OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DESIGNS DEPARTMENT- INVALIDITY DIVISION DECISION OF THE INVALIDITY DIVISION OF 17/12/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 000009398 COMMUNITY DESIGN 002222463-0001 LANGUAGE OF PROCEEDINGS English APPLICANT Niwot 80503 Colorado United States of America Crocs, Inc. 7477 East Dry Creek Parkway REPRESENTATIVE OF THE APPLICANT Field Fisher Waterhouse Llp IP Protection Department 8 th Floor, Riverbank House 2 Swan Lane London EC4R 3TT United Kingdom HOLDER Orsosandles Lda Portugal Travessa da Gaeta nº 29 4525-527 Vila Maior REPRESENTATIVE OF THE HOLDER Răzvan Dincă bd. Mihail Kogălniceanu, nr.51, ap. 6, 5th District 050104 Bucharest Romania Avenida de Europa, 4 Apartado de Correos 77 E - 03080 Alicante Spain Tel. +34 96 513 9100 Fax +34 96 513 1344
The Invalidity Division, composed of Alvaro Sesma Merino (rapporteur), Michele M. Benedetti - Aloisi (member) and Wolfgang Schramek (member) took the following decision on /12/2014: 1. The Community design No. 002222463-0001 is declared invalid. 2. The Holder shall bear the fee and costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design nº 002222463-0001 (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 17/04/2013. In the RCD, the indication of products reads shoes. The design was published in the Community Designs Bulletin in the following views: (https://oami.europa.eu/esearch/#details/designs/002222463-0001) (2) On 06/02/2014, the Applicant filed an application for a declaration of invalidity (in the following: the Application ) contesting the validity of the RCD. The fee for the Application was paid by a current account with the Office. (3) The Applicant requests a declaration of invalidity of the RCD on the ground of Article 25(1)(e) of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). (4) As evidence, the Applicant submitted, inter alia, an extract of the database of the Swedish Office for the Swedish trade mark Registration No 400 514 which is registered since 16/01/2009 in the name of the Applicant. The sign of the earlier mark is reproduced below: 2
It is registered for goods in class 25 of the Nice Classification, namely the following: Class 25: Footwear. (5) In the reasoned statement, the Applicant argues that the RCD makes unauthorized use of the earlier Swedish trade mark and hence must be declared invalid on the ground of Article 25(1)(e) CDR and the relevant Swedish Law. The relevant Swedish national trade mark Law invoked is the Swedish Trade Marks Act ( the Act ) and in particular Article 10(2) which deals with infringement. Furthermore Article 25(1) (c) (d) and (f) CDR is invoked by the applicant. (6) The Holder did not submit any observations in reply whatsoever. (7) For further details to the facts, evidence and arguments submitted by the parties, 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 in the meaning of Article 28(1)(b)(i) CDIR 1. Furthermore, the Application complies with Article 28(1)(b)(vi) CDIR, since the Application contains an indication of the facts, evidence and arguments submitted in support of those grounds. The other requirements of Article 28(1) CDIR are fulfilled as well. The Application is therefore admissible. B. Substantiation B.1 Evidence (9) The Applicant as the proprietor of the earlier Swedish trade mark submitted as evidence an extract of the official database of the Swedish Patent and Trade Mark Office. B.2 Distinctive Sign (10) Article 25(1)(e) CDR establishes that a Community design may be declared invalid if a distinctive sign is used in a subsequent design, and the Community law or the law of the Member States governing that sign confers on the right holder of the sign the right to prohibit such use. 1 Commission Regulation (EC) No. 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 3
(11) Where a sign is registered as a trade mark and the trade mark is in force, it is presumed that it is a distinctive sign within the meaning of Article 25(1)(e) CDR. Therefore the earlier Swedish trade mark is deemed to be an earlier right within the meaning of Article 25(1)(e) CDR. B.3 Right to prohibit use (12) The notion of use in a subsequent design does not necessarily presuppose a full and detailed reproduction of the earlier distinctive sign in a subsequent Community design. Even though the Community design may lack certain features of the earlier distinctive sign or may have different additional features, this may constitute use of that sign, particularly where the omitted or added features are of secondary importance and are unlikely to be noticed by the relevant public. It is enough that the Community design and the earlier distinctive sign be similar (judgment of 12/05/2010, T-148/08, Instrument for writing, para. 50-52; decision of 09/08/2011, R 1838/2010-3 Instrument for writing, para. 43). (13) Article 10(2) of the Swedish Trade Mark Act states Exclusive rights in a trade symbol pursuant to Articles 6 8 imply that unless having the proprietor s consent no one but the proprietor is entitled to use in the course of trade a symbol which is identical with or similar to the trade symbol, for identical or similar goods or services, if there exists a likelihood of association between the user of the symbol and the proprietor of the symbol. (14) Thus, under Swedish law the owner of an earlier registered trade mark is entitled to prevent use of a sign by a third party if: - the later sign is used in relation to goods and/or services that are identical with or similar to the owner s goods and/or services and - the later is identical with or similar to the owner s mark - there exists a likelihood of confusion as a result of such use by the third party (including a likelihood of association) Comparison of goods (15) The goods covered by the earlier mark is footwear. Footwear covers shoes claimed by the RCD. Thus, the goods are identical. Comparison of signs: (16) Phonetically the signs cannot be pronounced as they are purely figurative not containing any verbal elements. (17) Conceptually both signs consist of a representation of footwear with holes, to that extent the signs are conceptually identical. (18) Visually the signs are similar. The contested RCD has a series of holes on the upper which are equivalent to those of the prior trade mark. The inner sole of the contested RCD has a dimpled surface which is substantially identical both in its nature and pattern to the inner sole surface as shown in the prior trade mark. The contested RCD has a strap which is a solid band fixed to the shoe by flat circular fasteners. Said strap and fasteners are equivalent to the strap and fasteners shown in the prior trade mark. (19) Taking into account the abovementioned conceptual and visual coincidences, it is considered that the signs under comparison are similar. 4
Likelihood of confusion (20) The contested RCD bears an unmistakable resemblance to the prior trade mark and although there are minor differences, these do not override the overall similar impression. There is likelihood of confusion consumers may well believe that a product (footwear) manufactured from the contested RCD comes from the applicant or an economically linked undertaking. (21) Thus, all requirement under Swedish Law are complied with; the applicant can prohibit the use of the contested design on the basis of the claimed earlier mark. C. Conclusion (22) The contested RCD must be declared invalid on the ground of Article 25(1)(e) CDR because on the basis of the earlier invoked Swedish trade mark in accordance with the Swedish Law the owner of the earlier mark can prohibit the use of the contested design. (23) It has also to be noted obiter dicta that the applicant is owner of a Community trade mark No 6 543 516 (CTM) which claims protection for the same sign as the earlier invoked Swedish trade mark and for the same goods. In accordance with article 9(1) (b) of the CTMR the owner of said CTM can also prohibit the use of the challenged design if because of its identity with or similarity to the earlier CTM, and the identity or similarity of the goods or services covered by the CTM and the design there exists a likelihood of confusion on the part of the public. Said CTM has not been used as basis for declaring invalid the RCD in the present decision by the present Invalidity Division as a cancellation action is pending against the earlier invoked CTM. However it is worthwhile to mention that the cancellation action against the earlier CTM No 6 543 516 has been rejected recently on 28/10/2014 by the Cancellation Division dealing with trademarks. Thus, in case the decision becomes final the applicant would also succeed on the ground of the mentioned earlier CTM in accordance with article 25(1) (e) CDR in conjunction with Article 9(1) (b) of the CTMR, as the reasons given as regards the earlier invoked Swedish trade mark apply mutatis mutandis to the earlier CTM, which attribute to the holder of the CTM an equivalent ius prohibendi against the use of the challenged RCD. (24) The request is based also on Article 25(1) (c) (d) (f) and (g) CDR. As the RCD must be declared invalid on the ground of Article 25(1)(e) CDR for reasons of procedural economy it is not necessary to analyze the other grounds invoked. II. COSTS (25) Pursuant to Article 70(1) CDR and Art. 79(1) CDIR, the Holder bears the fee and costs of the Applicant. (26) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750 Euro, composed of 400 Euro for the costs of representation and 350 Euro for the reimbursement of the invalidity fee. IV. RIGHT TO APPEAL (27) 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 (Art. 57 CDR). 5
THE INVALIDITY DIVISION Alvaro Sesma Merino Michele M. Benedetti - Aloisi Wolfgang Schramek 6