OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS)
DESIGNS DEPARTMENT- INVALIDITY DIVISION
THE INVALIDITY DIVISION OF 05/12/07
IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN
COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS
REPRESENTATIVE OF THE APPLICANT
REPRESENTATIVE OF THE HOLDER
ICD 000004182 000694492-0001 English
6268 Monarch Park Place Niwot, Colorado 80503 United States of America
Field Fisher Waterhouse LLP 35 Vine Street
London EC3N 2AA
Casper V Sport
Gunnar Clausensvej 17D DK-8260 Viby J Denmark
Casper V Sport
Gunnar Clausensvej 17D DK-8260 Viby J Denmark
Avenida de Europa, 4 • E - 03008 Alicante • Spain Tel. +34 96 513 9100 • Fax +34 96 513 1344
The Invalidity Division,
composed of Eva Udovc (rapporteur), Peter Rodinger (member) and Martin Schlötelburg (member) took the following decision on 05/12/07:
The registered Community design No. 000694492-0001 is declared invalid.
The Holder shall bear the costs of the Applicant.
I. FACTS, EVIDENCE AND ARGUMENTS
(1) The Community design No. 000694492-0001 (in the following: “the RCD”) has been registered in the name of the Holder with the date of filing and the date of registration of 23/03/07. In the RCD, the indication of products reads “Clogs” and the design is represented in the following five views (published at http://oami.europa.eu/bulletin/rcd/2007/2007_062/000694492_0001.htm):
(2) On 12/07/07 the Applicant filed an application for a declaration of invalidity (in the following: “the Application”) contesting the validity of the RCD. The fee for the Application was paid by current account with effect of 12/07/07.
(3) The Applicant requests invalidation of the RCD based on Article 25(1)(b) CDR1, because it does not fulfill the requirements of novelty and/or individual character pursuant to Articles 5 and 6 CDR. He further requests the fees for
1 Council Regulation (EC) No 6/2002 on Community designs 2
this action to be awarded to the Applicant pursuant to Article 70(1) CDR and Article 79(1) CDIR.
(4) The Applicant submitted the following facts and evidence in support of his arguments in the Application:
- a set of five photographs showing the Applicant’s “Cayman style clog”, marked by the Applicant as “D1” (in the following: “D1”);
- a table of photographs showing comparative views of the RCD (in the left column) and the Applicant’s “Cayman style clog” (in the right column), marked by the Applicant as “D2” (in the following: “D2”);
- a witness statement of Dick Wijsman, marked by the Applicant as “D3” (in the following: “D3”). This statement also contains the photographs of the Applicant’s “Cayman style clog” as in D1 above and the table of photographs as in D2 above, marked by the Applicant as “DW1” and “DW2”, respectively (in the following also: “D3”). In this statement Dick Wijsman, identified as the Managing Director of the Applicant’s wholly owned subsidiary in the European Union since March 2005, states that:
a) he “was responsible for commencing the importation of the Cayman Design Clogs, exactly the same as the ones depicted in Exhibit “DW1” and in the table at “DW2”, into the European Union in March 2005”;
b) “throughout 2005” he “oversaw the importation of approximately 80,000 pairs of the Cayman Design shoe and also the Beach Design shoe of the Applicant” and
c) he estimates “that by March 2007 approximately 3,900,000 pairs of Beach and Cayman design shoes had been sold in the European Union”.
(5) The Applicant asserts that the RCD “has been anticipated by the placing on the market in the European Union in March 2005 of the Cayman style clog, photographs of which are at Exhibits D1 and D2”, because the RCD is identical to the prior design, as “the appearance of the Representations 0001.1 to 0001.4 inclusive in the RCD in Suit are identical to those of the Prior Design to which they are compared in the table shown at Exhibit “D2””. He further states, that “there is no direct comparison in the Prior Design in relation to Representation 0001.5 of the RCD in Suit” and that “it is unclear from the RCD in Suit which part of the design is claimed in Representation 0001.5, but it does appear to make up the form of the logo which is a surface decoration upon the strap of the clog”. Regarding this feature, he concludes that “there is no direct equivalent to this feature in the Prior Design”.
(6) Furthermore, the Applicant asserts that the RCD “lacks individual character as the overall impression produced by it upon an informed user does not differ from the impression produced by the Prior Design”. He observes that “the informed user for clogs made to the design of the RCD in Suit will be a member of the public that is familiar with buying shoes”. In particular, he points out the following similarities: three large holes in the side of the front part of the clog which appear to be identical, the same upper of the clog with virtually straight inner side of the shoe and a rounded lateral side.
(7) On 28/08/07 the Holder was notified of the Application and invited to submit his observations within a time period set (29/10/07), but he did not reply.
(8) On 12/11/07 the Office informed both parties that the written proceedings were closed and that a decision concerning the invalidity would be taken.
(9) 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
(10) The request to declare the RCD invalid, because it does not fulfill the requirements for protection of Articles 4 to 7 of CDR, in particular of Articles 5 and 6 CDR, since it lacks novelty and individual character, is a statement of the grounds on which the Application is based in the meaning of Article 28(1)(b)(i) CDIR2. Furthermore, the Application complies with Article 28(1)(b)(v) and (vi) CDIR, since the attachment contains an indication of the
2 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs facts, evidence and arguments submitted in support of these grounds. The other requirements of Art. 28(1) CDIR are fulfilled as well. The Application is thus admissible.
(11) The witness statement in D3 is verified by a statement of truth signed by the maker of the statement and clearly identifies the documents which it verifies and contains all the other required elements. The statement has not been contested by the Holder who did not submit any observations in reply to the application for a declaration of invalidity. The statement is admissible as evidence according to Article 65(1)(f) CDR.
(12) D3 thus proves that the Cayman design clog of D1 and D2 was made available to the public within the meaning of Article 7(1) CDR prior to March 2007 and thus prior to the filing date of the RCD. The design of D1 and D2 thus constitutes a prior design (in the following: “the prior design”) in relation to the RCD.
(13) 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. When assessing novelty and/ or individual character, the RCD must be compared with each prior design individually.
(14) The prior design and the RCD both concern a design of the clog footwear. They both have a sole, a heel and an upper with a strap with the following features in common:
- the upper that covers the front 3⁄4 of the clog and has an opening at its back side extending from the heel part to the instep part of the clog;
- the sole having a recess between the heel and the front part of the sole, wherein the insole has point like protuberances on its surface;
- the heel of medium height;
- straight inner lateral side and slightly rounded front and outside lateral side of the upper and of the front part of the sole, where the lateral contour extends slightly outward to the front of the clog;
- a set of smaller more or less circular holes scattered on the top surface of the upper;
- vertical lateral sides of the upper with dotted texture and a linear set of bigger half circular holes arranged along the bottom edge of these sides;
- the strap placed over and following the top of the edge of the upper opening and mounted to the upper at each of its bottom lateral sides at the clog’s heel part with a circularly shaped rivet that has a brightly coloured decoration including a circular edge on its surface.
(15) However, the two designs differ in the following features:
- height of front part of the upper: in the RCD it is slightly lower that in the prior design;
- height of the top part of the upper’s opening and of the upper’s top surface: in the RCD both are slightly lower than in the prior design;
- height of the vertical lateral side of the upper in comparison to the sole: in the RCD it is slightly higher than the height of the front sole part, whereas in the prior design both have almost the same height;
- inclination of the vertical front side of the toe cap: in the prior design it is more vertical than in the RCD;
- number, pattern of arrangement and shape of the smaller holes on the top surface of the upper. The RCD has 15 smaller oval holes arranged into 4 distinct roundly inclined rows having 3 rows of 4 holes and the very front row of 3 holes that follow the front contour of the upper, wherein the front row and the most lateral hole of each of the other rows also form a contour of 6 holes that follows the front and the outside lateral side of the upper and the sole. The prior design, on the other hand, has 13 smaller circular holes arranged less orderly, so that the 3 holes close to the upper’s opening form a straight line, the following 2 rows of 4 holes form 2, almost parallel contours rounded towards this opening and the very front row consists of 2 holes, wherein the front row and the most lateral hole of each of the other rows also form a contour of 5 holes that follows the front and the outside lateral side of the upper and the sole.
- number and arrangement of the bigger holes arranged along the bottom edge of the vertical lateral sides of the upper: the RCD has 6 such holes altogether arranged in a set of 3 at each lateral side, i.e. the inner and the outside lateral side, whereas the prior design has 1 more hole placed in the front vertical side.
- texture and decoration on the strap. The RCD has small oval protrusions arranged along its length and a figurative element in the oval protrusion placed in the top central part of the strap, where the figurative element resembles a stylized reptile and is in a colour much brighter than the colour of the clog. The prior design, on the other hand, has a bend like protrusion almost all along its length with additional protrusions forming the word “crocs” in the colour of the clog and placed in the top central part of the strap.
- decoration with circular edge on the rivet of the strap in the colour much brighter than the colour of the clog, where the decoration in the RCD includes also the figurative element of stylized reptile form and of letters arranged circularly around it and the decoration in the prior design consists of figurative element of unrecognizable form.
- decoration on the outside lateral side of the heel, which is present only in the RCD and consists of a figurative element of stylized reptile form and of a set of letters, all in the colour much brighter than the colour of the clog.
(16) The above listed differences subsist in features which are not immaterial details. Therefore, the RCD is not identical to the prior design. The submission of the Applicant that the RCD lacks novelty is therefore not founded.
B.3 Individual Character
(17) According to Article 6 CDR the RCD lacks individual character if the overall impression it produces 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 prior to the date of filing. When assessing individual character the degree of freedom of the designer in developing the design has to be taken into consideration.
(18) The informed user is familiar with the clog footwear to which the RCD relates. He is aware of the requirements that such a type of footwear must fulfill in order to perform its function as a clog and of the prior art known to the circles specialized in the sector concerned. In particular, he takes into account that the degree of freedom of the designer is limited by the requirement that such a clog must have a sole and an upper, which serve to protect the foot and provide stability to it. All these parts must be adapted to the shape of the human foot and its instep. In consequence, the informed user will pay more attention to the features where the designer was not limited in his creativity, such as the shape of the sole and the heel as well as the shape and configuration of the upper part of the upper and especially to their decorative elements.
(19) Pursuant to Article 6 CDR the overall impression produced on the informed user by the RCD must be assessed by comparison with the overall impression produced on such a user by a prior design cited, wherein the attention is focused on the shape of the design as a whole.
(20) The RCD and the prior design have both almost the same shape of the clog with almost the same configuration and proportions as observed in paragraphs 14 and 15 above. Because the general shape of the clog and its main parts prevail in the overall impression of the clog design, the two designs with almost the same shape and configuration of the upper with strap, the sole and the heel produce the same overall impression on the informed user. Considering the fairly unlimited freedom of the designer in developing the design of the clog, the small differences in the proportions and the differences in the pattern and the shape of the smaller holes on the top side of the upper, in the bigger holes of the vertical lateral sides of the upper, in the decoration on the central top part and on the rivet of the strap as well as on the heel do not render the overall impressions produced on the informed user by the RCD and by the prior design different from each other.
(21) Therefore, the RCD lacks individual character over the prior design raised in this Application.
(22) The Invalidity Division finds that the ground for invalidity of Article 25(1)(b) CDR prejudices the maintenance of the contested RCD. Therefore, the RCD has to be declared invalid.
(23) Pursuant to Article 70(1) CDR and Art. 79(1) CDIR, the Holder shall bear the fees and the costs of the Applicant.
IV. RIGHT TO APPEAL
(24) 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
Eva Udovc Peter Rodinger Martin Schlötelburg