OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET · Samsung Electronics Nordic AB LF Box 713...

OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS)

OPERATIONS DEPARTMENT – DESIGNS SERVICE

Avenida de Europa, 4 • E - 03008 Alicante • Spain

Tel. +34 96 513 9100 • Fax +34 96 513 1344

DECISION OF

THE INVALIDITY DIVISION OF 05/07/2013

IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN

FILE NUMBER ICD 8717 COMMUNITY DESIGN 001236590-0001 LANGUAGE OF PROCEEDINGS English

APPLICANTS Samsung Electronics Co. Limited

Samsung Electronics Building, 1320-10 Seocho 2-dong, Seocho-gu Seoul 137-857 Republic of Korea Samsung Electronics Austria GmbH Prater Str. 31/14.OG Wien 1020 Austria Samsung Electronics Czech and Slovak, s.r.o. Sokolovská 394/17 186 00 Praha 86 Czech Republic Samsung Electronics France S.A. 305, rue de la Belle Etoile Roissy CDG 95947 France Samsung Electronics GmbH Am Kronberger Hang 6 Schwalbach Am Taunus Hessen 65824 Germany Samsung Electronics Greece S.A. Leof. Kifisias 280 Chalandri 15232 Greece

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Samsung Electronics Magyar Zrt Samsung tér. 1 Jászfényszaru 5126 Hungary Samsung Electronics Italia SpA Via C. Donat Cattin 5 Cernusco Sul Naviglio MI 20063 Italy Samsung Electronics Baltics S.I.A Duntes 6 Riga 1013 Latvia Samsung Electronics Benelux B.V. Olof Palmestraat 10 Delft Zuid-Holland 2616 LR Netherlands Samsung Electronics Europe Logistics B.V. Olof Palmestraat 10 Delft Zuid-Holland 2616 LR Netherlands Samsung Electronics Overseas B.V. Olof Palmestraat 10 Delft Zuid-Holland 2616 LR Netherlands Samsung Electronics Poland Sp zoo ul Szturmowa 2 UBC II 02-678 Warsaw Poland Samsung Electrônica Portuguesa SA Lagoas Park Edifício 5-B-piso 0 Porto Salvo 2740-298 Lisboa Portugal Samsung Electronics Iberia SA Crta. Barajas 32 – P. E. Empresarial Omega Edif. Alcobendas 28108 Madrid Spain

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Samsung Electronics Nordic AB LF Box 713 Upplands Väsby SE-194 27 Sweden Samsung Electronics Romania SRL Sos. Pipera Tunari Nr. 1/VII Et. 2 Oras Voluntari Bucharest – Ilfov Romania Samsung Electronics (UK) Limited Samsung House 1000 Hillswood Drive Chertsey KT16 0PS United Kingdom

REPRESENTATIVE OF THE APPLICANTS Simmons & Simmons LLP

CityPoint, One Ropemaker Street London EC2Y 9SS United Kingdom

HOLDER Apple Inc.

1 Infinite Loop 95014-2084 Cupertino California United States of America

REPRESENTATIVE OF THE HOLDER BARDEHLE PAGENBERG

PARTNERSCHAFT PATENTANWÄLTE, RECHTSANWÄLTE Postfach 86 06 20 81633 München Germany

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The Invalidity Division, composed of Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Martin Schlötelburg (member), takes the following decision on 05/07/2013: 1. The Application for a declaration of invalidity of the registered Community

design No 001236590-0001 is rejected. 2. The Applicants shall bear the costs of the Holder.

I. FACTS, EVIDENCE AND ARGUMENTS

(1) Community design No 001236590-0001 (hereinafter ‘the RCD’) was registered in

the name of the Holder with a filing date of 24/09/2010 and a priority date of 19/04/2010 claimed from US design patent application No 29/360,036. In the RCD, the indication of the product reads ‘electronic devices’. In the application for the registration of the RCD, the description of the representation reads: ‘The shade lines in the figures show contour and not surface ornamentation.’ The design was published in the Community Designs Bulletin in the following views:

http://oami.europa.eu//bulletin/rcd/2011/2011_029/001236590_0001.htm

1.1 1.2

http://oami.europa.eu/bulletin/rcd/2011/2011_029/001236590_0001.htm

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1.3 1.4

1.5 1.6 1.7

(please note that all images in this document are not necessarily to scale)

(2) On 05/04/2012, the Applicants filed an application for a declaration of invalidity (‘the Application’). The fee for the Application was paid from the current account.

(3) Using the Office form for the Application, the Applicants request a declaration of

invalidity of the RCD on the grounds that the RCD does not fulfil the requirements of Articles 4 to 9 of Council Regulation (EC) No 6/2002 on Community Designs (hereinafter ‘the CDR’).

(4) As evidence, the Applicants provide, inter alia:

● a printout of Community design registration No 000748280-0001 registered in the name of the Holder of the contested RCD, entitled ‘equipment for the

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recording or reproduction of sounds or pictures’ and published on 28/08/2007 in the following views (hereinafter design D1, the Applicants’ enclosure DAS-2):

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● a printout of Community design registration No 000939731-0001 entitled ‘portable telephones’, published on 13/06/2008 in the following views (hereinafter design D2, the Applicants’ enclosure DAS-3):

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● a printout of Korean design No 300533504.0000, published on 09/07/2009 (hereinafter design D3, the Applicants’ enclosure DAS-4), as follows:

● printout of US design patent No D337,569 entitled ‘electronic notebook for

data entry’, published on 20/07/1993, containing the following images of the design (hereinafter design D4, the Applicants’ enclosure DAS-5):

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● a printout of Japanese design patent No D1142127, published on

27/05/2002 (hereinafter design D5, the Applicants’ enclosure DAS-6), as follows:

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● a printout of Japanese design patent No D1188041, published on

20/10/2003 (hereinafter design D6, the Applicants’ enclosure DAS-7), as follows:

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● a printout of Community design registration No 000493721-0002 entitled

‘intercom phones’, published on 16/05/2006 in the following views (hereinafter design D7, the Applicants’ enclosure DAS-8):

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● a printout of registration of Community design No 000569157-0005, entitled ‘mobile phones’, published in the Community Designs Bulletin on 05/09/2006 (hereinafter design D8a); and a printout of a news article posted on website www.newlaunches.com on 20/12/2006, containing an image as follows (hereinafter design D8b) (the Applicants’ enclosure DAS-9):

D8a D8a

D8a D8a

D8a D8a

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D8b

● a printout of Community design registration No 000614565-0001 entitled

‘portable telephones’, published on 26/12/2006 in the following views (hereinafter design D9, the Applicants’ enclosure DAS-10):

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● a printout of Community design registration No 000748280-0006 registered in the name of the Holder, entitled ‘equipment for the recording or reproduction of sounds or pictures’, ‘apparatus for recording, transmission or processing of information’, ‘portable communications devices’, ‘media devices’ and ‘handheld electronic devices’, and published on 28/08/2007 in the following views (hereinafter design D10, the Applicants’ enclosure DAS-11):

● a printout of Spanish design registration No D0505712-01 entitled

‘dispositivo electronico’ (hereinafter design D11, the Applicants’ enclosure DAS-12);

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● a printout of US design patent No D573,143 entitled ‘portable terminal’, published on 15/07/2008 containing the following images of the design (hereinafter design D12, the Applicants’ enclosure DAS-13):

● a printout of Community design registration No 001098149-0001, registered

in the name of the Holder, entitled ‘electronic apparatus’ and published on 06/04/2009 in the following views (hereinafter design D13, the Applicants’ enclosure DAS-14):

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● a printout of Korean design No 300529167, published on 27/05/2009

(hereinafter design D14, the Applicants’ enclosure DAS-15), as follows:

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● a printout of US design patent No D597,067 entitled ‘entertainment device’,

published on 28/07/2009, containing the following images of the design (hereinafter design D15, the Applicants’ enclosure DAS-16):

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● a printout of US design patent No D602,488 entitled ‘electronic book’,

published on 20/10/2009 in the following views (hereinafter design D16, the Applicants’ enclosure DAS-17):

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● a printout of Korean design No 30-0546031, entitled ‘portable wireless

telephones’ and published on 24/11/2009 (hereinafter design D17, the Applicants’ enclosure DAS-18), as follows:

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● a printout of US design patent No D605,157 entitled ‘cellular phone’,


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● a printout of US design patent No D604,716 entitled ‘entertainment device’, published on 24/11/2009 in the following views (hereinafter design D19, the Applicants’ enclosure DAS-20):

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● a printout of Taiwanese design patent No D129176, published on 11/06/2009 (hereinafter design D20, the Applicants’ enclosure DAS-21), as follows:

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● a printout of Taiwanese design patent No D132490, entitled ‘portable information terminal unit’, published on 11/12/2009 (hereinafter design D21, the Applicants’ enclosure DAS-22), as follows:

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● a printout of Community design registration No 001016802-0001, registered in the name of the Holder, entitled ‘electronic devices’ and published on 12/01/2009 in the following views (hereinafter design D22, the Applicants’ enclosure DAS-23):

● a printout of Community design registration No 001098149-0007, registered in the name of the Holder, entitled ‘electronic apparatus’ and published on 06/04/2009 in the following views (hereinafter design D23, the Applicants’ enclosure DAS-24):

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● a printout of US design patent No D600,690 entitled ‘entertainment device’,


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● a printout of Community design registration No 001668781-0001 entitled ‘cellular phones’, published on 18/02/2010 in the following views (hereinafter design D25, the Applicants’ enclosure DAS-26):

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● a printout of Taiwanese design patent No D126997, registered in the name of the Holder, entitled ‘portable information terminal’ and published on 21/04/2009 (hereinafter design D26, the Applicants’ enclosure DAS-27), as follows:

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● a printout of Taiwanese design patent No D126996, registered in the name of the Holder, entitled ‘portable information terminal’ and published on 21/04/2009 (hereinafter design D27, the Applicants’ enclosure DAS-28), as follows:

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● a printout of Community design registration No 000888920-0001, registered in the name of the Holder, entitled ‘electronic devices’ and published on 13/05/2008 in the following views (hereinafter design D28, the Applicants’ enclosure DAS-29):

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● a printout of Community design registration No 000910591-0001 entitled ‘audio/video appliances for reproducing sounds or images’, published on 30/04/2008 in the following views (hereinafter design D29, the Applicants’ enclosure DAS-30):

(5) In the reasoned statement, the Applicants submit that the priority claim from US design patent application No 29/360,036 is not in respect of the same design pursuant to Article 41(1) CDR. The priority claim should be disallowed, and the relevant date for assessment of validity should be 24/09/2010.

(6) The Applicants submit a number of designs which they allege were made available to the public prior to the date of priority of the contested RCD. All the prior designs were disclosed in such a way that it could reasonably be expected

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to come to the attention of the circles concerned operating within the EU. Each of the designs submitted creates the same overall impression on the informed user as the RCD.

(7) The informed user is the user of electronic devices, as indicated in the application

for the registration of the RCD, and also the user of equipment for recording or reproduction of sounds or pictures; data processing equipment as well as peripheral apparatus and devices; and communications equipment and devices, the products of three subclasses of the International Classification for Industrial Designs in which the contested RCD was classified upon the registration of the design. According to the Applicants, the following features limit the freedom of the designer of the said products:

● the product must be made of durable metal or plastic; ● the product must be pocket sized and light; ● the product must be as flat and thin as possible; ● the side of the product may contain metal as reinforcement in order to

prevent damage; ● the screen has to be as large as possible to maximise text/visual/gaming

capacity; ● a rectangular shape makes it easy to read documents and is familiar to

costumers; ● the corners must be rounded to avoid catching on clothing etc.; rounded

corners also prevent damage during processing and assembly, and they are preferred for safety reasons;

● there will usually be at least one button (on/off) and potentially other buttons (volume etc.);

● many such products now include a camera; ● many electronic devices require a connection to be recharged/powered;

and ● a flat profile allows an undistorted view of the internal display, reduces the

accumulation of dirt on and around the device and is ideal for a touch-sensitive screen.

(8) The Applicants submit that elements of the RCD dictated by technical function

ought not to be given significant weight by the informed user. These include many or all of the listed matters. Designers of functional elements retain freedom to create distinctive designs, but less distinctive designs are less likely to create a different overall impression. Features common to the design for the goods at issue, features not easily perceived by the informed user and similarities in respect of features imposed by design constraints will be less important and attractive to the informed user than features for which the designer was free to develop the design. Features of the RCD that were chosen exclusively for the purpose of designing a product that performs its function do not qualify for protection under the CDR.

(9) Regarding the prior design D25, the Applicants hold that both the prior and the

contested designs are rectangular products with evenly rounded corners and a flat surface covering the front of the product. They have a band around the flat (clear) surface. Both the designs contain centred speaker grilles at the top of the product. Thus, the designs do not create a different overall impression on the informed user.

(10) The Applicants further claim that prior designs D28, D10, D2 and D3 are very

similar to the RCD. All the designs concern rectangular products with evenly

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rounded corners and a flat (clear) surface covering the front of the product. They have a band around the flat surface. All the designs have substantial borders above and below the display screen and narrower borders on either side of the screen. Thus, the prior and the contested designs do not create a different overall impression on the informed user under Article 6 CDR.

(11) In the rejoinder, the Holder submits that the priority has been claimed properly

because the priority application contains a set of line drawings corresponding to the representations of the RCD.

(12) The Holder further submits that part of the evidence concerning D11 (DAS-12)

does not originate from the official online database of the Spanish Patent and Trademark Office, the evidence is not in the language of proceedings and no translation was delivered within the prescribed time.

(13) The Holder further submits that the Applicants do not provide adequate evidence

to demonstrate the earlier disclosure of design D8 on the internet. The disclosure could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community, because of countless number of existing blogs and websites. Unlike published IP rights, which can be easily searched, the knowledge contained in blogs or websites cannot be systematically searched and thus blog contributions are acts of publication that even attentive members of the trade circles in question could only have discovered by chance and, therefore, as such, have to remain out of consideration. For this reason, designs D8 and the evidence (DAS-9) shall be excluded from the assessment of novelty and individual character.

(14) The Holder further submits that the illustrations of the design D8 do not disclose

sufficient details. The image is of poor quality incapable of challenging the individual character of the contested RCD and it may not be taken into account. Moreover the disclosure of the prior design shows only the front view. The individual character must be assessed on the overall impression delivered by all views on the prior design. Only the images contained in the registration certificate shall be taken into consideration.

(15) According to the Holder, the RCD is ‘a generally rectangular device having a thin

flat profile, with rounded corners and a generally symmetrical appearance, a flat front having a transparent surface; under the transparent surface, a prominent rectangular display area enclosed by narrow lateral borders and wider top and bottom borders, features located in the bottom border, a rounded horizontal feature located in the top border, a uniform band surrounding the sides, the sides being flat and vertical in relations to the front and back with stepped transitions, and a flat back having an essentially shiny surface’.

(16) Regarding features of appearance dictated by technical function, the Applicants

fail to provide any relevant facts or evidence to support this claim. The mere listing of features and mere assertion of alleged functionality do not comply with established standards of substantiation. The feature of durability of material and enforced casing made of metal, claimed as being solely dictated by the technical function of the product, must be dismissed because material is not claimed in the contested RCD. The claimed lightness of the product has no impact on the appearance of the product. Where various design alternatives with regard to features listed by the Applicants exist, particularly flatness of the product, size of the screen, rectangular shape, rounded corners and functional elements such as buttons and cameras, the creative freedom of the designer is demonstrated in

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prior art and thus such features are not solely dictated by the technical function of the product. According to case-law, the informed user pays particular attention to the specific appearance of any functional element.

(17) According to the Holder, the Applicants do not consider the designs submitted to be identical with the contested RCD; therefore, the RCD is new in the sense of Article 5 CDR.

(18) The assessment of individual character must be done side by side with the prior

designs. The Applicants do not provide any such comparison, with the exception of a few words about D2, D3, D10, D25 and D28. Apart from that, all the prior designs are missing some of the features present in the RCD or they include further, additional features which do not form part of the contested RCD.

(19) The Holder concludes that the overall impression of the contested RCD produced

on the informed user clearly differs from the overall impression produced on such a user by the alleged prior designs and the submission of lacking individual character is unfounded.

(20) In reply to the Holder’s observations, the Applicants submit that the date and

images disclosed in documents in a language other than the language of the proceedings are not affected by this deficiency and only the texts should be disregarded. The date of publication of registered designs is identified by INID code 45 of WIPO standard ST.9, and all the evidence concerning registered designs originates from the official registers. The images and dates of online disclosures are relevant and the onus of proving that a particular disclosure is too obscure to be excluded from the assessment of novelty and individual character pursuant to Article 7(1) CDR is on the Holder. It is difficult to conceive of any publication on the internet that would be too obscure, especially in a case about portable electronic devices. The circles specialised in this sector are particularly ‘tech savvy’, and information quickly percolates online. The circles specialised in this sector are also likely to be backed by significant commercial resources, allowing them to keep abreast of developments in this highly competitive global industry. Large companies devote significant resources to monitoring competitors’ designs.

(21) Design D8 has been widely publicised because it won numerous industry awards, as evidence of which the Applicants submit an article posted on the Wikipedia website. The Applicants also submit further disclosures of D8 on www.twntelecom.com on 02/02/2009, and on www.domramsey.com on 31/05/2007. The disclosure on www.twntelecom.com contains the following images of D8:

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(22) Regarding the quality of the reproductions, the Applicants hold that the established case-law does not require a prior design to be shown in all views. According to the Applicants the prior designs can be assessed on the overall impression even if they are not shown in all views in which the RCD is registered, the prior designs are not precluded from assessment even if not shown as clearly as the RCD and it is not necessary to be able to deduce every feature of the prior design from the disclosure where such features are of little relevance to the overall impression. The evidence submitted by the Applicants is of sufficient quality.

(23) Pursuant to the case-law, designers of functional elements retain freedom to

create distinctive designs, which does not mean that these elements are not dictated solely by their technical function. Many (if not all) elements of the RCD are solely dictated by the technical function; therefore, these elements do not qualify for protection under the CDR or at least they are partly dictated by technical function and they will have a limited impact on the informed user.

(24) On 19/11/2012, the Applicants submitted evidence of disclosure of additional

seven designs. They also submitted ‘images of the Registrant’s [the Holder’s] original iPhone, which evidence a design similar to that shown in DAS-11’:

(25) The Applicants hold that the Holder has failed to establish that the RCD creates a different overall impression on the informed user from the prior designs submitted by the Applicants and differences identified by the Holder do not suffice to create a different overall impression.

(26) On 12/11/2012, the Applicants submitted evidence of disclosure of additional 48

designs.

(27) In its rejoinder, the Holder submits that Article 7 CDR does not require the Holder to show positively that the relevant circles actually had no knowledge, but it is

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sufficient to demonstrate that knowledge was not possible within the limits of what was reasonable. The facts and background information provided by the Holder about the nature, structure, distribution and popularity of the sources, as well as the number and variety of different sources in the field, are sufficient.

(28) Regarding the individual character, the Holder reiterates that, as shown by the

various design alternatives, none of the features has a limiting effect on the degree of freedom of the designer, nor are they of less importance in determining the overall impression of the RCD. Likewise, the informed user pays particular attention to the specific appearance of any functional element. As a result, the features noted are neither solely nor ‘partly’ dictated by technical function and none of the features can be disregarded. Where the degree of freedom of the designer is limited by technical constraints, differences between the RCD and the prior designs are already sufficient to produce a different overall impression on the informed user. The individual character must be assessed by comparison of the RCD with each prior design rather than by comparison with the design corpus. It does not comply with the standard of the test of individual character to pick out individual features that can be found in the design corpus and, on this basis, deny the individual character of the contested RCD.

(29) An overall assessment of the design corpus may be relevant only with regard to

the degree of freedom of the design in developing the design, but the Applicants did not name the concrete features they consider as being ‘common’ in the existing design corpus.

(30) For further details about the facts, evidence and arguments submitted by the

parties, reference is made to the documents on file. II. GROUNDS OF THE DECISION

A. Admissibility

(31) 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) CDIR1. 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 Article 28(1) CDIR are fulfilled as well. The Application is, therefore, admissible.

B. Substantiation B.1 Convention Priority

(32) An application for a Community design may claim the priority of one or more

previous applications for the same design or utility model in or for any State party to the Paris Convention, or to the Agreement establishing the World Trade

1 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council

Regulation (EC) No 6/2002 on Community designs.

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Organisation (Article 41 CDR; Article 8 CDIR). The right of priority is six months from the date of filing of the first application.

(33) The effect of the right of priority shall be that the date of priority shall count as the

date of filing of the application for a registered Community design for the purpose of Articles 5, 6, 7 and 22, Article 25(1)(d) and Article 50(1) CDR (Article 43 CDR).

(34) A priority claim relating to the ‘same design or utility model’ requires identity with

the corresponding Community design without addition or suppression of features (The Manual concerning the Examination of Designs Invalidity Applications, OHIM June 2012, Section C.5.1.8).

(35) The priority application No 29/360,036 submitted by the Holder of the contested

RCD with the claim of priority in the application for the registration of the RCD contains, inter alia, a set of representations (an embodiment of claimed design invention) identical to the representations of the contested RCD. Therefore, the priority claim is accepted and the effective date of the validity of the RCD is thus the date of filing of the design patent application 29/360,036, i.e. 19/04/2010.

B.2 Disclosure

(36) Pursuant to Article 7(1) CDR, for the purpose of applying Articles 5 and 6, a

design shall be deemed to have been made available to the public if it has been published following registration before the date of filing of the application for registration of the design or the date of priority, as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community.

(37) Enclosure DAS-9 contains a design disclosed by virtue of registration of the Community design No 000569157-0005 and on the internet. In the view of the Office, the registered design (D8a) is not the same as the design on the internet, which is disclosed in a particular colour combination and with the PRADA sign on the front (D8b); therefore, the designs are considered as two designs.

(38) Design D8b has been disclosed on the internet. As a matter of principle,

disclosures derived from the internet form part of the prior art. Information disclosed on the internet is considered to be publicly available as of the date the information was posted.

(39) As the evidence of design D8b, the Applicants submitted printouts of news articles on three websites, all of them posted on the websites before the date of priority of the RCD. According to the Manual, features of a prior design can be supplemented by additional features that were made available to the public in different ways, as long as these representations relate to one and the same earlier design (see judgment of 22/06/2010, T-153/08, ‘Communications equipment’, paragraphs 25-30). The images submitted concern the same design; therefore, all the disclosures are taken into consideration.

(40) Neither restricted access to a limited circle of people (e.g. by password

protection) nor requiring payment for access (analogous to purchasing a book or subscribing to a journal) prevents a web page from forming part of the state of the art. It is sufficient if the web page is available without any bar of confidentiality

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and the accessibility requirements can reasonably be met by the European professionals in the circles concerned.

(41) The Holder claims that the internet disclosures do not meet the second condition,

as they are events which could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community, because the websites on which the prior designs were disclosed cannot be systematically searched and thus they remain unknown to the Community circles specialised in the sector concerned.

(42) The Office does not agree with the Holder. The internet disclosures are not

unsearchable. To search on the internet, users, either the broad public or experts in a particular field of industry, usually use the service of web browsers such as Google or Yahoo. By applying key words, users can obtain results of websites dealing with the given subject matter. Therefore, the information on the internet is not irretrievable, as the Holder suggests.

(43) The internet is a constantly changing environment. Web pages are updated

mostly without archiving previous contents. Therefore, the information contained on it appears and disappears over time. However, the prior designs have been on the internet and they have been accessible and retrievable by the Applicants, the Holder and other users, which can include the European professional in the field of portable electronic devices. The disclosures are not obscure in the sense in which the limitation of the absolute novelty in Article 7(1) CDR was intended according to the travaux préparatoires. It is not the situation when a design

disappears from the mankind’s memory over time and is available only in a local museum or traded on a remote local market. An obscure design on the internet would have to be irretrievable or hardly retrievable by regular browsers, which is not the case of the prior designs. Therefore, the exception according to Article 7(1) CDR does not apply.

(44) The Applicants further claim 29 prior designs. Designs D1 to D7, D8a and D9 to D29 are Community designs registered at the Office, designs registered at national offices and design patents granted. They have been disclosed by publication resulting from the administrative acts at the respective offices. The Applicants submit, as proof of these events, extracts from databases of the offices providing online access to the information on the registers, and copies of registrations. The dates of publishing are stated by the respective administrative offices and they are not disputed by the Holder. Where the documents submitted are not in the language of proceedings, the date of publishing is provided by the INID code of WIPO standard for bibliographic data of patents and designs documents. The Office thus considers disclosures of these designs as being proven. The dates of disclosure of all the designs precede the date of priority of the RCD; therefore, the designs are disclosed in compliance with Article 7(1) CDR.

(45) The only exception in the designs listed in paragraph 44 above is design D11,

which contained in the Spanish design registration. The Applicants submitted an extract from the online database of the Spanish Patent and Trade Mark Office and printouts of screenshots of the images proving they were taken from the database. The office has no doubt about the origin of the images.

(46) The evidence of disclosure of design D11 is in Spanish, the registration record

does not contain international standard codes and the Applicants did not provide translations of the document. The date of publication of the registration is only

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stated in the witness statement of David Stone. The disclosure of the design does not meet the requirements of Article 29(5) CDIR; therefore, design D11 is disregarded from the assessment of novelty and individual character.

(47) At a later stage, the Applicants submitted 55 additional prior designs. As the

subject matter of the proceedings has to be defined in the Application, additional earlier designs when submitted at the later procedural stage of the reply, if the effect is to alter the subject matter of the proceedings, are inadmissible (see the Manual concerning the Examination of Design Invalidity Applications, OHIM June 2012, Sections B.1.4.1, A.9.1 and A.9.2). For this reason, enclosures DAS-35 to DAS-41 and DAS-42 to DAS-89, submitted by the Applicants for the first time in the reply to the Holder’s rejoinders, are found inadmissible.

B.3 Technical Function

(48) Pursuant to Article 8(1) CDR, a Community design shall not subsist in features of

appearance of a product which are solely dictated by its technical function. (49) In compliance with the Manual of the Office concerning the examination of design

invalidity applications, Article 8(1) CDR must be interpreted as meaning that the ‘CDR denies protection to those features of a product’s appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product’s visual appearance’ (decision of 22/10/2009, R 690/2007-3, ‘Chaff cutters’, paragraphs 30 et seq.).

(50) Furthermore, in compliance with the Manual, to determine features solely dictated

by technical function it is necessary to determine what the technical function of that product is. The relevant indication in the application for registration of that design (Article 36(2) CDR) should be taken into account and also, where necessary, the design itself, insofar as it makes clear the nature of the product, its intended purpose or its function (see, by analogy, judgment of 18/03/2010, T-9/07, ‘Representation of a circular promotional item’, paragraph 56).

(51) The indication of products of the RCD is ‘electronic devices’. The representations

of the RCD show an electronic device having a flat front and casing apparently allowing it to be held and carried. The technical function of the product in which the RCD is incorporated is to record, transmit and display information and to allow the user to be mobile, regardless of the place of use. In order to be portable, therefore, the device cannot be excessively large or robust, although it does not necessarily need to be as thin as possible, as suggested by the Applicants. It is supposed to display information, so it requires a screen and elements to trigger and operate the functions of the device. The device requires at least an on/off button and it requires other functionalities and elements such as a speaker, slots, etc. The configuration of the device, the construction and placement of the elements, however, is a matter of the designer’s will. The Office agrees with the Holder that the features of the material such as durability are not part of the claim resulting from the registration of the contested Community design, and the weight, as it is not a visual feature, is beyond the scope of the assessment.

(52) The Manual states that ‘Whether Article 8(1) CDR applies must be assessed

objectively, not in the perception of the informed user, who may have limited knowledge of technical matters.’ Accordingly, the Board of Appeal held in

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decision of 29/04/2010, R 0211/2008-3, ‘Fluid distribution equipment’, paragraph 35: ‘These matters must be assessed objectively: it is not necessary to determine what actually went on in the designer’s mind when the design was being developed. The matter must be assessed from the standpoint of a reasonable observer who looks at the design and asks himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen.’

(53) The market for portable electronic devices is highly competitive. The products in

this field compete in terms of not only their technical but also their design features. The nature of the product speaks in favour of strong design considerations forced by market requirements. The design of the product plays a significant role in marketing this kind of product. All the components of the products are tailored to the final overall look. The particular shape, the proportions of the product and its components, and their configuration are carefully considered. The Office did not find anything on file to indicate that the product in which the RCD is incorporated or any of its parts or elements were developed with regard to purely functional considerations.

(54) For the reasons given above, none of the features nominated by the Applicants

(flat display, slim profile, shape, rounded corners, functional elements or camera) are considered to be solely dictated by the technical function pursuant to Article 8(1) CDR.

B.4 Novelty

(55) Pursuant 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.

(56) The Office finds the following essential features in the contested RCD:

● the device is composed of a flat front, a substantially flat back and narrow sides;

● it is substantially rectangular with evenly rounded corners; ● it has a front screen indented from and raised above the side walls; ● the screen is divided into the central rectangular display field and its

surrounding; ● the side walls are perpendicular to the front, forming an indented and raised

strip around the front and back of the device; ● there are several buttons and slots incorporated in the side walls; ● there is a home button and slots on the front area surrounding the central

display; ● there are two round elements on the back of the device.

(57) Prior design D1 is incorporated in a portable communication device. It differs from

the RCD in the following features:

● the casing of the device forms rounded side walls bevelled towards the back of the device;

● the casing has a gentle bezel at the point where it touches the screen; ● there are no functional elements such as buttons, switches or slots

incorporated in the device.

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The differences in the shape of the casing and the elements recognised in the RCD and the prior design are not immaterial details; therefore, design D1 does not constitute an obstacle to the novelty of the RCD.

(58) Prior design D2 is incorporated in a portable telephone. It differs from the RCD in

the following features:

● the device has slots and a small round element in the front but no home button and no oval slot;

● the device has a distinctive round element in the back raised above the surface, and a small round element;

● the sides have some middle strips flowing around buttons incorporated in side walls.

The recognised differences in the back side of the device and elements between the RCD and the prior design are not immaterial details, therefore design D2 does not constitute an obstacle to the novelty of the RCD.

(59) Prior design D3 differs from the RCD in the following features:

● on the front, the prior design has the left top round corner more indented; ● the indented front area is bevelled in the prior design while it is vertical in

the RCD; ● there are two oval buttons on opposite long sides of the prior design but

three buttons on the left long side of the RCD; ● the device has a distinctive round element raised above the surface, and

some perforations on the back. The recognised differences in the back and the front between the RCD and the prior design are not immaterial details; therefore, design D3 does not constitute an obstacle to the novelty of the RCD.

(60) Prior design D4 is incorporated in an electronic notebook for data entry. It differs from the RCD in the following features:

● the device is thinner than the RCD; ● there are no elements in the front, back or sides.

The recognised differences in the shape of the device and elements between the RCD and the prior design are not immaterial details; therefore, design D4 does not constitute an obstacle to the novelty of the RCD.


● there is a wide frame on the front, having equal width around the central part and some perforations around the short sides;

● the sides are round and bevelled towards the back of the device; ● there are no elements in the front of the device; ● there are different elements on the sides and back of the device from the

elements incorporated in the RCD.

The differences in the front of the devices, the shape and the elements recognised in the RCD and the prior design are not immaterial details; therefore, design D5 does not constitute an obstacle to the novelty of the RCD.

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● the device has a shape resembling a needle in profile, with one short side wider and the other thinner;

● the sides are substantially thinner than the sides of the RCD; ● there are different round elements in the front from those in the front of the

RCD; ● the front of the device is divided into two areas: a framed rectangular area

and a raised part on a short side. The recognised differences in the shape of the device and the elements between the RCD and the prior design are not immaterial details; therefore, design D6 does not constitute an obstacle to the novelty of the RCD.

(63) Prior design D7 is incorporated in an intercom phone. It differs from the RCD in the overall shape, which is a rectangle with sharp corners and sharp edges. The front of the device has a small central display area and large top and bottom functional areas. The differences recognised in the RCD and the prior design are not immaterial details; therefore, design D7 does not constitute an obstacle to the novelty of the RCD.

(64) Prior design D8a is incorporated in a mobile phone. It differs from the RCD in the following features:

● there is no round home button on the front bottom but a stripe with a narrow

oval element; ● the is a central round element and a division on the back, several elements

in the left top corner on the back, and several different elements on the sides from those incorporated in the RCD.

The differences in the elements recognised in the RCD and the prior design are not immaterial details; therefore, design D8a does not constitute an obstacle to the novelty of the RCD.

(65) Prior design D8b differs from the RCD in the following features:

● there is no round home button on the front bottom but a stripe with some functional buttons;

● the is a central round element and a division in the back, a camera-like element in the top left corner in the back and several different elements on the sides from those incorporated in the RCD.

The differences in the elements recognised in the RCD and the prior design are not immaterial details; therefore, design D8b does not constitute an obstacle to the novelty of the RCD.

(66) Prior design D9 is incorporated in a portable telephone. The prior design resembles a case with a featureless front incorporating only a screen, and the sides forming sharp edges with a slightly oval front and back. The sides are bevelled towards the centre of the sides. The RCD differs in all recognised features: the shape, the contours and the elements. The differences are not immaterial details; therefore, design D9 does not constitute an obstacle to the novelty of the RCD.

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(67) Prior design D10 is incorporated in a portable communication device. It differs from the RCD in the following features:

● it has a front screen bordered by the narrow line of the casing; ● the screen is divided into three fields: a rectangular inner field, the top area

with an oval element and the bottom area with a round element; ● the casing forms rounded side walls bevelled towards the flat back of the

device; ● the casing has a gentle bezel at the point where it touches the screen; ● there are no elements on the sides and back of the device.

The differences in the shape and the elements recognised in the RCD and the prior design are not immaterial details; therefore, design D10 does not constitute an obstacle to the novelty of the RCD.

(68) Prior design D12 is incorporated in a portable terminal. The prior design is much thicker than the RCD in profile and the walls are curved rather than vertical to the front and back. The display area is framed by a contrasting surface and the sides are divided into upper and lower parts. The RCD differs in all recognised features: the shape, the contours and the elements. The differences are not immaterial details; therefore, design D12 does not constitute an obstacle to the novelty of the RCD.

(69) Prior design D13 is incorporated in an electronic apparatus. The prior design has the walls of the casing bevelled smoothly towards substantially flat back. The display area spreads over the entire front. The RCD differs substantially in shape; therefore, design D13 does not constitute an obstacle to the novelty of the RCD.

(70) Prior design D14 has more complex shape and it incorporates more elements on

the front and sides than the largely plain RCD. The side walls curve towards the back instead of the indention in the RCD. The display area is not framed in a surrounding area. The RCD differs in all recognised features: the shape, the contours and the elements. The differences are not immaterial details; therefore, design D14 does not constitute an obstacle to the novelty of the RCD.

(71) Prior design D15 and D19 are both incorporated in entertainment devices. The designs differ only in an element on the back; therefore, they are compared with the RCD together. They differ from the RCD in the following features:

● the devices are clearly divided by a line in the bottom area; ● the devices are round from the front to the back, having no vertical sides; ● there is no home button on the front; ● the sides and back contain several functional elements which differ from

those incorporated in the RCD. The recognised differences in the shape and elements between the RCD and the prior designs are not immaterial details; therefore, designs D15 and D19 do not constitute an obstacle to the novelty of the RCD.

(72) Prior design D16 is incorporated in an electronic book. It substantially differs from the RCD in the shape and the casing, which curves on the sides towards the back. There are no elements on the back and there are different elements on the sides from those in the RCD. The front area is divided into a display area and a home button area. The RCD differs in all recognised features: the shape, the

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contours and the elements. The differences are not immaterial details; therefore, design D16 does not constitute an obstacle to the novelty of the RCD.

(73) Prior design D17 is incorporated in a portable wireless telephone. It substantially differs from the RCD in the shape and the casing, which has curved sides. There are different elements on the sides from those in the RCD. Design D17 does not constitute an obstacle to the novelty of the RCD.

(74) Prior design D18 is incorporated in a cellular phone. It substantially differs from

the RCD in the shape and the casing, which has curved long sides and vertical short sides. The device is flat from the front but oval on the back. There are no elements in the front and long sides and different elements on the short sides from those in the RCD. Design D18 does not constitute an obstacle to the novelty of the RCD.


● the device is thinner than the RCD; ● there is no home button in the front, and there are different elements on the

thin, rounded sides.


(76) Prior design D21 is incorporated in a portable information terminal unit. It differs from the RCD in the following features:

● in profile, the device gives the impression of being composed of several

layers; ● there are no elements and no display area on the front; ● the back has indented corners, a square element and an opening in the

middle of the back; ● there are different elements incorporated in the sides, which are not vertical

but rounded.


(77) Prior design D22 is incorporated in an electronic device. The prior design has the walls of the casing bevelled smoothly towards the back. The RCD differs substantially in the shape; therefore, design D22 does not constitute an obstacle to the novelty of the RCD.

(78) Prior design D23 is incorporated in an electronic apparatus. The prior design has the walls of the casing bevelled smoothly towards the back. The RCD differs substantially in the shape; therefore, design D23 does not constitute an obstacle to the novelty of the RCD.

(79) Prior design D24 is incorporated in an entertainment device. It differs from the RCD in the following features:

● the device is thinner than the RCD;

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● there is no home button in the front, and there are different elements on the thin, rounded sides and the substantially flat back.


(80) Prior design D25 is incorporated in a cellular phone. The prior design has the walls of the casing bevelled smoothly towards the substantially flat back, and the front screen is gently bevelled towards the front. The display area spreads all over the front. There is no home button in the front and the elements on the sides and back differ from the RCD. The RCD differs substantially in the shape and the elements; therefore, design D25 does not constitute an obstacle to the novelty of the RCD.

(81) Prior designs D26 and D27 are both incorporated in portable information terminals. The designs differ only in an element on the short side incorporated in D26, while it is omitted in D27; therefore, the designs are compared with the RCD together. They differ from the RCD in the following features:

● the devices have rounded walls which are bevelled towards the back; ● the front has a substantial frame around a featureless area; ● the sides and back do not contain any elements except a rectangular

element and some perforations on the bottom short side of D26; ● there is an opening in the bottom area. The recognised differences in the shape of the device and elements between the RCD and the prior designs are not immaterial details; therefore, designs D26 and D27 do not constitute an obstacle to the novelty of the RCD.

(82) Prior design D28 is incorporated in an electronic device. The prior design has the walls of the casing bevelled smoothly towards the back and gently towards the front. The RCD differs substantially in shape; therefore, design D28 does not constitute an obstacle to the novelty of the RCD.

(83) Prior design D29 has a simpler shape and more elements incorporated on the sides than the RCD. There are no indentions on the sides in the prior design. The design resembles a box. The front is not divided into a display area and surround and the back is featureless. The RCD differs in all recognised features: the shape, the contours and the elements. The differences are not immaterial details; therefore, design D29 does not constitute an obstacle to the novelty of the RCD.

B.5 Individual Character

(84) Pursuant to Article 6 CDR, the RCD lacks individual character if the overall

impression produced 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 before the date of filing of the RCD or the date of the priority claimed. In assessing the individual character of the RCD, the degree of freedom of the designer in developing the design shall be taken into consideration.

(85) The informed user is, according to the established case-law, a particular

observant who 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

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product is intended (see judgment of 09/09/2011, T-10/08, ‘Internal combustion engine’, paragraphs 23 to 25).

(86) In the present case, the informed user is familiar with designs of portable

communication devices for transmitting voice and information. S/he is aware of the designs of products which were available before the date of priority of the contested RCD and s/he is aware of constraints to the designer’s freedom given by technical requirements and the function of the device.

(87) The device has to be portable and it has to have dimensions suitable for it to be

held and manipulated in one hand; therefore, the most common shape is rectangular or oval. It requires a screen to display information and some functional elements to operate it. Portable display devices can differ in the proportions of their sides. The screen of the device is expected to have a display and to be rectangular, although the division of the screen or application of some borders around the screen is not dictated by tight constraints.

(88) The portable device is supposed to be easily handled, carried, held and easily

transported. The user holds the device in the hand and it must be easily picked up when placed on either its front or its back. Therefore, the informed user, who is deemed to be particularly observant, does not take only the front part of the device into consideration, despite this being the part of the product which allows it to function. When making a choice among products of the same or similar function on the market, the informed user also considers the casing and the overall shape, and they are able to differentiate between different products. What matters is not only the functional part of the device, but also the shape and design of its body. The informed user is particularly attentive also due to the saturation of the market in the given field, which was very high before the date of priority of the RCD, as follows from the numerous examples of prior art submitted by the Applicants. The density in the given field makes the informed user more sensitive to the differences between products of the same or similar function (see judgment of 13/11/2012, T-83/11, ‘Radiators for heating’, paragraph 81). The user is attentive to even small differences between the designs.

(89) As noted above, the essential features of the RCD are the flat front and back

sides, the indented sides with incorporated elements, the rectangular display area in front and the surrounding area with some elements at the top and the round home button at the bottom. The device is slim. Although these features, individually, may be part of the design corpus, in their combination the contested RCD differs from the examples submitted of the prior art.

(90) The RCD is registered for the particular shape of the portable display device.

Comparing the prior and the contested designs, all the prior designs differ in shape and elements, which makes the overall impression of these designs different from the shape and elements incorporated in the RCD.

(91) Prior designs D1, D5, D10, D12, D13, D15, D16, D17, D19, D22, D23, D24, D25,

D26, D27 and D28 have rounded or bevelled sides, which contribute to different perceptions of the designs. Prior designs D5, D12, D15, D16, D19, D20, D24, D25, D26 and D27 also differ in the front side and thus depart even further from the contested RCD; prior design D12 is much thicker in profile than the RCD.

(92) Prior design D2 differs from the RCD in the front and back, which contains a

distinctive round element raised above the flat back. The impression from the two compared designs is not the same. Design D3 substantially differs from the RCD

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in the back; thus the overall impression from the design is not the same as the impression produced on the informed user by the contested RCD.

(93) Design D4 is thinner than the RCD, and it contains no features except a

rectangular display area in the front. The overall impression of the design is different from the impression produced on the informed user by the RCD.

(94) Prior designs D6, D7, D9 and D18 differ substantially in their shape; therefore,

they produce a different overall impression from the impression produced on the informed user by the RCD.

(95) Designs D8a and D8b differ in the front and back; thus they give a different

overall impression from the impression produced on the informed user by the RCD.

(96) Designs D14 and D29 have vertical sides but without indention of the side walls,

and the designs differ in the front and back. The overall impression of the designs is different from the impression produced on the informed user by the RCD.

(97) Design D20 has the side walls rather bevelled than indented and design D21

gives the impression of being composed of layers, which give the impression of a more complex shape of the design. The designs also differ from the RCD in the front and back. The overall impression of the designs is different from the impression produced on the informed user by the RCD.

(98) The contested RCD has individual character in relation to the prior designs

submitted as D1 to D7, D8a, D8b, D9, D10 and D12 to D29. C. Conclusion (99) The grounds of invalidity pursuant to Article 25(1)(b) in conjunction with Articles 5

and 6 CDR are unfounded. III. COSTS

(100) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicants shall bear

the costs of the Holder. (101) The costs to be reimbursed by the Applicants to the Holder are fixed at the

amount of EUR 400 for the costs of representation.

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IV. RIGHT TO APPEAL

(102) 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 (Article 57 CDR).

THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg

Date post:	20-Feb-2020
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