Transcript No Slide Title

Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Invalidity declaration of Community
Designs: first decisions of OHIM’s
Boards of Appeal
J. J. IZQUIERDO PERIS – Designs Department (OHIM)
5th European Trade marks and Designs Judges’ Symposium –
Alicante, 27 September, 2007
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Purpose of my presentation
- Make a focused review on OHIM praxis dealing
with substantive notions like “novelty”, “individual
character”, etc. within the framework of invalidity
proceedings
- Steer reflection/discussion among participants on
whether or not such praxis is -or could be- of any
guidance for national and EC jurisdictions
applying such concepts
- A comprehensive review of OHIM decisions is
made in the written communication distributed to
participants
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Invalidity of Community designs in a nutshell
-
-
-
For Registered Community designs:
a) Inter partes procedure before OHIM upon
request
b) via counterclaim in infringement
proceedings before CD courts
For Unregistered CD: direct action before CD courts
OHIM decisions are made based only on facts and
evidence submitted by parties (no ex officio
examination of novelty, etc)
Administrative procedure managed by the Designs
Department and subject to appeal before the 3rd
Board and, eventually, before CFI/ECJ
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Grounds (Art. 25 (1) Community Designs Reg. “CDR”)
A Community Design can be declared invalid when:
- It is not a design (a)
- It does not fulfill requirements of Arts. 4-9 (novelty,
individual character, it offends public policy or
morality etc.) (b)
- The holder is not entitled to be owner (c)
- It is anticipated by a prior design disclosed after
the contested CD (d)
- It interferes with earlier rights, like trade marks (e)
or copyright (f)
- It makes improper use of certain emblems etc. (g)
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Lack of novelty
(Article 25.1.b CDR)
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
03.12.04
Prior CTM 998450
Contested RCD 5269-0001
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
R 0216/2005-3
08.11.06
Prior CTM 998450
Contested RCD 5269-0001
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
13.09.06
Prior UK reg. design
Contested RCD 123013-0001
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
R 1456/2006-3
02.08.07
Contested RCD 123013-0001
Prior UK reg. design
Invalidity decision is annulled on procedural grounds.
The case is brought back to the Invalidity Division
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Lack of individual
character
(Article 25.1.b CDR)
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Prior design
01.12.05
Contested RCD 225073-0001
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
R 196/2006-3
28.11.06
Prior design
Contested RCD 225073-0001
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
31.08.06
Prior design
Contested RCD 171178-0005
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
R 1351/2006-3
25.05.07
Prior design
Contested RCD 171178-0005
Invalidity decision is annulled on procedural grounds.
The case is brought back to the Invalidity Division
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Conflict with prior design
disclosed after RCD
(Article 25.1.d CDR)
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
20.06.05
Prior RCD 53186-0001
Contested RCD 74463-0001
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Shape protected by prior design
Shape protected
by the contested RCD
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
R 1001/2005-3
27.10.06
Prior RCD 53186-0001
T-9/07
Contested RCD 74463-0001
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Use of distinctive
sign
(Article 25.1.e CDR)
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Prior Spanish 3-D TM
05.09.05
Contested RCD 58334-0001
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
R 1310/2005-3
28.11.06
Prior Spanish 3-D TM
Contested RCD 58334-0001
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
01.03.06
International TM
Contested RCD 162425-0004
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
R 609/2006-3
03.05.07
International TM
Contested RCD 162425-0004
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Conclusions
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
How
can
the
two
requirements (novelty and
individual character) be
interpreted?
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Art. 5(1)
CDR
identity
“COMPLETE” NOVELTY
“INCOMPLETE” NOVELTY
INDIVIDUAL CHARACTER
Art. 5(2) CDR
identity despite
of
« informed
user» test
« degree of
freedom of
designer» test
Art. 6 CDR
different overall
impression
« immaterial
details»
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
EXAMPLES
“COMPLETE” NOVELTY
“INCOMPLETE” NOVELTY
INDIVIDUAL CHARACTER
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
The standard for “individual character” (an issue
related to the validity of the design) and the
standard for “scope of protection” (Art. 10 CDR)
(an issue related to the enforceability of the design)
are based on the same test:
“Does the registered design, compared to other
design, determine in the informed user a
different overall impression, taking into
consideration the degree of freedom of the
designer?”
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Both OHIM and CD courts face the same dilemma
when applying such standards:
A)
determining whether the contested design
produces a different overall impression compared
to prior designs (this applies to invalidity cases at
OHIM and at courts)
B)
determining whether the infringing product
produces a different overall impression compared
to the protected design (this applies to
infringement actions at courts)
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
There is not yet case law from the CFI/ECJ on the
interpretation of notions like “individual character”
or “scope of protection” of the Community design.
OHIM praxis seems to be perceived by national
courts as a guiding tool in the meantime. Several
infringement judgments in different national courts
support this perception.
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
THANK YOU
Office for Harmonization
in the Internal Market
(Trade Marks and Designs)
Information:
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
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Office for Harmonization in the Internal Market
(Trade Marks and Designs)
Avenida de Europa, 4
E-03008 Alicante
SPAIN