office for harmonization in the internal market - euipo

OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPERATIONS DEPARTMENT – DESIGNS SERVICE
DECISION OF
THE INVALIDITY DIVISION
OF 05/07/2013
IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY
OF A REGISTERED COMMUNITY DESIGN
FILE NUMBER
COMMUNITY DESIGN
LANGUAGE OF PROCEEDINGS
ICD 8539
000181607-0001
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
Avenida de Europa, 4 • E - 03008 Alicante • Spain
Tel. +34 96 513 9100 • Fax +34 96 513 1344
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
2
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
EC2Y 9SS London
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
3
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 000181607-0001 is rejected.
2.
The Applicants shall bear the costs of the Holder.
I.
FACTS, EVIDENCE AND ARGUMENTS
(1)
Community design No 000181607-0001 (hereinafter ‘the RCD’) has been
registered in the name of the Holder with a date of filing of 24/05/2004 and the
date of priority 17/03/2004 claimed from the US design patent application
No 29/201,636. In the RCD, the indication of products reads a ‘handheld
computer’. In the application for the registration of the RCD, the description of the
representation of the RCD reads: ‘1.1 top perspective view; 1.2 bottom
perspective view; 1.3 top plan view; 1.4 bottom plan view; 1.5 left side view; 1.6
right side view; 1.7 lower side view. The parts shown in broken lines are by way
of illustration only and do not form part of the design.’ The design was published
in the Community Designs Bulletin in the following views:
http://oami.europa.eu//bulletin/rcd/2004/2004_067/000181607_0001.htm
1.1
1.2
1.3
1.4
1.5
1.6
4
1.7
(please note that all images in this document are not necessarily to scale)
(2)
On 09/08/2011, 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 it does not fulfil the requirements of
Articles 4 to 9 of Council Regulation (EC) No 6/2002 on Community Designs
(hereinafter ‘CDR’). In the reasoned statement of 24/08/2011, the Applicants also
claim that the RCD does not correspond to the definition of a design under
Article 3(a) CDR.
(4)
As evidence the Applicants provide, inter alia:
●
a printout of stills from the Knight-Ridder Inc. promotional film ‘The Tablet
Newspaper: A Vision for the Future’, containing images of the Tablet
Newspaper as follows (hereinafter design D1); an article from the October
1994 issue of American Journalism Review discussing the Tablet
Newspaper and an extract from the published proceedings of the CHI’95
conference held on 07-11/05/1995 indicating that ‘The Tablet Newspaper:
A Vision for the Future’ was presented at a video session (the Applicants’
enclosure DAS-2). At a later stage of the proceedings, the Applicants
submitted images of the ‘1994 Fidler Tablet’ (the last three images in the
following series) as a part of Roger Fidler’s witness statement (the
Applicants’ enclosure DAS-2A). According to Roger Fidler, the tablet was
released in 1994 followed by an introduction movie distributed in 1994.
5
6
●
printouts of news articles posted on the website www.pencomputing.com in
the December 2002 issue containing images of the HP/Compaq TC1000
tablet as follows (hereinafter design D2), the website www.PCMag.com of
08/03/2003 and the website of the Chicago Athenaeum Museum of
Architecture and Design. Both of the last two printouts describe the release
of the HP/Compaq TC1000 tablet in 2003 (the Applicants’ enclosure
DAS-3);
●
a printout from a website relating to Stanley Kubrick’s film ‘2001: A Space
Odyssey’ containing a still photograph of actors using a tablet computer or
display screen (hereinafter design D3, the Applicants’ enclosure DAS-4);
●
a printout of an article posted on the online encyclopaedia ‘Wikipedia’
containing pictures of the Etch-A-Sketch device (hereinafter design D4, the
Applicants’ enclosure DAS-5), and giving information on the availability of
the toy since 1960; the web page bears the date of its last modification,
17/11/2011;
7
●
a printout of an article posted on the website www.edibleapple.com of
23/11/2009 containing images of the Apple Graphics Tablet (hereinafter
design D5, the Applicants’ enclosure DAS-6), and a subtitle under the
following first image saying that ‘[t]he image above is of the original Apple
Graphics Tablet released in 1979’:
●
a printout of Finnish registered design No 19790641 entitled
‘haijastinsuoja’, published on 18/07/1980 and containing images of the
design (hereinafter design D6, the Applicants’ enclosure DAS-7), as
follows:
8
●
a printout of UK design registration No 1,042,780 entitled ‘a memory card
for electronic pocket notebook’, published on 16/09/1988 (hereinafter
design D7, the Applicants’ enclosure DAS-8), as follows:
●
a printout of an article posted on the website www.computinghistory.org.uk
giving information about the release of the GRiDPad 1910 computer
(hereinafter design D8); and a printout of the website www.digibarn.com
containing images of GRiDpad Pen Computer (the Applicants’ enclosure
DAS-9);
●
a printout of US design patent No D306,583 entitled ‘radio transceiver
housing or similar article’, published on 13/03/1990 (hereinafter design D9,
the Applicants’ enclosure DAS-10), as follows:
9
●
a printout of US design patent No D333,574 entitled ‘photo organizer’,
published on 02/03/1993 and containing eight embodiments of the
invention, the first of which is shown below (hereinafter prior design D10,
the Applicants’ enclosure DAS-11):
10
●
a printout of Canadian design registration No 72548 entitled ‘electronic
computer’, registered on 27/05/1993 and published following the
registration (hereinafter design D11, the Applicants’ enclosure DAS-12), as
follows:
●
a 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 D12, the Applicants’ enclosure DAS-13):
11
●
a printout of UK design registration No 2,030,050 entitled ‘screen for
computer display device’, registered and published following the
registration on 28/07/1993 (hereinafter design D13, the Applicants’
enclosure DAS-14);
12
●
a printout of Swedish design registration No 55,044 entitled
‘bildskärmsskydd’, published on 27/10/1993 (hereinafter prior design D14,
the Applicants’ enclosure DAS-15), as follows:
●
a printout of UK design registration No 2,033,245 entitled ‘video display
unit’, registered and published following the registration on 22/12/1993
(hereinafter design D15, the Applicants’ enclosure DAS-16);
13
●
a printout of an article posted in the online encyclopaedia ‘Wikipedia’
containing images of the Apple Newton Message Pad100 (hereinafter
design D16), and giving information on the release of ‘the first series of
personal digital assistant devices developed by Apple for the Newton
platform in 1993’; the web page shows the date of its last modification on
20/06/2011; a printout of a news article posted on the website
www.wired.com on 29/08/2002 stating that ‘Apple finally killed Newton in
February 1998’ (the Applicants’ enclosure DAS-17);
●
a printout of US design patent No D345,346 entitled ‘pen-based computer’,
published on 22/03/1994 and containing images of the invention
(hereinafter design D17, the Applicants’ enclosure DAS-18), as follows:
14
●
a printout of Japanese design patent No 921403, published on 09/03/1995
(hereinafter design D18, the Applicants’ enclosure DAS-19), as follows:
15
●
a printout of Japanese design patent No 001009317, published on
11/05/1998 (hereinafter design D19, the Applicants’ enclosure DAS-20), as
follows:
●
a printout of Japanese design patent No D1104685, published on
26/03/2001 (hereinafter design D20, the Applicants’ enclosure DAS-21), as
follows:
16
●
a printout of Japanese design patent No D1142127, published on
27/05/2002 (hereinafter design D21, the Applicants’ enclosure DAS-22), as
follows:
17
●
a printout of US design patent No D461,802, entitled ‘tablet’, published on
20/08/2002 (hereinafter design D22, the Applicants’ enclosure DAS-23), as
follows:
●
a printout of a review posted on the website www.pencomputing.com in
December 2002, containing images of the Motion Computing M1200 tablet
computer (hereinafter design D23, the Applicants’ enclosure DAS-24), as
follows:
●
a printout of a review posted on the website www.pencomputing.com in
December 2002, containing images of the Viewsonic V1100 tablet
computer (hereinafter design D24); a printout of a news article posted on
the website www.zdnet.nl on 17/02/2003 showing an image of the
Viewsonic V1100 (the Applicants’ enclosure DAS-25);
18
●
a copy of a newsletter entitled ‘home automation’, published in June 2003,
containing an image of a colour display for a home automation system
(hereinafter design D25, the Applicants’ enclosure DAS-26);
●
a printout from the website www.amazon.co.uk showing the cover of the
book ‘Developing Tablet PC Applications’, which was published on
12/11/2003; the cover contains an image of a tablet computer (hereinafter
design D26, the Applicants’ enclosure DAS-27);
●
a printout of Canadian design registration No 101263 entitled ‘computer’,
registered on 29/01/2004 and published following the registration
(hereinafter design D27, the Applicants’ enclosure DAS-28), as follows:
19
●
a printout of US patent application No 2004/0041504 entitled ‘bezel-less
electronic display’, published on 04/03/2004 and containing images of the
invention (hereinafter design D28, the Applicants’ enclosure DAS-33), as
follows:
20
●
a printout of German design registration No 40301867-0001 entitled
‘Flachbildschirm ohne Rahmen’, published on 10/09/2003 and containing
images of the design (hereinafter design D29, the Applicants’ enclosure
DAS-34), as follows:
●
a printout of Community design registration No 000048061-0001 entitled
‘computer screens’ ‘computer monitors’, published on 19/08/2003
(hereinafter design D30, the Applicants’ enclosure DAS-35), as follows:
21
●
printouts from the website www.monitor4u.co.kr containing date indications
2004-03-17, 2003-07-01 and 2011-10-18, and images of the LG Flatron
Tablet L 1530TM; a printout of the web page www.heimkinomarkt.de
containing a news article posted on the internet on 25/03/2004, and an
image of the Flatron Tablet. The Applicants further submit three detail
images of the LG Flatron Tablet L 1530TM (hereinafter design D31, the
Applicants’ enclosures DAS-36 and 37);
●
a printout of Japanese Design Patent No D1124750, published on
29/10/2001 (hereinafter design D32, the Applicants’ enclosure DAS-38), as
follows:
●
a printout of Canadian design registration No 89155 entitled ‘data display
unit’, published on 31/03/2000 (hereinafter design D33, the Applicants’
enclosure DAS-39), as follows:
22
●
a copy of a news article in Info World, published on 02/08/1993, entitled
‘Dynapad weighs in at just 3.3 pounds’, containing an image of the
Dynapad T100X pen computer (hereinafter design D34, the Applicants’
enclosure DAS-40); a printout from the website www.computermuseum.li
showing an image of the Toshiba Dynapad T100X (1992), and a copy of
Toshiba’s promotional flyer showing images of the same product, as follows
(the Applicants’ enclosure DAS-41):
●
a printout of Japanese Design Patent No 887388 (hereinafter design D35,
the Applicants’ enclosure DAS-42);
●
a printout of US patent No 5,345,543 entitled ‘method for manipulating
objects on a computer display’, published on 06/09/1994 (hereinafter
design D36, the Applicants’ enclosure DAS-43);
23
●
a printout of US patent No 5,347,295 entitled ‘control of a computer through
a position-sensed stylus’, published on 13/09/1994 and containing the
representation of the invention as follows (hereinafter design D37, the
Applicants’ enclosure DAS-44); and photographs of a computer made
according to the invention (the Applicants’ enclosure DAS-45);
●
a printout of US patent No 5,488,204 entitled ‘paintbrush stylus for
capacitive touch sensor pad’, published on 30/01/1996, containing a
representation of the invention (hereinafter design D38, the Applicants’
enclosure DAS-46);
●
a printout of a review posted on the website www.macworld.com on
01/02/2001, containing information on the release of the Wacom PL-500
interactive pen display in 2000, and an image of the display (hereinafter
design D39, the Applicants’ enclosure DAS-47); and a printout of an extract
from the website www.wacom.jp containing an image of the same design, a
title ‘Released “PL-500” interactive pen display’ and a date of June 2000
(the Applicants’ enclosure DAS-48);
●
a printout of international patent application WO 2000/074240 entitled
‘keyboard system with automatic correction’, published on 07/12/2000,
containing a representation of the invention (hereinafter design D40, the
Applicants’ enclosure DAS-49);
●
a printout of a news article posted on the website www.microsoft.com on
07/01/2002, entitled ‘Bill Gates Highlights the Magic of Consumer Software
And the Coming Digital Decade at Consumer Electronics Show’, containing
information on release of the Mira tablet computer (the Applicants’
enclosure DAS-50); a printout of a news article posted on the website
www.spiegel.de on 06/01/2010, entitled ‘Microsoft will Apple die Show
stehlen’, containing an image of the Mira tablet computer (hereinafter
design D41, the Applicants’ enclosure DAS-51); a printout of a news article
posted on the website www.chip.de on 13/03/2002, containing information
on the release of Microsoft’s Mira tablet computer in 2002, and images of a
tablet (hereinafter design D42, the Applicants’ enclosure DAS-52);
●
a printout of a news article posted on the website www.chip.de on
08/05/2002, entitled ‘VIA: Zwitter-PC für Schöngeister’, containing
24
information on the release of the Via tablet computer, and an image of the
tablet (hereinafter design D43, the Applicants’ enclosure DAS-53);
●
a printout of US design patent No D457,530 entitled ‘combined frame digital
image player and recorder’, published on 21/05/2002, containing the
following images of the design (hereinafter design D44, the Applicants’
enclosure DAS-54):
●
a printout of Korean design No 3003073070000, published on 25/09/2002
(hereinafter design D45, the Applicants’ enclosure DAS-55), as follows:
25
●
a printout of a news article posted on the website www.uk.gear.ing.com on
21/01/2003, entitled ‘MPIO FL100 Review’, containing information on the
release of the MPIO FL100 MP3 player and images of the product (the
Applicants’ enclosure DAS-56); and a printout of a review posted on the
website www.reviews.cnet.com containing the following images of the
product (hereinafter design D46, the Applicants’ enclosure DAS-57):
26
●
a printout of a news article posted on the website www.tatung.com giving
information on the release of the Tatung Tablet PC at the COMDEX Fall
2003 exhibition, held on 17/11/2003 (the Applicants’ enclosure DAS-58); a
printout of extracts from the website www.tabletpctalk.com containing
images of the product, as follows (hereinafter design D47, the Applicants’
enclosure DAS-59):
●
a printout of Japanese design patent No D1194485, published on
13/01/2004 (hereinafter design D48, the Applicants’ enclosure DAS-60), as
follows:
27
●
a printout of a news article posted on the website www.dpnow.com on
13/02/2004 and 14/02/2004, entitled ‘The Sony CLIÉ PEG-TH55 heralds
The Next Generation Of Digital Organisers’ giving information on the
release of the Sony CLIÉ PEG-TH55 organiser and an image of the product
(hereinafter design D49); and three images of the CLIÉ organiser (the
Applicants’ enclosure DAS-61):
●
a printout of Japanese patent No 584453, entitled ‘disk player’, published
on 11/04/2004, containing a representation of the invention (hereinafter
design D50, the Applicants’ enclosure DAS-62).
(5)
In the reasoned statement, the Applicants submit that the priority claim from US
design patent application No 29/201,636 is not in respect of the same design
according to Article 41(1) CDR, because it contains an additional view not
contained in the Community design registration, and in this view the computer
looks thicker, and thus different from the computer shown in the registration of
the RCD. For these reasons, the priority claim should be disallowed, and the
relevant date for assessment of validity should be 24/05/2004. The line which lies
inside the rim in the front view of the RCD is delineated by a dotted line and,
shown this way, and according to the practice of the Office, the element does not
form part of the design.
(6)
As regards the invalidity ground pursuant to Article 25(1)(b) CDR, the Applicants
submit a number of designs which they allege were made available to the public
prior to the date of filing of the RCD. All the prior designs were disclosed in such
a way that they could reasonably be expected to come to the attention of the
circles concerned operating within the EU. Each of the submitted designs creates
the same overall impression on the informed user as the RCD.
(7)
The informed user is the user of handheld computers and data processing
equipment as well as peripheral apparatus and devices, the products of the
subclass of the International Classification for Industrial Designs in which the
contested RCD was classified upon the request of the Holder of the registration
of the design.
(8)
According to the Applicants, supported by the witness statement of WooJong
Lee, the Principal Engineer from the Patent & Technology Group of the first
28
Applicant, the freedom of the designer of the given goods is limited by the
following features:
●
the product must be made of durable metal or plastic,
●
the product must be light,
●
the product must be as flat and thin as possible,
●
the sides 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,
●
the corners must be rounded to avoid catching on clothing,
●
there will usually be at least one button (on/off) and potentially other
buttons (volume etc.),
●
many such products now include a camera, and
●
many electronic devices require a connection to enable them to be
recharged/powered.
(9)
The Applicants conclude that the features of a product’s appearance that are
dictated by technical function, which are many or all the matters listed by the
Applicants, ought not to be given significant weight by the informed user. (At a
later stage of the proceedings, the Applicants also submitted an expert report by
Itay Sherman, used in the proceedings before the UK Community court, on behalf
of the Applicants to give an expert view on features of the RCD dictated by
technical function and the limit of the degree of freedom of a designer.) In
summary, the Applicants argue that features common to the design of 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 whose design the designer was free
to develop.
(10) Regarding prior design D1, the Applicants hold that, for the informed user, the
most important part of a handheld computer is the screen or front side; therefore,
D1 and the RCD are compared from the front view. Both the designs are of
rectangular objects with evenly rounded corners, and both the designs have a flat
surface covering the front of the products. The designs are identical pursuant to
Article 5(2) CDR and they create the same overall impression on the informed
user pursuant to Article 6 CDR.
(11) Design D2 contains many of the features identified in the past by the Holder as
being characteristic features of the RCD. It shows a rectangular object with
evenly rounded corners, and it has a flat surface covering the front of the product.
Given the freedom of the designer, these similarities create the same overall
impression as the RCD on the informed user pursuant to Article 6 CDR.
(12) Regarding prior design D28, the Applicants hold that both the prior and the
contested designs have a flat surface covering the front of the product, they
concern a rectangular object with evenly rounded corners and they have a
display screen under the clear surface and a band around the flat clear surface.
Both the designs have a substantial border on all sides of the display screen.
Therefore, the designs are identical pursuant to Article 5(2) CDR and they create
the same overall impression on the informed user pursuant to Article 6 CDR.
(13) Prior design D29 derives from the same priority document as prior design D28,
i.e. US design patent application 29/166,842. According to the Applicants, the
evidence concerning D28 and D29 appears to feature the same design. The back
29
of prior design D29 appears to be without any elements, as the protrusion
appears to be disclaimed by dotted lines. The assessment of prior design D29
results in the same conclusions which are valid for prior design D28.
(14) Design D32 is incorporated in a domestic information bulletin board. The prior
and the contested designs both concern rectangular objects with evenly rounded
corners; both have a flat surface covering the front of the product; both must have
a display screen for displaying information under the clear surface; and both have
a band around the surface. Accordingly, the fronts of the designs are identical
pursuant to Article 5(2) CDR, or the same overall impression is created on the
informed user.
(15) Design D33 has a rectangular shape and has four evenly rounded corners; it has
a flat surface covering the front of the product and an integrated screen; it is
designed to display information and it is evident from its representation that it has
a display screen under the clear surface. Both the RCD and D33 have a band on
all sides of the display screen. Design D33 appears to feature the same unibody
design as the RCD. Further, as discerned from the representation of D33, the
rear of the design appears to be featureless. The designs are identical, or they
create the same overall impression on the informed user.
(16) The Applicants conclude that each of the submitted designs creates the same
overall impression on the informed user. The RCD lacks novelty and individual
character and is, therefore, registered contrary to Articles 4, 5 and 6 CRD.
(17) As regards the invalidity ground pursuant to Article 25(1)(a) CDR, the Applicants
hold that the registration of the contested RCD is invalid because the
representations of the RCD are contradictory. The seven views show several
forms of appearance of a product. The cross-hatching used in views 1.1 and 1.3
is used to demonstrate the transparency of surfaces. The cross-hatching is
missing in view 1.4, i.e. the non-transparent side. Because view 1.2 also shows
the transparent side, and because the features of this side differ from those in 1.1
and 1.3, the registration contains two forms of appearance of one and the same
flat side, or, at least, view 1.2 is inconsistent with the other views and should be
ignored. Moreover, side view 1.7 does not correspond to views 1.5 and 1.6,
which are clearly narrower.
(18) In its rejoinder, the Holder submits that the priority has been claimed properly
because the priority application contained, inter alia, the seven images in which
the Community design is registered. The additional image in the priority
application is intended to demonstrate the use of the electronic device and the
difference in width and breadth of the device is caused by the oblique view. The
allegedly contradictory images in the registration are consistent per se, and the
Applicants cannot claim invalidity on the ground of inconsistency of
representations of the RCD. The line shading in view 1.2 demonstrates a smooth
surface. The top view, 1.4, does not show such strong reflection; therefore, the
shading is not applied. The differences between views 1.5 and 1.6, on the one
hand, and view 1.7, on the other, are due to the different resolution used in these
images. The dotted lines used in views 1.1 and 1.3 form part of the design,
representing a hidden line under the surface.
(19) According to the Holder, evidence concerning D18 to D21 (DAS-19 to DAS-22),
D24 (DAS-25), D29 (DAS-34), D31 (DAS-36), D32 (DAS-38), D35 (DAS-42), D47
(DAS-59) and D49 (DAS-61) has to be disregarded because it was not filed in the
language of proceedings and no translation was delivered within the prescribed
30
time. The evidence concerning D6 (DAS-7), D7 (DAS-8), D18 to D21 (DAS-19 to
DAS-22), D27 (DAS-28), D29 (DAS-30), D32 (DAS-38), D35 (DAS-42), D48
(DAS-60) and D50 (DAS-62) contains neither official registration certificates nor
identifiable extracts from official databases [i.e. the design databases of the
Finnish, Canadian, Taiwanese and Japanese patent offices], and thus this
evidence must also be disregarded. Regarding D29 in DAS-34, only the first view
was requested to be published by the German Patent and Trade Mark Office, and
only this view can be taken into consideration. The other views of D29 are
accessible only when inspecting the file.
(20) The Holder further submits that the Applicants do not provide adequate evidence
demonstrating earlier disclosure of the prior designs. The witness statement of
David Angus Stone must be disregarded because it comes from someone with a
direct interest in the outcome of the proceedings, and any confirmation of facts
included in the statement does not have any value as evidence. The disclosure of
the prior designs on the internet could not reasonably have become known in the
normal course of business in the circles specialised in the sector concerned,
operating within the Community, because countless blogs and websites exist.
Unlike published IP rights, which can be easily searched, 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 have discovered only by chance and, therefore, have to remain
out of consideration. For this reason, the designs and their evidence, D3 (DAS-4),
D5 (DAS-6), D25 (DAS-26), D39 (DAS-47) and D46 (DAS-57), part of enclosure
DAS-17 of D16 and part of enclosure DAS25 of D24, shall be excluded from the
assessment of novelty and individual character.
(21) Evidence concerning D3 to D5 (DAS-4 to DAS-6), D8 (DAS-9), D31 (DAS-36),
D37 (DAS-44) and D41 (DAS-51) does not prove disclosure prior to the date of
priority because the articles were posted on the internet after the date of priority
of the contested RCD or they contain no information about the date of release
and they do not demonstrate disclosure before the priority date.
(22) The Holder further submits that the illustrations of the prior designs D1, D3, D7,
D14, D26 and D34 are not of sufficient quality to allow assessment, and designs
D3, D4, D6, D13, D16, D23 to D26, D31, D33, D34, D39, D42 and D43 do not
disclose sufficient details. The images of the prior designs provide a view of the
design only from the front and, thus, they are incapable of challenging the
individual character of the contested RCD and may not be taken into account. As
regards D37, only enclosure DAS-44, and concerning D47 only enclosure
DAS-58, may be taken into account.
(23) Regarding features of appearance dictated by technical function, the Applicants
fail to provide any relevant facts or evidence to support this claim. 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, cameras etc., the creative freedom of
the designer is demonstrated in 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.
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(24) According to the Holder, the assertion of the lack of novelty of the RCD is far from
substantiating that even one of the submitted designs is identical to the RCD, or
differs only in immaterial details.
(25) Regarding the individual character, according to the Holder, the Applicants limit
the assessment to the front view, although the back view provides features that
are protected by the contested RCD and, therefore, must also be considered.
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 D1–D2 and D28–D33. 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 and, thus, the
submission of a lack of individual character of the RCD is unfounded.
(26) 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 burden of proof 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
tablet computers. 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.
Moreover, the circles specialised in the sector concerned do not need to be
aware of the article because relevant events are reported in articles, for example
on marketing events, high-profile product launches etc. As the priority claim is
invalid according to the Applicants, all disclosures are relevant.
(27) 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.
Inconsistent with the Holder’s argumentation in its rejoinder, the Holder, in related
court proceedings, insists that what matters is the front of the product, as this is
how the device is seen by users, and in certain positions of usage it is the only
surface visible, such as when the user holds the tablet in the hands or uses it by
placing it on a flat surface. 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.
(28) The Applicants further maintain that the views of the RCD are contradictory and
do not allow third parties to unambiguously determine what is claimed. The
Holder should surrender the second view.
(29) According to the case-law, designers of functional elements retain the freedom to
create distinctive designs; less distinctive designs are less likely to create a
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different overall impression: a basic cuboid resembling everyday objects such as
bread boards, with the sole addition of one transparent surface, is claimed in the
RCD. All other elements are disclaimed. There are no elements of the RCD
which are not solely dictated by technical function. Minimalist designs which
contribute nothing more than elements dictated by technical function are
excluded from protection by virtue of Article 8(1) CDR. If a designer chooses not
to exercise creative freedom to develop the appearance of a functional element
or add unique distinguishing features, but instead removes all features to produce
a minimal design, such a design should not qualify for any protection under the
CDR, as the design is seeking to illegitimately monopolise a basic form rather
than protect a creative design. The absence of features cannot be a
distinguishing feature.
(30) Many (if not all) elements of the RCD, if not solely dictated by the technical
function, are at least partly dictated by technical function, and they will have a
limited impact on the informed user. The prior designs are all substantially
rectangular, several examples from the prior art show a flat screen and,
according to the witness statement by WooJong Lee, the flat screen requires an
abutment edge around the glass, which could be made of ‘metal or other
material, namely synthetics’. Any distinction between the RCD and the prior
designs can be seen as a natural evolution in design as advances in technology
allow devices to become thinner and more ergonomic.
(31) In its rejoinder, the Holder submits that Article 7 CDR does not require the Holder
to positively show that the relevant circles actually had no knowledge, but that it
is 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.
Blogs, or websites similar to blogs, as a source of disclosure are not
systematically searchable and, if all posts on all existing blogs had to be taken
into account per se, this would lead to absurd results because it would be
necessary to access and check an unmanageable number of blogs every day, if
not every hour. Obviously, this would not be part of the ‘normal course of
business’.
(32) Regarding the individual character, the Holder reiterates that, as shown by the
various design alternatives, none of the features has a limited impact 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
asserted features are neither solely nor ‘partly’ dictated by technical function and
none of the features can be disregarded. The individual character must be
assessed by way of comparison of the RCD with each prior design rather than by
way of 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 individual character of the contested
RCD.
(33) An overall assessment of the design corpus may be relevant only with regard to
the degree of freedom of the designer in developing the design, but the
Applicants did not name the concrete features they consider as being ‘common’
in the existing design corpus.
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(34) For further details of the facts, evidence and arguments submitted by the parties,
reference is made to the documents on file.
II.
GROUNDS OF THE DECISION
A.
Admissibility
(35) The indication of the grounds for invalidity in the Application and in the reasoned
statement accompanying the Application is a statement of the grounds on which
the Application is based within the meaning of Article 28(1)(b)(i) CDIR.
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
also fulfilled. The Application is therefore admissible.
B.
Substantiation
B.1
Not a design
(36) According to Article 25(1)(a), the Office declares a Community design invalid if it
does not correspond to the definition according to Article 3(a) CDR.
(37) According to Article 3(a) CDR, a ‘design’ means the appearance of the whole or a
part of a product resulting from the features of, in particular, the lines, contours,
colours, shape, texture and/or materials of the product itself and/or its
ornamentation.
(38) The Applicants claim that the registration should be declared invalid because the
representations of the design disclose more than one object and the
representations do not correspond to each other.
(39) The RCD is represented by a set of seven drawings showing a device from
different views. View 1.1 is a perspective view of the front of the design, whereas
view 1.2 is a perspective view of the back of the design. Views 1.3 and 1.4 are
top views of the front and the back of the design respectively. Views 1.5 and 1.6
are views of the long sides of the designs, and view 1.7 is a view of the short side
of the design. The views are consistent in that sense that they show the shape of
the same product. Regarding the cross-hatching/shading shown in the first three
views, the Office agrees with the Holder that they represent a reflection of a
surface. Such a surface can be reflective and transparent or reflective and nontransparent. The front and back surfaces can be made of different materials;
thus, the reflection need not necessarily be of the same intensity. The top view of
the front can show the reflection of a more reflective surface while the top back
view may be without reflection. The Office does not see any inconsistency in
these representations.
(40) Nor does the Office find it necessary to correct view 1.7 to be on the scale of
views 1.5 and 1.6. The applicant for the registration of a Community design is
allowed to show larger or detailed images. There is no requirement for the Office
to show the design in a particular scale or in only one scale.
(41) The views on the design represent the appearance of a portable display device
such as a handheld computer, i.e. an industrial product, as declared in the
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application for registration. The appearance of the product results from its shape
and surface. The RCD meets the definition of the ‘design’ according to
Article 3(a) CDR.
B.2
Convention Priority
(42) 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
Organisation (Article 41 CDR; Article 8 CDIR). The right of priority is six months
from the date of filing of the first application.
(43) 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).
(44) 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).
(45) According to Article 4(2) CDIR, the representation of a Community design may
contain no more than seven different views of the design. In cases where more
than seven views are provided, the Office may disregard for registration and
publication any of the extra views.
(46) The Applicants claim that the subject matter of priority application No 29/201,636
and the RCD is not the same because the priority application contains an
additional image which is not part of the registration of the Community design and
in this image the design for which priority is claimed has different dimensions
from the design in the registration.
(47) According to the Paris Convention for the Protection of Industrial Property, any
filing that is equivalent to a regular national filing under the domestic legislation of
any country of the Union shall be recognised as giving rise to the right of priority.
By a regular national filing is meant any filing that is adequate to establish the
date on which the application was filed in the country concerned, whatever may
be the subsequent fate of the application (Article 4A(2) and (3)).
(48) The priority application is a regular national filing for which the date of filing was
established. It contains a set of drawings which correspond to the views in the
Community design registration. Therefore, the priority claim based on this set of
drawings is claimed rightfully. The additional drawing shows the handheld
computer bearing the same features as the design in the registration and in the
set of views of the priority claim. It does not show any new feature which is not
present in the rest of the views, and the slight distortion of the drawing of the
design is not detrimental to an understanding of the design claim.
(49) The applicant for the registration of the Community design is not allowed to file
more than seven views of the design. Therefore, even if the applicant wished to
include the additional picture in the Community design application, he was not
allowed to do so. Insisting on the full representation of the design in all eight
priority views is unjustified, even more so in the absence of harmonised rules for
claiming the priorities from and for different jurisdictions, which apply different
35
formal requirements to representations of claimed designs. The Office considers
the priority claim rightful and the date of priority of 24/05/2004 as effective.
B.3
Disclaimer
(50) The Applicants hold that the parts of the design shown in broken lines must be
disregarded because they show features and elements in the design for which
protection is not sought.
(51) The Applicants’ claim is in line with the case-law, which says that features of a
Community design which are disclaimed are disregarded for the purposes of
comparing the designs. This applies to the features of a Community design
represented by dotted lines, boundaries or colouring or in any other way that
makes clear that protection is not sought for those features (see judgment of
14/06/2011, T-68/10, ‘Watch attached to a lanyard’, paragraphs 59-64).
(52) The Holder, in contrast, claims that the dotted lines discernible in the front view
on the design show elements under the transparent surface and the feature has
to be taken into consideration.
(53) The RCD, as registered, contains several parts shown in broken lines: the
rectangular area in front views 1.1 and 1.3, a round element in side view 1.6 and
a rectangular element in side view 1.7. The Office adopts the meaning of
broken/dotted lines established by the cited case-law and common practice. The
Office is also of the opinion that the interpretation of broken/dotted lines in the
representations of the design should be consistent. Furthermore, the Holder
provides instructions on how to read the representation of the design in the
description (see paragraph 1 above). For these reasons, it should be considered
that protection is not claimed for any of the three elements indicated in dotted
lines and the representation of the design should be considered to be a
featureless, transparent front screen, framed by a smooth, featureless casing.
B.4
Technical Function
(54) According 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.
(55) 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.)’.
(56) Furthermore, in compliance with the Manual, in order 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, in so far 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’, ECR II-981,
paragraph 56).
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(57) The indication of products of the RCD is a ‘handheld computer’. The
representation of the RCD shows a substantially flat device apparently allowing it
to be held and carried. The technical function of the product in which the RCD is
incorporated is to display information and to allow the user to be mobile,
regardless of the place of use. In order to be handheld, 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 or internet content; thus, it requires a screen and elements to trigger
and operate the functions of the device, which, however, are not claimed in the
RCD. 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 that weight, as it is not a visual feature, is beyond the
scope of the assessment. The ratio of the sides of the screen and its size, as well
as the flatness and round corners, are features which are subject to technical and
normative constraints but still give some room for variation in the appearance of
the product. The functional elements such as cameras, buttons and plugs are
required; however, their configuration and construction are not strictly technical
matters, leaving some scope for the designer’s creativity. The elements listed in
paragraph 8 of this decision are, thus, subject to some limitations imposed on the
designer’s freedom rather than features exclusively linked to the technical
aspects of the product.
(58) The Manual states that ‘[w]hether 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
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.’
(59) According to the Office practice, the test is if the essential features of the design
concerned were at least to a certain degree chosen to enhance the appearance
of the product. To determine this, it is necessary to define what the essential
features of the design are. The registration is claimed for a shape of the article.
No features such as ornamentation, colours, textures or material are claimed. It is
understood that the front of the device is made of reflective and transparent
material forming the screen of the device. The back is made of reflective, but not
necessarily transparent, material. The device consists of a flat front and
substantially flat back with a slim profile. The device is a simple rectangle with
rounded corners. The side walls make a right angle with the front, whereas they
are rounded toward the back. Any functional elements present on the device and
the frame around the front are disclaimed. The protection is claimed for a flat
screen embedded in a slim frame of casing. In the view of the Office, although
minimalist, there was still some room for a designer’s involvement. A decision
had to be taken regarding the borders of the casing around or upon the screen,
the roundness of the corners and the transitions of the casing from the front to
the back.
(60) The market for handheld computers and electronic devices of the same and
similar function was, at the time of the first filing of the contested design, not as
crowded as today. The products were driven by their technical function rather
37
than by their design features. Despite this, the products on the market differed in
appearance, as evidenced by the submitted state of the art provided in the
proceedings. The Office did not find in the submitted prior art any repeated
design which could be considered normative or driven by purely technical
considerations. Each presented design combines some technical and some
visually enhancing features. Although the RCD combines features which have
been known from the prior art (a bezel-less screen similar to the one in D28 and
a flat, thin chassis with rounded corners similar to the one in D1 and D2), the
Office did not find any evidence on file that the product was designed solely on
the basis of technical considerations. There was a necessity to make a decision
on visual aspects of the product, although evidently limited and rather obviously
based on the art. However, there is no legal requirement for Community designs
to pass through the threshold of obviousness, and the Office is not allowed to
deny the protection either of the RCD as such or of its individual elements on
such a ground.
(61) For the reasons given above, none of the features pointed out by the Applicants
(flat screen, slim profile, shape, rounded corners) are considered to be dictated
solely by technical function pursuant to Article 8(1) CDR.
B.5
Disclosure
(62) According 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 in the circles specialised in the sector concerned, operating
within the Community.
(63) Design D50 was published after the date of priority of the contested RCD;
therefore, it does not form part of the prior art.
(64) Design D1 was disclosed by publishing, as evidenced by the witness statement
by Roger Fidler and the tutorial video presented. The disclosures of the design
are not disputed by the Holder. The design is deemed to have been made
available to the public before the date of priority of the RCD.
(65) The Applicants further claim 48 prior designs. D6, D7, D9, D10, D11, D12, D13,
D14, D15, D17, D18, D19, D20, D21, D22, D27, D28, D29, D30, D32, D33, D35,
D36, D33, D35, D36, D37, D38, D40, D44, D45 and D48 are registered designs
at national offices, registered Community designs at the Office, granted patents
and published patent applications. They have been disclosed by publication
resulting from the administration 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 office and they are
not disputed by the Holder. Where the submitted documents are not in the
language of proceedings, the date of publishing is indicated by the INID code of
the WIPO standard for bibliographic data of patents and designs documents. The
Office, therefore, considers that disclosure of these designs has been proved.
(66) The only exception among the designs listed in paragraph 65 above is design
D35, which was disclosed upon granting of the Japanese design patent. The
38
certificate submitted by the Applicants is in Japanese and it does not contain
international standard codes. The Applicants did not provide translations of the
certificate. The date of publication of the registration is stated only in the witness
statement of David Stone. The disclosure of the design does not meet the
requirements of Article 29(5) CDIR. Design D35 is disregarded from the
assessment of novelty and individual character.
(67) Designs D2, D3, D4, D5, D8, D16, D23, D24, D26, D39, D41, D42, D43, D46 and
D47 have 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.
(68) Neither restricting 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 that the web page is available without any restriction of
confidentiality and the accessibility requirements can reasonably be met by
European professionals in the circles concerned.
(69) The Holder claims that the internet disclosures do not meet the second condition
as events which could not reasonably have become known in the normal course
of business in the circles specialised in the sector concerned, operating within the
Community, because the websites on which the prior designs were disclosed are
blogs and blog-like websites publishing contributions according to the interest of
their private holder. Such contributions cannot be systematically searched and,
therefore, they remain unknown to the Community circles specialised in the
sector concerned.
(70) The 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 using key words, users can find
websites dealing with a particular subject matter. Therefore, the information on
the internet is not irretrievable, as the Holder suggests.
(71) The internet is a permanently changing environment. Websites are usually
updated without archiving previous content. Therefore, the information contained
on websites appears and disappears over time. However, the prior designs have
been published on the internet; they have been accessible and retrievable by the
Applicants, the Holder and other users, which can include European
professionals in the field of communication and information retrieval equipment
covering tablets and other portable display devices. The disclosures are not
obscure in the sense in which the limitation of absolute novelty in
Article 7(1) CDR was intended according to the travaux préparatoires. It is not the
situation as when a design disappears from 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.
(72) The evidence concerning design D3 consists of two internet disclosures: a
printout of a web page in Korean containing images of the LG Flatron Tablet
L 1530TM and three dates, 2004-04-17, 2003-07-01 and 2011-10-18. None of
the dates clearly indicates the date of posting the information on the internet.
Moreover, one of the dates is on and one is after the date of priority of the RCD.
39
The date of printing of the web page is 17/10/2011, which is not before the date
of priority of the RCD. For the abovementioned reasons, the evidence of the
disclosure of the design LG Flatron Tablet L 1530TM in this piece of evidence is
insufficient.
(73) The Applicants further submit a web page with a news article containing an
image of the Flatron Tablet in one view. The news article shows the date of
publication of the article on the website as 25/03/2003, which is after the date of
priority of the RCD; thus, the disclosure cannot be taken as an evidence of prior
art. The three detail images of Flatron Tablet L 1530TM on file do not contain any
date and they cannot serve as a disclosure of design D3. As the proof of the
disclosure of design D3 is insufficient, design D3 has to be disregarded.
(74) The evidence submitted to prove disclosure of design D5 is a news article posted
on the internet after the date of priority of the contested RCD. The information on
disclosure of the design, however, is contained in the article. The Holder did not
submit any evidence disproving the facts stated in the article. Thus, the design is
deemed to have been disclosed in 1979, as stated in the document.
(75) Design D46 was disclosed in a news article posted on the internet before the
date of priority of the RCD; thus, the date of disclosure of the design is supplied.
The same product was also disclosed in a review on another website. The later
disclosure contains additional views of the product and they are accepted as
relevant in the assessment of novelty and individual character.
(76) The evidence submitted to prove disclosure of design D47 is a news article
posted on the internet; the date of publication is not specified. The information on
disclosure of the design, however, is contained in the article. The Holder did not
submit any evidence disproving the facts stated in the article. Thus, the design is
deemed to have been disclosed in 2003 at the COMDEX exhibition, as stated in
the document.
(77) The contested RCD is registered for a design of a portable display device with
the following features, which are the minimum that have to be taken into
consideration in any comparison with the prior designs: a screen over the front
side, a rather thin profile, a casing which rims the screen in a narrow line, forming
vertical sides and a round transition to the substantially flat back. The back of the
device does not contain any elements; thus, what matters is the shape of the
casing. Where these features are not discernible from the representation of a
prior design, the design fails to be adequately represented and any comparison
with the contested design is impossible, which does not amount to disclosure for
the purpose of Article 7(1) CDR (decision of 10/03/2008, ‘Barbecues’ R 586/2007, paragraphs 22 et seq.).
(78) The following designs are considered insufficiently
assessment of the novelty and individual character of
D24, D25, D26, D36 and D38–43. These disclosures of
front or perspective views and do not allow the sides or
the design to be assessed.
disclosed, not allowing
the RCD: D3, D4, D16,
the designs contain only
the shape of the back of
(79) The disclosure of design D8, posted on www.computinghistory.org.uk, which
contains information on the release of GRiDPad 1910, shows only a small image
of the design in the front view. The other disclosure on www.digibarn.com
contains no date and the designs shown on this website are not the same as in
40
the disclosure on www.computinghistory.ort.uk. Design D8 is also disregarded
from the assessment.
(80) Design D13 is a registered design; however, the representations are insufficient
to recognise all substantial features of the design, and it is difficult to establish
which views show the design from the front and which show the design from the
back. The design is disregarded from the assessment.
(81) Design D49, shown on website dpnow.com, is too small to show all the
substantial features. The enlarged images provided in the same piece of
evidence do not show the same design. The design is disregarded from the
assessment.
(82) Design D34 was disclosed in an article in 1993. Although this disclosure is
insufficient in itself, showing the design in only one view, from the front, further
disclosures of the same product show the side and back of the product; therefore,
the design is deemed to be disclosed sufficiently.
(83) In summary, for the purpose of the test of novelty and individual character the
following designs and their evidence submitted by the Applicants in the
proceedings are considered: D1, D2, D5, D6, D7, D9, D10, D11, D12, D14, D15,
D17, D18, D19, D20, D21, D22, D23, D27, D28, D29, D30, D32, D34, D44, D45,
D46, D47 and D48.
(84) In the disclosure of design D33, only three out of four views are taken into
consideration because the fourth view was incomplete in the evidence on file. In
the disclosure of design D37, only the drawings in the patent document are taken
into consideration. The enclosed coloured images of the product made according
to the invention do not bear any date of publishing and they do not bring any new
information to be added to the images in the patent document for the purpose of
the assessment of the design in the present proceedings. In the registration of
design D29 all views are considered to have been disclosed by the German
Patent and Trademark Office when it allowed inspection of the file.
B.6
Novelty
(85) 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 or the date
of priority. Designs shall be deemed to be identical if their features differ only in
immaterial details.
(86) According to the Holder, the Applicants do not raise the ground of novelty.
However, in the reasoned statement accompanying the Application, the
Applicants stated the ground; therefore, the office will consider both the novelty
and individual character of the contested RCD.
(87) As has been said before, the Office finds the following essential features in the
contested RCD:
●
●
●
it is composed of a flat front and a casing,
it is substantially rectangular with evenly rounded corners,
it has a narrow line or rim of casing around the front,
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●
●
the casing forms narrow side walls vertical to the front with a round
transition to the substantially flat back of the device.
it is understood from the registration that the front of the device is formed
by a screen.
Protection is sought solely for the shape of the device: all functional elements,
patterns or ornamentations are omitted or disclaimed, including the display area
in the screen. It is understood that the surface of the back and sides is reflective
but not transparent.
(88) The submitted prior designs will be considered according to the same scope, i.e.
shape and surface. Other features, although presented in the prior designs, in
particular functional elements, accessories, ornamentation and colours, will be
disregarded.
(89) Considering the submitted prior art, almost all the designs are composed of a flat
screen and a casing. The exception is design D7, which has no screen but a flat
front and back. The difference between design D7 and the RCD is not immaterial;
therefore, design D7 does not constitute an obstacle to the novelty of the RCD.
(90) All designs are substantially rectangular with evenly rounded corners. The
exception is design D15, which has sharp corners and full body behind the front,
thus resembling a monitor rather than a portable device. The differences between
design D15 and the RCD are not immaterial; therefore, design D15 does not
constitute an obstacle to the novelty of the RCD.
(91) The following designs do not have narrow rim of casing around the screen: D1,
D2, D5, D6, D10, D11, D12, D14, D17, D18, D19, D20, D21, D22, D23, D27,
D34, D37, D44, D45, D46, D47 and D48. The difference between the designs
and the RCD is not immaterial; therefore, designs D1, D2, D3, D4, D10, D11,
D12, D14, D15, D18, D19, D20, D21, D22, D23, D24, D34, D37, D44, D45, D46,
D47 and D48 do not constitute an obstacle to the novelty of the RCD.
(92) The following designs do not have the casing forming narrow side walls vertical to
the screen with a round transition to the substantially flat back of the device: D9,
D28, D29, D30, D32, D33. The difference between the designs and the RCD is
not immaterial; therefore, designs D9, D28, D29, D30, D32 and D33 do not
constitute an obstacle to the novelty of the RCD.
(93) The Office did not find in the submitted prior art a design identical to the
contested RCD in the sense of Article 5 CDR. The RCD is new.
B.7
Individual Character
(94) According 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.
(95) 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).
(96) In the present case, the informed user is familiar with designs of portable display
devices including handheld computers. 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.
(97) The device has to be portable. It requires a screen to display information and
some functional elements to be operated. Portable display devices can differ
significantly in size, ranging from the size of mobile phones to the size of laptops,
and they can differ in the ratio of the 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 subject to strict constraints.
Market tendencies, or aesthetic or commercial considerations, are not regarded
as restrictions to the freedom of the designer (see judgment of 22/06/2010,
T-153/08, ‘Communication unit’, paragraph 58).
(98) The portable device is supposed to be easily handled, carried, held, placed in
bags and easily transported, etc. The user uses the device as a whole, not only
its screen, placed on a flat surface. Therefore, the informed user who is
particularly observant does not take into consideration only the front part of the
device, although this is the part of the product which allows it to function. When
making a choice to purchase the product, the informed user also considers the
casing and the overall shape, and s/he is able to differentiate between different
products on the market. 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 and there is no restriction to prevent him/her from direct comparison.
The user is attentive to all differences between the designs.
(99) As has been said before, the essential features of the RCD are the substantially
slim profile, the flat screen extending across the whole of the front of the device
with the line of the casing forming a slim rim around the screen, the vertical sides
and round transitions to the substantially flat back. Although these features,
individually, may be part of the design corpus, in combination they result in the
contested RCD differing from the submitted examples of the prior art.
(100) The RCD is registered for the particular shape of the handheld computer.
Comparing the prior and the contested designs, there are designs having a flat
screen rimmed with a narrow casing: these are designs D9, D28, D29, D30, D32,
D33. However, each of the designs differs in the shape of the casing. Designs
D9, D28, D29 and D30 have bevelled sides towards the back and a sharp
transition from the side to back. Design 32 has vertical sides but the transition
from the side to the back is sharp, in contrast to the round transition in the RCD.
The design also differs in the square shape of the screen. Design 33 has a
narrow bevelled rim around the screens and a flat back. The overall impression of
these designs is different from the impression produced by the contested RCD.
(101) Although designs D1 and D2 have a casing which forms vertical slim sides with
the front, and round turns to the substantially flat back of the device, the same
round turns occur towards the front screen, which is embedded in a frame of
casing. The overall impression of the design is, thus, different from the
impression produced on the informed user by the RCD.
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(102) Designs D5 and D6, D11, D17, D44 and D47 have substantial borders of casing
around the screen and a sharp-edge transition from the vertical sides to the back.
Furthermore, the profile of D6 seems to be thinner than the profile of the RCD. In
contrast, designs D11, D17, D44 and D47 seem to be wider in profile than the
RCD. The overall impression of the designs is different from the impression
produced on the informed user by the RCD.
(103) Design D7 produces a completely different impression of a slim card rather than
a display device. Design D15 has the appearance of a computer monitor with a
full robust body behind the screen. The overall impression produced by these
designs differs from the overall impression produced on the informed user by the
contested RCD.
(104) Designs D10, D21 and D27 have substantial borders of casing around the screen
and bevelled sides towards the back. In contrast, the RCD has only a slim rim of
casing around the screen and vertical sides. D9 and D10 also seem to be wider
in profile. The overall impression of the designs is different from the impression
produced on the informed user by the RCD.
(105) Designs D12, D14, D18, D22, D33 and D45 have substantial borders of casing
around the screen, and a very slim profile. Designs D33 and D22 seem to have a
round turn from the front screen to the sides and a sharp-edge transition from the
sides towards the back. The overall impression of the designs is different from
the impression produced on the informed user by the RCD.
(106) Design D19 has substantial borders around the front screen, wider sides than the
RCD and a rounded back. The device has the shape of elongated rectangle with
rounded short sides. The overall impression of the design is different from the
impression produced on the informed user by the RCD.
(107) Designs D20 and D48 both have substantial borders around the screen and sides
which are rounded. The overall impression of the designs is different from the
impression produced on the informed user by the RCD.
(108) Design D23 has substantial borders around the screen, and different sides:
rounded short sides while the long sides form sharp edges with the front and
back of the device. The overall impression of the design is different from the
impression produced on the informed user by the RCD.
(109) Design D34 has a robust casing around the screen and D46 has a small screen,
while most of the body of the product is formed by the casing. The overall
impression of the designs is different from the impression produced on the
informed user by the RCD.
(110) Design D37 resembles a book cover with a substantial border around the front
screen and sharp edges on all sides except the side where a book usually has a
spine. The overall impression of the designs is different from the impression
produced on the informed user by the RCD.
(111) The contested RCD has individual character in relation to the submitted prior
designs.
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C.
Conclusion
(112) The grounds of invalidity pursuant to Article 25(1)(a) and Article 25(1)(b) are
unfounded.
III.
COSTS
(113) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicants shall bear
the costs of the Holder.
(114) The costs to be reimbursed by the Applicants to the Holder are fixed at the
amount of EUR 400 for the costs of representation.
IV.
RIGHT TO APPEAL
(115) 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
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Martin Schlötelburg