OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION. of the Third Board of Appeal of 26 September 2012

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) The Boards of Appeal DECISION of the Third Board of Appeal of 26 September 2012 In Case R 2453/ SENZ Technologies B.V. Gerard Kool Mijnbouwstraat 120 NL-2628 RX Delft The Netherlands RCD Proprietor / Appellant represented by ARNOLD & SIEDSMA, Sweelinckplein 1, NL-2517 GK, Den Haag, The Netherlands v Impliva B.V. René Valkhoff Herengracht 122 NL-1015 BT Amsterdam The Netherlands Invalidity Applicant / Respondent represented by VAN DER STEENHOVEN ADVOCATEN, Herengracht , NL-1017 CJ, Amsterdam, The Netherlands APPEAL relating to Invalidity Proceedings No (registered Community design No ) THE THIRD BOARD OF APPEAL composed of Th. M. Margellos (Chairperson), G. Humphreys (Rapporteur) and C. Rusconi (Member) Registrar: P. López Fernández de Corres gives the following Language of the case: English

2 2 Decision Summary of the facts 1 By an application filed on 25 August 2006, ( the RCD proprietor ) sought to register the following design

3 3 2 The design was published in the Community Designs Bulletin No 118/2006 of 17 October On 16 July 2009 Impliva B.V. ( the invalidity applicant ) filed an application for a declaration of invalidity against the contested RCD based on Articles 4 to 9 CDR. 4 In the substantiation of the application, the invalidity applicant argued that the contested RCD has no individual character, as it produces the same overall impression on the informed user as a number of identically or similarly shaped umbrellas that have been the subject of patents and registered designs, made available to the public prior to the RCD and including US patent 5,505,221. This design was registered on 9 April 2007 and is represented as follows: 5 On 18 October 2010, the Invalidity Division issued a decision ( the contested decision ) upholding the application for a declaration of invalidity and ordering the RCD proprietor to bear the costs. The arguments of the contested decision can be summarised as follows: Disclosure The publication of US patent 5,505,221 is evidence of disclosure in the meaning of Article 7(1) CDR. Such publication is available over the Internet and could have been searched by EU interested circles.

4 4 Novelty The contested RCD and the earlier patent differ in the spacing and angles between the ribs as well as the use of bent and straight ribs. Thus, the contested RCD is not identical to the prior patent, and that patent does not therefore present an obstacle to the novelty of the RCD within the meaning of Article 5 CDR. Individual character The informed user is familiar with the basic feature of umbrellas and of their existing design structures and the various configurations available on the market. The informed user is also aware that all umbrellas consist of a canopy, rod and handle and therefore that the freedom of the designer is limited. The informed user is also attentive to features of the appearance that escape technical constraints and result from creative activity. From the user s perspective, the shape of the canopy is the dominant feature in the umbrella design, due to its size as compared with other features. Most umbrella canopies are round and differ in the colours they use. An asymmetrically shaped umbrella will not be familiar to the user and therefore the overall impression will be dominated by the asymmetric shape of the canopy. Contemplating the umbrellas of the RCD and the prior design, the informed user may realize that in both designs the canopies are spanned by 8 ribs symmetrically arranged around the tip of the rod. It may also be appreciated that both designs comprise straight handles with which the umbrellas are held. The actual spacing and forms (straight or bent) of the ribs will be of minor consideration for the informed user. Therefore, the overall impression produced on the informed user by the umbrella of the RCD is the same as the overall impression produced by the prior design. Conclusion The RCD is declared invalid on the ground of Article 25(1)(b) CDR and the fees and costs of the applicant are to be borne by the RCD proprietor. 6 On 14 December 2010, the RCD proprietor filed an appeal. The statement of grounds was received on 18 February The invalidity applicant s observations were filed on 21 July 2011, to which the RCD proprietor responded on 7 October The invalidity applicant filed further observations to the RCD proprietor s response on 28 December Submissions and arguments of the parties 9 The arguments of the RCD proprietor can be summarised as follows: There are national proceedings between the parties involving the same design and, during the preliminary injunction proceedings, the judge considered the umbrella to be new and have individual character.

5 5 Its umbrella has a trendy and tight appearance and stands out from the crowd. It does away with the classic roundish shape. A publication in a patent register outside the EU, which deals only with technical solutions and not the appearance of the product, is not an event that could be known to the circles concerned operating in the EU. Those circles would search design registers. The Invalidity Division expressly recognizes that an objection based on lack of novelty cannot be successfully maintained. The Invalidity Division was wrong to state that the overall impression of an umbrella design is determined by the shape of the canopy. If that were so, no RCDs for umbrellas could be registered. Instead, the informed user is familiar with umbrellas consisting of a canopy with a nonconforming shape and will therefore be attentive to all features of the appearance of an umbrella. The fact that most umbrellas are round means that the informed user is more aware and is attracted or more attentive to other elements of the umbrella and the specific shape of the spherical canopy. In fact, the number of ribs used, the actual spacing, the length and forms of the ribs, as well as the shape of the canopy panels determine the shape of the umbrella when opened and contribute to its overall impression. Thus, the specific asymmetrical shape of the design (with no point symmetry), the fact the ribs are straight and have different lengths on the front and back side of the umbrella, with different panel surfaces, are factors that give a distinct individual impression. The flat top cannot be ignored and the overall design is a prize-winning one. Most umbrellas have identical halves, including the RCD and US patent. However, the RCD is not point symmetric whereas the US patented umbrella is. The US patent creates an asymmetric effect by moving the rod from the point of symmetry whereas it is the canopy itself in the RCD which is asymmetric (with back and front sides of differing length). Also, the rib placement and length in both umbrellas is different as well as having differently shaped rods. The RCD also has a flat top, characteristic eye savers and a distinctly different handle. The differences are clearly visible to anyone, even someone not having a technical background. In fact, the USPTO accepted both designs on its register and a priority has been claimed from that registration. The changed length of the ribs is a logical effect of the deviation of the shaft from the centre of the umbrella to approximately 1/3 of the umbrella. Informed users will notice details (for the reasons already given above). The fact that the outer shape has a function does not mean the overall design cannot be protected. It is the designer s job to create a useful (technically perfect) product with an appealing appearance. The design is not solely dictated by technical function (see R211/2008-3, paragraph 32). Some technical features are necessary to withstand wind force greater than four Beaufort. There are many ways to have a wing profile. The citations from the

6 6 national patent proceedings made by the invalidity applicant are only partial and do not reflect the true picture. The shape of the canopy itself cannot bring about a technical effect. With regard to the prior art invoked by the invalidity applicant, the RCD proprietor repeats all the arguments previously made before the Invalidity Division. In addition, it points out that the article regarding the Iten design is undated and in German. The photo is also undated. There is no admissible evidence that the umbrella in the article and the photo are the same. The exhibits are inadmissible. It is also untrue that Mr Iten has held the RCD proprietor accountable for infringement. 10 In its observations, the invalidity applicant essentially argued on the following grounds: The shape of the canopy is solely dictated by the need to achieve a specific technical function. This argument has already been raised in the context of parallel national proceedings between the parties. The RCD proprietor also has a Dutch patent for its umbrella, which the Dutch Patent Office has advised is invalid due to lack of novelty, lack of inventive step and lack of clarity. A cancellation action against this patent is currently pending in the Netherlands. The RCD proprietor s umbrella is more or less based on the technology of all foldable umbrellas on the market. The RCD proprietor contradicts itself by stating that both its umbrellas have identical distinctive features and then claiming it has created two very different umbrellas. It also disregards the effect of foldability and hinged ribs, giving the canopy a spherical appearance. By acknowledging that the design is determined by rib arrangement, placement, and length as well as the shape of the canopy, the RCD proprietor acknowledges the analysis of the Invalidity Division. Also, the RCD proprietor concentrates on minor details such as the shape of eye-savers, the oval shape of the rod, etc. while disregarding the fact that in one of the designs the ribs are bent. It also considers the designs primarily from a top view. Yet, in reality neither the tip on the top nor the shape of the handle have much influence on the appearance of the umbrella and are in any case part of the existing corpus (see Exhibits 1-10E and 1-17). Moreover, while an unsmooth rod is common for a telescopic umbrella, a smooth rod is equally common for a non-telescopic umbrella. In considering overall impression, the RCD proprietor expects the informed user to be painstaking in his or her analysis of what is just a household item. No explanation is given as to why this should be so. Most canopies are round but there are also some asymmetric canopy umbrellas on the market. The user is not very familiar with these latter umbrellas and thus the overall impression will be dominated by the

7 7 asymmetrical shape. Thus actual spacing and forms (straight or bent) of the ribs will be a minor consideration. In reality, the umbrella designs have the same asymmetric canopy shape; the same number of ribs; the same asymmetrical arrangement of the ribs; the same straight rod and the same straight handle and the same flat top. The USPTO database is easily accessible and holds both patents and designs. The umbrella patent can also be found on the EPO, the UKPTO and DPMA databases. The RCD proprietor has itself filed model and patent applications in the US (see Exhibit S-8). Therefore the disclosure could reasonably have become known to the relevant circles in the EU. In any event, the prior art concerns multiple citations and not just the US patent. The other umbrella designs on the Register were probably registered because of the print on the canopies. In any event, the registration of other umbrella designs is not relevant to these proceedings. The contested decision was correct in considering all the features but concluding that the asymmetric canopy is the dominant feature. The RCD proprietor is over detailed in specific features but fails to explain adequately why the overall impression will be different. Instead, the RCD proprietor engages in a detailed goniometric analysis that will never be entered into by an informed user. The informed user will not perceive a notable difference between the RCD and the US patent. Moreover, the eye savers and the flat top play no role in the overall individual character. Minimal differences in the form and placing of the ribs do not alter the overall impression (as opposed to details) in the comparison with the prior art. Thus, the contested design lacks individual character. The acceptance of a US patent design for the same design as the RCD is irrelevant as the USPTO applies different laws and rules. Moreover, the USPTO design is not absolutely identical to the one registered in the EU. The difference in the shapes of the canopies when comparing Exhibit 1-5B and 1-5A is negligible. The angle of the RCD s rod is not a feature, since it can be obtained by tilting the umbrella to one side. The RCD proprietor had made a fictitious representation of the rod s angle in Exhibit 9. The depiction made is off by 22. Ronald Iten designed a prize-winning, eight-ribbed asymmetrical canopy design in the early 1990s and has held the RCD proprietor liable for infringement by selling the umbrellas that are registered as an RCD. It was shown in Elle magazine and was invoiced (Exhibits 1-18 and 1-9). The additional information (an invoice and a quotation) shows that the article and photo date from Iten s umbrella has a striking resemblance to the RCD. The only differences are the tip, the eye savers and the handle. These should be disregarded when considering the overall appearance.

8 8 Exhibits 1-10C and1-10d concern a patent for an umbrella from 1962 and 1972 respectively. It is substantially the same as the RCD (apart from some minor differences). The RCD proprietor s design has a technically determined appearance. Its shape is for the umbrella to direct itself towards the wind when hit by a gust and thus contributes to its resistance to strong winds. The canopy keeps the user dry, the rod and handle hold the umbrella and the ribs support the canopy fabric. The RCD proprietor confirmed that its umbrella s appearance is dictated by technical requirements in its observations before the Invalidity Division. It is first and foremost functional and technical. This has come to the fore in the Dutch patent cancellation proceedings. Even Mr Hogendoorn, the umbrella s designer, states that the shape resulted from fluid dynamics (see Quest magazine, Exhibit I-6). If the canopy is disregarded while being the design s most prominent feature nothing protectable remains. Reasons 11 The appeal complies with Articles 55 to 57 CDR and Article 34(1)(c) and (2) CDIR. It is, therefore, admissible. Preliminary remarks 12 The Invalidity Division analysed whether the contested RCD lacks novelty and/or individual character with respect to US patent 5,505,221 (this being one of the items of prior art invoked by the invalidity applicant). While the contested RCD was found to be novel, it was held to lack the necessary individual character. 13 Although a number of items of prior art have been relied upon in these proceedings, the Board will commence by considering the above-mentioned US patent and will confine itself, initially, to examining the issue of the individual character of the contested RCD. Only if such proves necessary will the Board enter into an analysis of other items of prior art and the other grounds of invalidity claimed. Legislative requirements 14 According to Articles 6 and 7 CDR, it needs to be ascertained whether, prior to the filing date of the contested Community design, a design that produces the same overall impression on the informed user, had been made available to the public. A design is deemed to have been made available to the public if it has been published, exhibited, used in trade or otherwise disclosed, 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. 15 Individual character is defined by Article 6 CDR: 1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:

9 9 (a) (b) in the case of a registered Community design, before the date of filing of the application for registration or, if a priority is claimed, the date of priority. 2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration. 16 The issue therefore is whether the RCD and the US patent produce the same overall impression on the informed user, taking into consideration the designer s degree of freedom in developing the design (lack of individual character under Article 6 CDR). Disclosure 17 The RCD proprietor has offered no convincing arguments why the Invalidity Division was wrong to hold that publication in the USPTO s online register of a US patent would be an event which could be known to the interested circles in the EU. It has simply alleged that it is not customary for such circles to consult third country patent registers. However, this argument cannot be accepted. First, the USPTO s register is available online and may be searched free of charge. Second, in the US designs are known as design patents and are thus a sub-category of patents. Third, it would be imprudent for designers seeking to register designs in the EU not to check for the existence of prior art in one of the world s major IP registers (namely, the USPTO), given the almost legendary reputation of the United States as a centre of innovation and design. Finally, the close trading relations between the United States and the European Union make it highly improbably that EU interested circles would not be aware of developments on their premier trading partner s soil. Accordingly, the Board confirms the contested decision s finding that the US patent was disclosed in the EU. Visible features of the design during normal use 18 The invalidity applicant argues that the RCD proprietor is wrong to insist on differences between the designs that depend on a top view since, in normal use, those differences would not have much influence on the overall impression of the designs. 19 The Board agrees that during normal use an umbrella is opened so that the user s head is below the canopy. The user would only see the folded top side of the canopy before s/he opened it. The top side of the opened canopy would only be seen if the umbrella were placed on the ground. However, that is not a normal way of using such a product. None the less, some of the top side lateral features would be visible as the umbrella was being opened. Accordingly, the overall impression will rather be principally determined by the under and lateral sides of the umbrella design (see judgment of 9 September 2011, T-10/08, Internal combustion engine [2011] not yet published, paragraph 22). The informed user

10 10 20 The informed user is neither a designer nor a technical expert (judgment of 20 June 2010, T-153/08, Communication Equipment, paragraphs 47-48). Neither is he a manufacturer (judgment of 9 September 2011, T-10/08, Combustion Engine, paragraphs 25-27). However, s/he may include the final users of products in which the design is incorporated (judgment of 20 October 2011, C-281/10P, Metal Rappers, paragraph 54). Therefore, an informed user is a person having some awareness of existing designs in the sector concerned, without necessarily knowing which aspects of that product are dictated by technical function (judgment of 22 June 2010, T-153/08, Communication equipment, paragraphs 47-48). 21 In the present case, the informed user of an umbrella is someone wishing to use such an umbrella, who, for example, needs to purchase one and who has become informed on the subject. The umbrella will be used in accordance with its purpose, which is to protect the user from rain and inclement weather. Due to regular use of umbrellas, the informed user knows the various models and the features which they normally have. Furthermore, s/he will show a relatively high degree of attention when s/he is faced with the products concerned. The designer s degree of freedom 22 In the assessment of the individual character of the designs at issue, its visible features and therefore the overall impression on the informed user of the design, the designer s degree of freedom in developing the challenged design must be taken into account (see, to that effect, Representation of a Circular Promotional Item, paragraph 72). 23 As the Court has recognised in its decisions, the designer s degree of freedom in developing his/her design is established, inter alia, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (Representation of a Circular Promotional Item, paragraph 67). 24 Therefore, the greater the designer s freedom in developing the challenged design, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Conversely, the more the designer s freedom in developing the challenged design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs which do not have significant differences produce the same overall impression on an informed user. 25 In the present case, the Invalidity Division held that the freedom of the designer is limited because all umbrellas consist of a canopy, rod and handle. 26 It is true that most umbrellas have a canopy, rod and handle. In that sense design freedom is somewhat limited. It is also true that the majority of umbrellas are round. However, differently-shaped umbrellas do exist (as the corpus of prior art

11 11 shows), although it has not been demonstrated that the informed user of umbrellas will be so familiar with these more unusual umbrellas. Nonetheless, the fact that such umbrellas exist shows that there is some degree of design freedom in the overall shape or size of the canopy. Moreover, the colour and patterns of the canopy, as well as the number of ribs and their arrangement are subject to considerable design freedom. Handle styles are also subject to some variation, although their primary function is to enable the umbrella to be held. Eye savers are first and foremost a safety feature, placed at the end of the ribs to protect the eyes of anyone with whom the umbrella inadvertently comes into contact. Overall impression of the conflicting designs 27 The question is whether the contested design and the earlier patent produce the same overall impression on the informed user, taking into consideration the designer s degree of freedom in developing the design. 28 The Board agrees with the contested decision that the overall impression produced on the informed user is principally determined by the general appearance of the canopy, which will be marked by the shape and size rather than a multitude of technical details (see Combustion Engine judgment, paragraph 40). Thus, the RCD proprietor s arguments on differences between the patent and the design based on rib-angle degrees, lack of point symmetry and other technical details cannot be successful. Instead the general asymmetrical beak-like elongated appearance of the front lateral portion of the umbrellas (viz.: ) will contribute to giving both umbrellas the same overall appearance, along with the fact that both umbrellas have eight, evenly-spaced ribs, which will be visible from the underside. 29 To the extent that the umbrellas may be viewed from the top, they are not significantly different:

12 12 and. Indeed, the top views show the similar rib distribution that will be visible from underneath and the similar canopy proportions or spacing. The precise curves of the ribs of each umbrella may also be less apparent to the informed user, when viewed from underneath or from the side. In any event, the design proprietor does not deny that the rib angles and curvatures are designed to withstand strong winds. Differences between the umbrellas therefore also depend on aerodynamic considerations rather than pure aesthetic design. They should therefore not be given undue weight in the overall impression on the informed user. Similarly, the eye savers of the RCD are first and foremost safety features. To summarize:, for these types of product designs, an informed user will be guided by basic structures alone and not by differences in the details, which do not produce different overall impressions on her/him (see Combustion Engine judgment, cited above, paragraph 40). This is true despite the relatively high degree of attention of the informed user when using the product and the reasonable degree of design freedom. The basic structures of this rather unusual type of umbrella give substantially the same overall impression. 30 Finally, the fact that some of the views of the contested RCD show a black canopy whereas the earlier patent is a simple diagram is not a significant difference (see, by analogy, judgment of 14 June 2011, T-68/10, Watches, paragraph 67). 31 In light of the foregoing, the Board concludes that the contested RCD lacks individual character because the overall impression produced on an informed user by the contested RCD does not differ from that produced by the earlier design. 32 The fact that the USPTO may have taken a different view on the right of both the earlier patent and the design coexisting on the register is not a compelling reason for the Board to uphold the appeal. US patent design laws are rather different to the EU design regulations and both systems apply different case-law. 33 Since the contested RCD has been deemed to be invalid on the ground of lack of individual character, there is no need for the Board to consider any of the other grounds of invalidity put forward by the invalidity applicant.

13 13 Conclusion 34 The appeal is dismissed. Costs 35 Since the appeal has been unsuccessful, the RCD proprietor must be ordered to bear the fees and costs incurred by the invalidity applicant, in accordance with Article 70(1) CDR.

14 14 Order On those grounds, THE BOARD hereby: 1. Dismisses the appeal; 2. Orders the RCD proprietor to bear the fees and costs incurred by the invalidity applicant. Th. M. Margellos G. Humphreys C. Rusconi Registrar: P. López Fernández de Corres