wheels. (13) The RCD differs from the prior design in the following features: - the front chassis mask details, such as ventilation holes and the shape of side indication lights; - the shape of the rear indication lights; - the shape of the chrome back holder; - the engine and exhaust pipe cover; - the colour of the chassis and the saddle, - the wheel frames. (14) The indicated changes are not completely immaterial in the overall appearance of the RCD. Therefore, the prior design does not constitute an obstacle to the novelty of the RCD. B.3 Individual character (15) According to Article 6 CDR, an RCD lacks individual character if the overall impression produced on the informed user is the same as that produced on such a user by any design which has been made available to the public prior to the RCD s filing date or the priority date claimed. In assessing individual character of an RCD, the designer s degree of freedom in developing the design shall be taken into consideration. (16) The informed user, from whose perspective the test is performed, according to established case-law, is particularly 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 it is intended (see judgment of 09/09/2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (17) In the present case, the informed user is aware of motorcycle designs available on the market before the filing date of the contested RCD. The informed user is familiar with the basic features of the products concerned: Motorcycles usually have one wheel in front and one in back, a front mask with the steering bar, lights and mirrors, a saddle, an engine covering, an exhaust pipe and a licence plate holder. The designer s freedom in developing a design of a motorcycle is limited as regards the presence of these features and components, normative for the performance of the vehicle on public roads. However, their layout and shape, and the addition or omission of other optional elements is a matter at the designer s discretion. (18) Comparing the contours, shape and the main components present both in the RCD and the prior design, they are deemed to be identical or almost identical. The RCD differs in small details: the shape of the indication lights, the shape of the back holder and in the design of the wheel frames. These features, however, are not of such a character as to alter substantially the product s appearance. The similarities in the RCD and the prior design prevail. The designer of the RCD did not necessarily have to copy the prior design s characteristic features, such as the contours of the chassis and the components. They had enough freedom to develop the product to make it look different. This is evident from the examples of neo-retro motorcycles published in the CITY-X journal before the RCD s filing date (see the evidence, paragraph 4). The Applicant also provides an example of 6

7 the product related to the prior design made in different colour combinations, including the colour combination corresponding to the colours in which the Community design is registered (see idem). For this reason, the colour combination cannot be considered as bestowing individual character on the RCD either. (19) From the informed user s perspective, both designs produce the same overall impression. Protection of designs by virtue of registration in the Community Register is provided for new and innovative design solutions. Designs already available to the public do not meet the registration criteria. C. Conclusion (20) The RCD is declared invalid on the grounds of Article 25(1)(b) CDR in conjunction with Article 6 CDR, due to the lack of individual character. 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, 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 7