OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 18/06/2014.

Transcription

1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 18/06/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9234 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT REPRESENTATIVE OF APPLICANT JOINED APPLICANT REPRESENTATIVE OF THE JOINED APPLICANT HOLDER REPRESENTATIVE OF HOLDER International Edge, Inc. 79 Two Bridges Road Fairfield, New Jersey USA Bird & Bird AARPI 3, square Edouard VII Paris France Tristar Products (UK) Ltd 88 Crawford Street London, W1H 2EJ United Kingdom Field Fisher Waterhouse LLP Riverbank House 2 Swan Lane London EC4R 3TT United Kingdom Blue Gentian, LLC 223 Skylark Point Jupiter Florida USA WILSON GUNN 5th Floor Blackfriars House The Parsonage Manchester M3 2JA United Kingdom Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division, composed of Martin Schlötelburg (rapporteur), Jakub Pinkowski (member) and Natalie Pasinato (member) has taken the following decision on 18/06/2014: 1. The application for a declaration of invalidity of the registered Community design nº is rejected. 2. The Applicant shall bear the costs of the Holder. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design nº (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 02/08/2012. The indication of products reads hoses and the design is published in the Community Designs Bulletin with the following view: ( (2) On 02/08/2013, the Applicant filed a request for a declaration of invalidity (hereinafter the Application ) contesting the validity of the RCD. (3) Using the Office form for the application, the Applicant requests a declaration of invalidity on the ground that the RCD does not fulfil the requirements of Articles 4 to 9 of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ). (4) The Applicant claims that the contested RCD is invalid because it consists entirely of features solely dictated by their technical functions in the meaning of Article 8(1) CDR. According to the Applicant the designer of the hose of the contested RCD had no freedom in the development of the features of the appearance of the product. The hose is required to ensure extension and retraction in both length and circumference of the hose under the pressure of a liquid or gas. Therefore, in order to perform the function which enables the 2

3 hose to extend and retract under pressure, the material which covers the hose must be tightly bunched, in the retracted position. These technical constraints determine the features of the RCD. (5) Furthermore, the Applicant claims that the contested RCD lacks novelty and individual character in view of various prior designs. The informed user is particularly observant, has some awareness of the state of the art and uses the product in which the design is incorporated in accordance with the purpose of the product. The degree of freedom of a designer of hoses is limited since the required technical function dictated the shape and arrangement of the hose i.e. that it is tubular and of a certain length and circumference. The existence of connectors is necessary and expected by the informed user. (6) As evidence, the Applicant provides the following documents: - A promotional video explaining the function of an expendable hose. - A copy of the European Patent Application EP B2 ( EP ) for an expandable hose assembly, filed in the name of the Holder and published on 24/07/2012. In the summary of the invention of the EP it is explained that the hose automatically expands longitudinally and automatically expands laterally upon the application of a fluid pressure [ ] The hose includes an inner tube made from elastic material and an outer tube made from non-elastic material. [ ]. According to claim 1 the hose is characterized by an outer tube assembly extending about an outer surface of said inner member in an undulating state. - A copy of the US patent 4,394,861 for an outside air breathing system, published on 26/07/1983 with the following drawing: - A copy of the US patent 6,523,539 for a self-elongating oxygen hose for stowable aviation crew oxygen mask published on 25/02/2003 with the following drawing: 3

4 - A copy of the US patent 6,948,527 for a pressure-actuated linearly retractable and extendible hose published on 27/09/2005 with the following drawing: - A copy of the US patent 1,220,661 for a hose construction published on 27/03/1917 with the following drawing: - Print-outs from the internet page amazon.com showing offers for a garden hose of February (7) In response to the Application, the Holder argues that the features of RCD are not solely dictated by their technical functions. The hose of the EP is not to be necessarily equated with the hose of the RCD. The hose of the RCD is sold to consumers and hence the appearance needs to be such that the consumers find it aesthetically pleasing. The way, the folded configuration is put into effect 4

5 is chosen by a designer, in order to distinguish the hose from other expandable hoses. The Holder points to the US patents submitted by the Applicant which show different examples of expandable hoses including outer folded tubes expanding through internal pressures. According to the Holder, the examples demonstrate that the visual appearance of the bunching and folding of the hose is not solely dictated by technical function. A striated or cellular pattern on the design is also an important feature of the RCD and is clearly not dictated by technical function. The striated/cellular pattern is chosen by the designer in order to create a strong ornamental effect, and the freedom of choice for the designer to produce surface patterns on the hose is wide. The surface pattern of the hose of the RCD distinguishes it from the prior designs and for this reason the RCD has novelty and individual character. (8) 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 (9) 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. 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 thus admissible. B. Substantiation B.1 Subject-matter of the RCD (10) As the Holder correctly points out, the RCD is not to be equated with the EP. The subject-matter of the RCD and hence the subject-matter of the present invalidity proceedings - is the appearance of a product as specified in the view of the RCD. According to the indication of products of the RCD, the view shows the appearance of a hose. The features visible in the view are consistent with the indication of products. However, whether the hose of the RCD functions like the hose of the EP, namely automatically expands longitudinally and automatically expands laterally upon the application of a fluid pressure, is not visible in the view of the RCD and hence not part of the subject-matter of the RCD under examination. B.2 Technical Function (11) Article 8(1) CDR stipulates that a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical 5

6 function. According to the Invalidity Guidelines 1 the fact that a particular feature of a product s appearance is denied protection by Article 8(1) CDR does not mean that the whole design must be declared invalid. (12) A feature is not deemed to be solely dictated by its technical function where the designer still had some degree of freedom in the creation of the feature (decision of the Boards of Appeal of 17/09/2013, R2081/2011-3). (13) The features of the hose of the RCD are not solely dictated by their technical functions because the designer was free to apply different solutions without affecting the technical functions. (14) The function of a hose is to transport liquid or gas through a flexible pipe. The design of the hose according to the RCD has no relation with this transport function. Any flexible tube would work the same way. The surface pattern shown in the RCD has no impact on the way how liquid or gas is transported inside the hose. Consequently, the RCD cannot be considered as solely dictated by this function. (15) Even if it is assumed that the hose of the RCD has the additional function of an automatic expansion longitudinally and laterally upon the application of a fluid pressure as described in the EP, the design of the RCD is determined by this function only in as far as it requires the hose to be in an undulating state as specified in claim 1 of the EP. However, the function of expansion does not require a specific appearance for the undulating state. Various forms of these states are possible without affecting the function. For instance, the hose may be given an undulating state by applying regular folds to the hose as shown in the US patent 6,523,539 and US patent 6,948,527. In contrast, the designer of the hose of the RCD has chosen an undulated state of irregular pattern. Obviously, designers of expendable hoses do have a degree of freedom in choosing the pattern of undulation for the hose. Therefore, the feature of appearance of the hose of the RCD is not solely dictated by its technical function in the meaning of Article 8(1) CDR. B.3 Evidence for prior designs (16) The video and the EP are not dated from a period prior to the date of filing of the contested RCD and hence are not evidence for the disclosure of prior designs in the meaning of Article 7(1) CDR. (17) In contrast, the US patents and the Amazon offers were fully disclosed before the date of filing of the RCD and hence the appearances of hoses shown therein are taken into account as prior designs made available to the public in the meaning of Article 7(1) CDR. 1 See validity_applications_en.pdf 6

7 B.2 Novelty (18) According to Article 5 CDR the RCD lacks novelty if 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. (19) The RCD and the prior designs are different as regards the surface pattern of the hose. Whereas the hose of the RCD shows a strongly irregular pattern of undulation, the hoses of the US patent 6,523,539 and US patent 6,948,527 are completely regular folds. The hose of US patent 1,220,661 and the hose of the amazon offer of February 2011 show no undulation at all. The pattern of the hose of US patent 4,394,861 is not recognizable due to the low quality of the drawings. (20) The surface pattern of the hose is not an immaterial detail. Therefore, the RCD is not identical to any of the prior designs within the meaning of Article 5 CDR. B.3 Individual Character (21) According to Article 6 CDR, the RCD lacks individual character if the overall impression produced on the informed user is the same as the overall impression produced on such a user by any design which has been made available to the public prior to the date of filing of the RCD or the date of the filing claimed. In assessing individual character of the RCD, the degree of freedom of the designer in developing the design shall be taken into consideration. (22) The informed user is familiar with hoses. As the Applicant has correctly pointed out, the informed user is particularly observant, has some awareness of the state of the art and uses the product in which the design is incorporated in accordance with the purpose of the product. The degree of freedom of a designer of hoses is limited since the required technical function dictated the shape and arrangement of the hose i.e. that it is tubular and of a certain length and circumference. As a consequence of the limitation of the degree of freedom due to the technical function of the product, the informed user will pay close attention to features not determined by said function. (23) The hose of the RCD is characterized by the irregular undulating surface pattern of the hose which gives the hose an unusual aesthetic, rather trashy designer look. In contrast, the hoses of the prior designs are the usual regular, clean industrial folds. The pattern of the hose is of particular significance for the informed user because it extends over the entire length of the product which usually counts for several meters. Therefore, the prior designs and the contested RCD do not produce the same overall impressions on an informed user. 7

8 C. Conclusion (24) The application for a declaration of invalidity of the contested RCD based on the grounds of Article 25(1)(b) CDR must be rejected as unfounded. III. COSTS (25) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant bears the costs of the Holder. (26) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount of 400 Euro corresponding to the costs of representation. 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). THE INVALIDITY DIVISION Martin Schlötelburg Jakub Pinkowski Natalie Pasinato 8