OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
DESIGNS DEPARTMENT- INVALIDITY DIVISION
DECISION OF
THE INVALIDITY DIVISION
OF 20/12/05
IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY
OF A REGISTERED COMMUNITY DESIGN
FILE NUMBER
COMMUNITY DESIGN
LANGUAGE OF PROCEEDINGS
ICD 000000479
000093356-0002
English
APPLICANT
Aktiebolaget Design Rubens Sweden
Graneliden 8
S-46063 Hindas
Sweden
REPRESENTATIVE OF
APPLICANT
Advokatefirman Vinge KB
Box 11025
S-40421 Göteborg
Sweden
HOLDERS
Marie Ekman Bäcklund
Killingstångevägen 20
Getterôn
SE-43293 Varberg
Sweden
Britt-Marie Jakobsson
Sôdra Breviksvägen 25
SE-42167 Västra Frôlunda
Sweden
REPRESENTATIVE OF
THE HOLDERS
Albihns International IP and Law Offices
Studentgatan 4
SE-20314 Malmö
Sweden
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 Martin Schlötelburg (rapporteur), Paul Maier (member) and José
Izquierdo Peris (member) took the following decision on 20/12/05:
1.
The registered Community design No. 000093356-0002 is declared
invalid.
2.
The Holders shall bear the costs of the Applicant.
I. FACTS, EVIDENCE AND ARGUMENTS
(1)
The Community design No. 000093356-0002 (in the following: “the CD”) has
been registered in the name of the Holders with the date of filing of 30/10/03.
In the CD, the indication of products reads “dolls” and the design is
represented
in
the
following
three
views
(published
at
http://oami.eu.int/bulletin/rcd/2004/2004_009/000093356_0002.htm):
(2)
On 23/09/04 the Applicant filed an application for a declaration of invalidity (in
the following: “the Application”) contesting the validity of the CD. The fee for
the Application was paid by current account with effect of 23/09/04.
(3)
The Applicant requests the invalidation of the CD on the basis of Article
25(1)(b) CDR1 insofar as it does not fulfil the requirements of novelty and
individual character. As evidence the Application contains inter alia copies of
the front page and page 10 of a newspaper named “livsbejakande NYHETER,
No. 14 – 2001” (in the following: “D1”). D1 includes the following photographs:
1
Council Regulation (EC) No 6/2002 on Community designs
2
Furthermore, the Applicant submitted evidence that the dolls shown in D1
were sold in such a way that the clothes can be removed from the bodies. For
comparison with the CD, the Applicant provided several photos showing the
appearance of one of the dolls without clothes (in the following: prior design).
One of the photos (in the following: D2) is as follows:
3
(4)
In response to the Application, the Holders observe that the CD has been
created in order to improve the use of soft dolls by adding human features,
such as a real looking human nose, patterns of legs and body, skinnier
material, a real looking belly button and eyes which are new and embroidered
directly onto the skin. In particular, the Holders explain that “when holding the
dolls like a baby on your left arm, our designs are very much body-look-alike
than those of the complainant’s doll appearing on the pictures enclosed to the
Declaration of Invalidity. It is a matter of how parts of the body are designed
and how the filling is made. There are other differences which are obvious to
pedagogues and informed users using the kind of dolls.” According to the
Holders, the informed user is a skilled person working in shops selling dolls as
well as end users and purchasers in the educational and therapeutically fields
around Europe. The Holders consider the degree of freedom of the designer
to be limited because he/she must adhere to certain given parameters, finding
the therapeutic balance between humanity, empathy and practical aspects on
manufacturing and use. The Holders state that in the therapeutic use of dolls
minor differences have proven to give a much better result showing that these
small differences are significant. Therefore, according to the Holders, the prior
design and the CD give different overall impressions on the informed user.
(5)
For further details to the facts, evidence and arguments submitted by the
Applicant and the Holders reference is made to the documents on file.
II. GROUNDS OF THE DECISION
A. Admissibility
(6)
The request of the Applicant for invalidation of the CD due to lack of novelty
and lack of individual character is a statement of the grounds on which the
Application is based. Therefore, the requirement of Article 28(1)(b)(i) CDIR2 is
fulfilled. The further requirements of Article 28(1) CDIR are fulfilled as well.
The Application is admissible.
B. Substantiation
B.1 Disclosure
(7)
D1 is a copy from a Swedish newspaper bearing the date of the year 2001.
Therefore, the prior design shown in D1 and D2 is considered as having been
made available to the public prior to the date of filing of the CD in accordance
with Article 7(1) CDR.
B.2 Novelty
(8)
2
The CD and the prior design shown in D1 and D2 have the following features
in common:
− the styles of the hair are both untidy;
Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No
6/2002 on Community designs
4
−
−
−
−
−
−
−
(9)
the colours of the hair are both dark-toned;
both dolls have their eyes positioned at a relatively large distance from the
nose;
the eyes are looking sideways;
both dolls have lipless, smiling mouths;
the faces are puffy and baby-like;
the fingers and toes are formed by sewing lines;
the bellies of the dolls are both of a round and soft configuration.
The prior design and the CD differ in so far as the doll of the CD comprises a
belly bottom, whereas the prior design includes none. Furthermore, the nose
of the doll of the CD is more human than the nose of the prior design. Due to
these differences, the evidence before the Office does not form an obstacle to
the novelty of the CD.
B.2 Individual Character
(10)
The CD has individual character if it produces a different overall impression on
the informed user than the prior design. The informed user is familiar with the
designs of dolls. He is not necessarily trained in the therapeutical field, since
the use of the dolls is not limited to therapy. When assessing the overall
impression, the informed user takes into account the degree of freedom of the
designer. In the present case, the informed user is aware that the degree of
freedom of the designer is limited only to the extent that a doll usually has a
body with head, legs and arms, but that there is no limitation as regards the
design being more of a human or more fantasy style. In particular, given the
general purpose of the dolls, the designer of the CD was under no obligation
to find a “therapeutic balance between humanity, empathy and practical
aspects on manufacturing and use” as explained by the Holders. Even if such
a limitation was accepted to apply, one cannot accept that the faces of these
dolls look so familiar given the fact that human beings with different faces exist
in the billions.
(11)
The behaviour of the dolls in use, in particular “when holding it like a baby on
the left arm”, as observed by the Holders, is not a part of the appearance of
the product and hence is not to be taken into account in the assessment of the
overall impression.
(12)
Due to their similar proportions and their similar, baby-like faces, as well as the
almost identical configurations of the bodies of the dolls, the prior design and
the CD produce the same overall impression on an informed user. The
difference in the shapes of the noses is too minor to alter this conclusion.
Therefore, the CD does not have individual character in the meaning of Article
6 CDR in view of the prior design.
C. Conclusion
(13)
The CD does not fulfil the requirements of individual character as stated in Art.
6 CDR. The CD is to be declared invalid according to Art. 25(1)(b) CDR.
5
III. COSTS
(14)
Pursuant to Article 70(1) CDR and Art. 79(1) CDIR, the Holders bear the fees
and costs of the Applicant.
IV. RIGHT TO APPEAL
(15)
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
Paul Maier
6
José Izquierdo Peris