OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 19/02/2013.

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 19/02/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 8670 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT SPIROTECH BV Churchillaan AE Helmond Netherlands REPRESENTATIVE OF THE APPLICANT dr. László Bérczes Petöfi utca Taliándörögd Hungary HOLDER BE4 Heat Kft. Szurdokpart U Gyöngyös Hungary REPRESENTATIVE OF THE HOLDER Georg Pintz & Partners LLC Pf Budapest Hungary 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), has taken the following decision on 19/02/2013: 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 Community design nº (hereinafter the RCD ) has been registered in the name of the Holder with a date of filing of 30/09/2011. In the RCD, the indication of products reads filters for fluids. The design was published in the Community Designs Bulletin in the following views: (2) On 06/02/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). (3) The Applicant requests a declaration of invalidity of the RCD on the grounds of Article 25(1)(b) of the Council Regulation (EC) nº 6/2002 on Community Designs (hereinafter CDR ), particularly that the RCD does not fulfill the requirement of novelty pursuant to Article 5 CDR. 2

3 (4) As evidence the Applicant provides, inter alia: - a product catalog Productübersicht of SPIROTECH, undated, in which the Applicant highlighted a product Spirotrap also indicated under a code AE075 in the following view (hereinafter D1): - a copy of the product price list 2005 Productinformation und Bruttopreise 2005 of SPIROTECH, in which the Applicant highlighted a product Spirovent Schlamm AE075 in the following view (hereinafter D2): - a prospect SPIROTRAP of SPIROTECH, undated, showing the following product indicated as SpiroTrap dirt separator AE075 in the following two pictures (hereinafter D3): 3

4 Documents D1 D3 contain representations of a design which relate to a product under the code AE075, shown either in colours or as a black and white drawing. Hereinafter this design is referred as the prior design. - copies of 7 invoices dated , containing item AE075 SpiroTrap Horizontal Dirt Separator (hereinafter D4). (5) In the reasoned statement, the Applicant holds that the products in which contested RCD and the prior design are incorporated have the same golden colour, the same size, they are made of the same material, and they are designed in the same way, i.e. open in the upper sides with an inlet and outlet, having cylindrical body and conical shape towards the bottom. The only differences which the Applicant recognizes are the absence of a label and a chain in the prior design. Both the differences are immaterial details and thus the compared designs are identical. The Applicant proved by the provided evidence that the prior design was made available to the public before the date of filing of the contested RCD and thus the RCD in respect of the prior design does not meet the requirement of novelty. (6) In the response to the Applicant s observations the Holder of the RCD submits that all similar features in respect of the prior design and the RCD result from the functionality and the nature of the product in which they are incorporated, and these features are common to all samples of the type of the product. The different features are not immaterial details taking into account the designer s freedom in developing the designs, the features solely dictated by the technical function of the product, and the perception of the informed user. (7) The Holder submits that where an applicant expressly challenges the novelty of a Community design, provides evidence of an earlier disclosure, and seeks a declaration of invalidity on the ground of the lack of novelty pursuant to Article 5 CDR, it is deemed s/he seeks the declaration of invalidity on the grounds of Article 25(1)(b) CDR in conjunction with Article 4 CDR, and therefore the Office must also examine the individual character of the contested RCD. (8) The Holder further submits that the informed user pays only minimal attention to features that are totally banal and common to the particular product, and concentrates on features that are arbitrary or different from the norm. The common features are those highlighted by the Applicant - the colour, inlets, outlets and cylindrical shape. In these features moreover the designer s freedom is limited due to the technical constrains and standardization. The 4

5 differences between the designs of the manufacturers of competitive products are rather small, however perceptible by the informed user who can easily distinct between them. To support these arguments, the Holder submits a picture showing the product related to the prior design (SPIROTECH), the contested RCD (BRH) and a product of an independent producer (ICMA), as follows: (9) According to the Holder the product in which the RCD is incorporated is made by casting process from brass, which is a preferable material making this kind of products for its resistance to corrosion, and physical and mechanical characteristics. The colour of the final product is determined by the composition of brass. The cylindrical form of the product is ideal for the used method of die casting. The designer of the dirt separator is free to choose the length and diameter of the cylindrical shape and the shape of the conical bottom part. The inside thread connection of ½ must be however preserved at the bottom. The freedom of the designer is in bulges or spot faces outside of the body of the product bearing in mind the effects of reduction of the wall thickness, and economical aspects. The arrangement and location of the lateral pipe stubs in the product are basically determined by the working principle. The deposit, which comes to the separator and sinks to the bottom, is evacuated through an outlet cock at the bottom. The required dimensions of the connection depend on the performance and the volume flow of the heating system, and on the size of piping used in the system, which is standardized in Europe. A hexagon-head device is used to match standardized wrenches. Cocks and valves for closing and discharge the liquid at the bottom are delivered ready-made by independent suppliers. (10) The Holder concludes that due to functionality, production optimization and legislative standards related to the product, the highly concentrated standardization is apparent with regard to the shape of the given product, and that certain attributes of the shape seem to be unavoidable. Notwithstanding that the RCD possesses individual and distinctive features: countersunk standing rectangular boss on the cylindrical body, horizontal pipe stubs on the 5

6 primary and secondary side of length in excess of the average, and wavy conical shape in the bottom part of the separator. (11) The Holder further challenges the evidence submitted by the Applicant for not having been translated into the language of proceedings and for the reason that the features of the product are not discernible from the evidence. (12) In his response the Applicant reiterates that the RCD does not comply with the requirement of novelty pursuant to Article 5 CDR, and that the Holder did not contest the allegation that it differs from the prior design only immaterially. Nevertheless the Applicant wishes to express the standpoint on the individual character. The Applicant does not agree that the RCD and the prior design are the result of the functionality and the nature of the product, since there are many products on the market that bear different appearance and have the same function. On the other hand if all essential features are solely dictated by the technical function and the designs differ only in immaterial details, the RCD is not eligible to the protection by the registration. The Applicant further submits examples of competing products to show that the features of colour, inlets, outlets and body identical to the RCD are not commonplace in the field of dirt separators. The Holder did not prove that any standardization exists on the market of dirt separators. The Applicant further requests the Office when assessing the novelty and individual character of the RCD, to take into the consideration the dirt separators provided by the Holder as relevant state of art. (13) In his response the Applicant submits two more examples of dirt separators available on the market (Flamco on the left and FAR on the right) which take common features as he claims as follows: (14) 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 (15) The Applicant stated the grounds on invalidity within 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 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 6

7 requirements of Article 28(1) CDIR are fulfilled as well. The Application is therefore admissible. (16) The Holder raised the question of the scope the Office should consider the RCD in the invalidity proceedings. The Applicant clearly based its application on the noncompliance with the requirement of novelty of the RCD. The Applicant insists, that because the invalidity application states the ground of Article 25(1)(b) CDR, the Office should consider the validity of the RCD on all requirements, including the requirement of individual character. (17) Both the parties submitted their observation on all provisions covered by the Article 25(1)(b) which they considered relevant in relation to the contested RCD. Thus the Office makes the assessment of all those relevant provisions, i.e. novelty according to Article 5 CDR, individual character according to Article 6 CDR and the technical function according to article 8(1) CDR. B. Substantiation B.1 Evidence (18) The Holder claims that the Applicant s evidence does not meet requirements of Article 29(5) CDIR because it is not in the language of the proceedings. The text of the document D3 is in the language of proceedings and therefore D3 is admissible. Although the texts of documents D1, D2 and D4 are not in the language of proceedings the relevant information as regards the date, the representation of the prior design and code identification of the product related to the prior design are not affected by this deficiency (decision of 17/03/2006, ICD 941, para. 9). Therefore D1, D2 and D4 are admissible evidence. B.2 Disclosure (19) According to Article 7(1) CDR for the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed before the filing date of the contested RCD, except where these event could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community. (20) The Applicant submitted his own commercial materials depicting the prior design and indicated the product to which it relates. The same product and indication is in the pricelist of the Applicant from The Applicant further submitted invoices from years in which he charges several business entities for an item of the same code and brand name as the product in the commercial materials. The pricelist and the invoices bear dates before the date of filing of the application for registration of the RCD. The Holder did not submit any prove that the product related to the RCD was not used in trade as claimed by the Applicant. Thus the prior design is deemed to be made available to the public within the meaning of article 7(1) CDR. (21) The Holder further contests that the prior design is not sufficiently disclosed because the design is not disclosed in a manner to allow detailed enough comparison of the prior and the registered designs. 7

8 (22) While documents D1, D2 and D4 may serve rather to identification of the prior design than its assessment, the document D3 contains a representation of the product detailed enough to allow recognition of all visual features of the product related to the prior design. The disclosure of the prior design is thus sufficient to make a qualified assessment. B.3 Technical Function (23) The Holder indicated the distinctive and individual features of the RCD a rectangular recessed area for placing a label, extended inlet and outlet, and the shape of conical lower part of the product. According to the Holder the rest of the visual features is either standardized, or dictated by the technical function of the product and thus such features should not be taken in to consideration when assessing novelty and individual character of the contested RCD. (24) In opposite, the Applicant insists that no visual features of the product related to the RCD are dictated by the technical function, and the designer has freedom in selection of the colour, position of the inlet and outlet, and the shape of the body and the lower part of the product. (25) According to Article 8(1) CDR a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function. In compliance with the Manual of the Office concerning the examination of design invalidity applications (in force as of 01/07/2012) the Article 8(1) CDR must be interpreted the way that CDR denies protection to those features of a product s appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product s visual appearance. (decision of 22/10/2009, R 690/2007-3, Chaff cutters, para. 30 et seq.). (26) Furthermore, in compliance with the Manual, the design as a whole will be invalid only if all the essential features of the appearance of the product in question are solely dictated by its technical function (decision of 29/04/2010, R 211/2008-3, Fluid distribution equipment, para. 36). (27) In order to determine if all the essential features of the appearance of the product in question are solely dictated by its technical function, it is first necessary to determine what the technical function of that product is. The relevant indication in the application for registration of that design (Article 36(2) CDR) should be taken into account and also, where necessary, the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function (see, by analogy, judgement of 18/03/2010, T/9/07, Representation of a circular promotional item, para. 56). Where Article 8(1) CDR applies must be assessed objectively and not with regard to the perception of the informed user, who may have limited knowledge of technical matter [see the Manual]. (28) The indication of products, to which the RCD relates, reads filter for fluids. From the provided evidence by both the parties it is evident that the RCD and the prior design relate to dirt separators of heating or cooling systems to 8

9 separate dirt like corrosion particles from the system. As disclosed in the registration, the RCD represents a brass-made filter having cylindrical body, a conical lower part which is separated from the body by a protrusion. A valve with a lid is attached to the lower conical part. The upper part of the body is extended to two short pipes with hexagon nuts. The body of the filter is recessed in a rectangular shape to allow placing a label. The filter has golden colour. (29) Both the parties submitted examples of other dirt separators to show the similarities or differences of the products on the market. From the submitted examples, two products were evidently disclosed before the date of filing of the contested RCD and thus they form the relevant state of art in relation to the RCD. They are Flamco and Far dirt separators (see paragraph 13). (30) Comparing the above said products, the prior design and the RCD (see below), differences in the shape, protrusions and recesses of the body of the products, as well as other features used in the products, i.e. different position of the indications of producer and the way of securing the cap of the valve, are easily recognized. Though filters in heating systems are not normally recognize as carries of some aesthetic values, it is evident from the provided examples, that the individual producers distinguish from each other and these differences are not immaterial. They are neither attributed to different or improved operation of the filters. The products differ visually because the products are designed to the individual ambitions of the producers to offer to the customer an attractive product. The efforts are not dictated solely by the technical function but also the intention to be visible and distinguishable on the market. The only part, which is evidently common to all the compared products are the nuts on inlets and outlets which are, however, subject of exception pursuant to Article 8(2) CDR rather than Article 8(1) CDR. For the above said reasons, the Office does not consider any of the visual features of the RCD dictated by the technical function pursuant to Article 8(1) CDR. B.4 Novelty (31) 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 or the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details. 9

10 (32) The prior design and the contested RCD are made of the same material, they have the same colour and they have cylindrical body shape with inlet and outlet in the upper part of the body, ended by a hexagonal nuts. (33) The prior design differs from the contested RCD as regards the following features: - the inlet and outlet in the RCD are extended; - the recession for placing the label has different shape; - the cylindrical body of the contested RCD is longer and thus slimmer; - the cap of the valve at the bottom of the products is secured by the chain in the prior design, and a plastic collar and strip in the RCD. (34) Though the above said individual features are known from the prior art, they are not embodied in the prior design. Thus the combination of the features makes the RCD new with respect to the considered state of art. As the features of the RCD do not differ from the prior design only in immaterial details, the prior design does not form an obstacle to the novelty of the contested RCD. B.5 Individual character (35) 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 before the date of filing of the RCD or the date of the priority claimed. In assessing individual character of the RCD, the degree of freedom of the designer in developing the design shall be taken into consideration. (36) The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product in which the design is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design (recital 14 CDR). (37) The informed user is aware of the state of prior art, that is to say the previous designs relating to dirt separators that have been disclosed to the date of filing of the RCD. S/he possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them (judgment of 20/10/2011, C-281/10P, Representation of a circular promotional item, para. 53). (38) The examples from the state of art (see paragraph 30) show that the designer has a certain degree of freedom when designing dirt separators despite the features common to the products of the same or similar function, which are cylindrical body, horizontal outlet and inlet and conical bottom allowing gathering and releasing dirt by opening valve. Even though preserving these common features, the examples of prior art show that the products in the given industrial sector can differ. The prior and the registered designs on the contrary have common features which can be considered arbitrary, not necessary for preserving the requested technical function of the products. They are mainly the connection of the upper and lower parts, and the design 10

11 (shape, contours) of that conical part, which seem to be identical in both designs. The RCD produces the same impression on the informed user as the prior design. Thus the prior design forms an obstacle to the validity of the RCD. C. Conclusion (39) The RCD is declared invalid on the ground of Article 25(1)(b) CDR in conjunction with Article 6 CDR, due to the lack of individual character. III. COSTS (40) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (41) 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 (42) 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 (Article 57 CDR). THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 11