OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF. English

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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 13/06/2014 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD 9136 COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT ELOPAK AB Landskronavägen Helsingborg Sweden REPRESENTATIVE OF THE APPLICANT Anthony Gregory Burrows Business Center West, Avenue One, Business Park Letchworth Garden City, SG6 2HB Hertfordshire United Kingdom HOLDER AB Nordemballage Erik Dahlbergsgatan 45 Box 1026 SE Ystad Sweden REPRESENTATIVE OF THE HOLDER Advokatbyrån Gulliksson AB Box Malmö Sweden Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division composed of Martin Schlötelburg (rapporteur), Jakub Pinkowski (member) and Ludmila Čelišová (member), takes the following decision on 13/06/2014: 1. Registered Community design No is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No (the RCD) was registered in the name of the Holder with the filing date of 20/05/2012. The indication of products in the RCD reads packages; packaging for food; cardboard packaging. The RCD is published in the Community Designs Bulletin with the following views: ( (2) On 17/05/2013, the Applicant filed an application for a declaration of invalidity ( the Application ). The fee for the Application was paid by current account with the Office. (3) The Applicant requests a declaration of invalidity of the RCD on the ground of Articles 25(1)(b) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs (hereinafter CDR ). (4) As evidence, the Applicant provides inter alias a copy and an English translation of the publication of the Japanese patent application No , published on 03/10/2002 with the following view of a paper container for liquids (in the following: the prior design): 2

3 (5) In its reasoned statement, the Applicant claims that the contested RCD is not new in view of the prior design. In particular, the Applicant argues that the lines visible on the packaging of the RCD are needed to promote folding and hence have a purely technical function. Without these folding lines, the packaging of the RCD is totally commonplace for many years. (6) In response to the Application, the Holder observes that the prior design lacks the folding lines visible in the RCD. The Holder admits that there are functional advantages in the lines but the designer certainly had the choice of other configurations; the lines may be broken or placed higher or lower on the panel. According to the Holder, the designer had at least some freedom of design and the slenderness of the lines and the uninterrupted manner in which the lines flow is a result of aesthetic considerations. Furthermore, the Holder argues that the drawing representing the prior design does not give an impression as to the texture of the design. The feature of the texture in the RCD constitutes a difference to the prior design. (7) For further details of the facts, evidence and arguments submitted by the parties, reference is made to the documents on file. II II. GROUNDS OF THE DECISION A. Admissibility (8) The application complies with Article 28 CDIR 1. It is, therefore, admissible. 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community designs. 3

4 B. Substantiation B.1 Disclosure (9) The prior design is disclosed in an official publication of the Japanese Patent Office of the year 2002 and hence was made available to the public prior to the date of filing of the contested RCD within the meaning of Article 7(1) CDR. B.2 Technical Function (10) 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 function. According to the Invalidity Guidelines 2 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. (11) A feature is not deemed to be solely dictated by its technical function where the designer had some degree of freedom in the creation of the feature (decision of the Boards of Appeal of 17/09/2013, R2081/2011-3). (12) It is not in dispute that the lines visible in the packaging of the RCD have a functional purpose ( functional advantage as it is called by the Holder). Furthermore, it is not in dispute that these lines are folding lines. (13) Folding lines in packaging are technical means to promote the folding of the packaging. The folding of a cardboard packaging is necessary for constructing the packaging out of a flat cardboard and/or for recycling the packaging by folding it back into a flat cardboard after use. (14) The product of the RCD is cardboard packaging, i.e. packaging folded out of cardboard. The technical function of the product is its use as packaging for items such as food. In order to fulfil its function, a (flat) cardboard must be folded into a (3D) container and where the container is intended for recycling - folded back into the cardboard. Therefore, the ability to be folded is part of the technical function (= use) of the product of the RCD. (15) A designer of such cardboard packaging has no freedom as regards the folding lines because the ability to transform a cardboard into a container and back depends on the shape and the position of the folding lines. For this reason, the folding lines of the RCD are features which are solely dictated by its technical function of the product in the meaning of Article 8(1) CDR. (16) Features falling under the exclusion of Article 8(1) CDR are not taken into account in the assessment of the novelty and the individual character of the RCD. Consequently, the folding lines in the RCD are ignored in the following. 2 See validity_applications_en.pdf 4

5 B.2 Novelty (17) 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. (18) The RCD and the prior design both relate to cardboard packaging consisting of a rectangular body with a gable top, i.e. two roof-panels forming an acute angle, and a screw cap closure on one of the roof panels. (19) Both designs are shown only in perspective views by an unspecified angle from top/side. This makes it impossible to see with accuracy the proportions (= ratio width/height). For knowing the proportions a frontal view is needed. In the absence of any such frontal view, possible differences between the two designs in terms of proportions cannot be taken into account. (20) The graphical representation of the prior design consists in a drawing which discloses neither a colour nor a surface texture. In contrast, the design of RCD is represented by two colour photos showing the surface to be smooth and of white colour. (21) Colour and surface texture are not immaterial details. Therefore, the prior design does not constitute an obstacle to the novelty of the RCD. B.3 Individual character (22) According to Article 6 CDR, the 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 before the filing date of the RCD or the priority date claimed. In assessing the RCD s individual character, the designer s degree of freedom in developing the design shall be taken into consideration. (23) The informed user, from whose perspective the test is performed, according to the established case-law, is a 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 the product is intended (see judgement of 09/09/2011, T-10/08, Internal combustion engine, paragraphs 23 to 25). (24) In the present case, the informed user is aware of packaging designs, in particular cardboard packaging designs, which were available on the market before the filing date of the RCD. Cardboard packaging is known to exist in a large variety of shapes and proportions. The degree of freedom of a designer of cardboard packaging is limited only in so far as the packaging must include a volume to accommodate items to be contained in the packaging. (25) The prior design and the contested design are identical in the shape of all their parts. The additional features in the RCD, namely the white colour and smooth texture of the surface, cannot give individual character to the RCD because these features are trivial and a direct consequence of the use of cardboard as material to form the packaging. Furthermore, it is obvious to an informed user 5

6 that the white colour of the packaging of the RCD has no importance because the packaging will be painted/printed as soon as it prepared for use. When weighting the similarities and differences of the designs, the similarities prevail. Therefore, the prior design produces the same overall impression on an informed user as the RCD. C. Conclusion (26) 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 (27) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the Applicant s fees and costs. (28) 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 (29) 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 6