OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 29/11/2013.

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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 29/11/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT ALUPROF S.A. Warszawska Bielsko-Biała Poland REPRESENTATIVE OF THE APPLICANT Kancelaria Rzecznika Patentowego Andrzej Rygiel Boh. Warszawy 26 lok. F Bielsko-Biała Poland HOLDER ALU SYSTEM PLUS JJM KUCHARSCY Spółka Jawna Leśna 2d Chrzanów Poland REPRESENTATIVE OF Joanna Kulinska THE HOLDER Rudzica Rudzica Poland 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) took the following decision on 29/11/2013: 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 the date of filing of 30/03/2011. In the RCD, the indication of products reads shaped parts for building, and profiles for door and window frames. The design has been published in the Community Designs Bulletin in the following views:

3 (2) On 06/06/2012, the Applicant filed an application for a declaration of invalidity (hereinafter the Application ). The fee for the Application was paid via bank transfer. (3) Using the Office form the Applicant requests a declaration of invalidity of the RCD on the grounds that the RCD does not fulfill the requirements of Articles 4 to 9 of the Council Regulation (EC) no. 6/2002 on Community Designs (hereinafter CDR ). (4) As evidence the Applicant provides a copy of a part of catalogue Door and Window System with Thermal Break MB 60 of Metalplast Bielsko S.A., dated 06/99, containing the following image of profile K518060X (hereinafter the prior design): (5) In the reasoned statement, the Applicant claims that the RCD and the prior design are identical or almost identical, therefore the RCD is not new and does not have individual character, and it should be invalidated. The Applicant further submits that the degree of freedom of the designer in relation to the RCD is wide and not restricted: [Designer s] overriding aim is to design (including shaping) components: profiles, gaskets, insulation and accessories in such a way that after their assembly a finished product is produced (a window, door, facade...) meeting architectural, utility and functional requirements, as well as the requirements set forth in standards, 3

4 provisions of law, etc., imposed on construction products in a particular market. The way how the final shape is achieved[,] is solely the effect of creativity and experience of the designer/ construction engineer[,] he/she has in designing systems for the construction industry. Constructional experience means, inter alia, the knowledge of technological possibilities in the production of door and window profiles, but it is not a barrier which would force copying. (6) The Applicant further submits that the RCD infringes Art. 14 of the Council regulation (EC) No. 6/2002, as it has been designed by Biuro Konstrukcyjne ALUPROF S.A. (ALUPROF S.A. Engineering Design Office), (formerly: METALPLAST-BIELSKO S.A.). (7) In response the Holder submits that the designer of window or door profiles is restricted in its creative work by specific utility values, claiming that a profile consists from 80 to 95% of standardised and typical components of a technical nature arising from its function, and the designer s impact may be only in the remaining part. The products on the market must have the same dimensions in the parts in which profiles are affixed to other products therefore they are very similar if not identical. Other criteria such as heat penetration rate or noise insulation have to be taken into account too. Only knowledgeable and informed users, which are professional suppliers, can spot the differences when deeply analyse the profiles. These professional companies are obliged to do this in-depth analysis so that they comply with PN-EN standard and norms regarding thermal protection of buildings. The profiles acquire individual character by placing plane signatures (markers) of a manufacturer on them. (8) The Holder s profiles are lighter, they have better technical parameters, and they have different wall thickness, rib shape and layout. The profile related to the RCD obtained individual character by the distinguishing marks, i.e. plane signatures. The evidence provided by the Applicant does not show the markers used by the Holder as detailed in the following image: 4

5 (9) According to the Holder in the RCD [t]he plane signatures i.e. markers have their characteristic shape and placing within the profile. This makes a different general impression on a knowledgeable and informed user from the earlier disclosed profiles of other manufacturers. Furthermore, the prior design does not show the characteristic convergence of vertical, horizontal and oblique walls, recesses and reliefs of the RCD, which deliver to the RCD individual character. All these visual features have to be taken into account. On the contrary, the features in which the designs are identical should be disregarded because they are common to the products on the market, arising from the technical function of the product. (10) The Holder further submits that the profile was not disclosed in the appearance corresponding to the Community design registration and therefore the RCD meets the conditions of novelty and individual character. Pursuant to Article 14 CDR the right to the RCD vests to the registered Holder. The Applicant did not submit any evidence that it is entitled to the design. (11) In the reply the Applicant contests that the Applicant s markers are determining features delivering the RCD the novelty. The markers are 3D designations with the function of a trade mark. The Applicant has obtained such a trade mark registration in Poland. The Applicant also claims, that the markers are not visible during the normal use, therefore excluded from the protection pursuant to Article 4(2)(b) CDR. (12) The Applicant further submits that door or window system providers do not use standardized designs but they use different elements to meet different requirements. The designer may take advantage of certain standard solutions proposed by manufacturers to enable fitting 5

6 particular additional elements, but the designer may also apply individual solutions. The requirements connected with functionality or standards do not predetermine the appearance of a profile. The said technical standard relates to issues of safety of use, health and environmental protection of the whole ready-to-built-in products, not component parts. The Applicant further observes that growing demands on thermal insulation forces the companies and also designers seeking not standard but, on the contrary, new and individual solutions. (13) According to the Applicant the Holder does not show the characteristic interpenetration of vertical walls and recesses and the markers are not essential and material features of the design. (14) The Applicant clarifies that the Application for invalidity is submitted on the grounds of Article 25(1)(b) and it does not applies for invalidity pursuant to Article 25(1)(c). (15) In the rejoinder the Holder maintains that the degree of freedom of the designer is restricted by functional, e.g. insulation requirements and standardised dimensions to fit components of other manufacturers on the market, and that PN-EN standard concerns also about the component of a product. The informed user is an expert in the industry with high level of experience regarding profiles, for whom every minor detail of an aluminium profile is significant and important, including the markers highlighted by the Holder, and who is able to assess the freedom of the designer. As the scope of creativity in this case is very limited, adding the described element represents a significant change in the character of the profile. The marker of the Applicant is different from the marker of the Holder. Both the shape and its placement in the profile are important and deliver the RCD individual character allowing distinguishing among the profiles. (16) 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 (17) The indication of the grounds for invalidity in the Application is a statement of the grounds on which the Application is based within the meaning of Article 28(1)(b)(i) CDIR 1. The Applicant further confirmed in the reasoned statement that grounds of invalidity are grounds pursuant to Article 25(1)(b). 1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs 6

7 (18) 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 Art. 28(1) CDIR are fulfilled as well. The Application is therefore admissible. B. Substantiation B.1 Disclosure (19) According to Article 7(1) CDR for the purpose of applying Articles 5 and 6, a prior 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 date of filing of the application for registration of the contested design, except where these events 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 prior design was disclosed in the catalogue of the Applicant prior to the date of filing of the contested RCD. The Holder stated that it was aware of its publication. The prior design is therefore deemed to be disclosed in compliance with article 7(1) CDR. B.2 Novelty (21) 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. Designs shall be deemed to be identical if their features differ only in immaterial details. (22) Both the RCD and the prior design relate to profiles of door and window systems. Generally profiles are products the length of which is variable, dependent of the use of the profile, and the shape of which is defined by the cross section. (23) The contested Community design is registered in five views showing the cross section in image 44.1 and 3D views in images 44.2 to The protection is sought for the shape of the profile as no other features are disclosed in the representation of the design. (24) The prior design is disclosed in one view on cross section of the profile. As the protection of the RCD is sought solely for the shape of the product, the prior design is deemed to be disclosed sufficiently enough for the purpose of assessment of novelty and individual character. 7

8 (25) The prior and the contested designs are identical in respect of the shape of the profile. The RCD differs in the indentations inside the profile. As the Holder claims, the indentations are signs which identify the producer of the profile and they are elements which deliver to the design novelty and individual character with respect to the prior design. (26) The indentations, as the Holder says, are perceived as a kind of signature of the manufacturer. They can be compared to an author s signature on a painting or a logo on a product. Such a signature does not change the character of the painting or the product and so the indentations in the profile do not change its appearance. The indentations are considered being immaterial details in the sense of Article 5 CDR. The prior design therefore constitutes an obstacle to the novelty of the RCD. B.3 Other issues raised by the parties, particularly the technical function and visibility of a component part of a complex product (27) The RCD is not protectable if does not meet one of the conditions of Article 25(1)(b). In the present case the RCD does not meet the requirement of novelty as the RCD is not new in respect of the prior design and it is not needed to do the test of individual character. The test of novelty is objective in that sense that it is not performed from the view of the informed user and the designer s freedom is not taken into account. These conditions are applicable in the assessment of individual character. However, as both the parties raised some issues in relation to the protect-ability of the RCD, the Office provides the following clarification. (28) The Holder claims that the product, to which the RCD relates, must look very similar to the products of the other manufacturers in the market for the technical reasons and because the profile must fit other components of the door or window system. In opposite the Applicant insists that the appearance of the profile results from the design of the whole product the door or window system, which can be designed in many different ways, and that the differences between the designs recognized by the Holder should not be considered as they are not visible when the profile is incorporated in the complex product. The dispute is over the freedom of the designer and the distance in which a designer of door or window system profiles may depart from the state of the art to create an independent design eligible for protection by virtue of the registration of the Community design. (29) There is no dispute between the parties that the profile in dispute is a component part of a complex product such as door and window system. It is also obvious that the profile must fit other parts of the complex product and that the design of door and window systems is driven by technical improvements to reach better utility and quality functions. 8

9 (30) According to the preamble (10) CDR technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. Likewise, the interoperability of products of different makes should not be hindered by extending protection to the design of mechanical fittings. Consequently, those features of a design which are excluded from protection for those reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection. (31) As far as understood from the submission of the Holder technologydriven features and mechanical fittings form up to 95% of the design of the profile, and the only features in which the competing products may differ, are those indicated in its submission, i.e. curving of the walls and the markers. In other words, all essential features, 95% of the appearance of the profile, fall in the exclusion pursuant to Articles 8(1) and (2) CDR. Should it be the case, the design has to be excluded from the protection as it does not fulfil the requirements of protection of a Community design. If not, and the designs may differ in some features, the Holder failed to demonstrate them on the examples from the state of the art, as well as the claimed common form or the design corpus in sense of preamble (14) CDR, which is supposed to be common to all or majority of profiles of the same or similar function. (32) For the same reason the Office did not take into account the arguments of the Applicant that the recognized differences between the compared designs fall in the exclusion pursuant to Article 4(2) CDR not being visible if the profile is incorporated in the door or window system. The Applicant failed to demonstrate how the profile is incorporated in the complex product. C. Conclusion (33) The facts and evidence provided by the Applicant proved the ground for invalidity of Article 25(1) (b) CDR in conjunction with Article 5 CDR. The RCD is declared invalid. III. COSTS (34) Pursuant to Article 70(1) CDR and Art. 79(1) CDIR, the losing party shall bear the fees incurred by the other party as well as all costs incurred by him essential to the proceedings. Thus, the Holder shall bear the fees and costs of the Applicant. (35) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750, composed of 400 for the costs of representation and 350 for the reimbursement of the invalidity fee. 9

10 IV. Right to Appeal (36) 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 this 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 Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg 10