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You are here: Home > About OHIM > OAMI-ONLINE - Newsletter 05 - 2010 - Disclosure of a Prior Design outside the EU
- Editorial
Oppositions: the task ahead - Interview
A Business View of OHIM - Community Trade Mark
Box machinery CTM ruled invalidCountry overview: Portugal - Community Design
Disclosure of a Prior Design outside the EUCountry overview: Portugal - E-business
OHIM E-Business Users GroupE-Business Roundup - More News
Tribute to OHIM President in ChinaStatistical highlights - Case-Law
Luxembourg Case-LawNew Decisions from BoA
Disclosure of a Prior Design outside the EU
In the decision R 9/2008-3 of 26 March 2010 the Boards of Appeal had to deal with an application for a declaration of invalidity based on evidence for the disclosure of a prior design outside the territory of the European Union. The acceptance of such disclosure is subject to conditions which are often misunderstood by practitioners. The Boards took the opportunity to explain the situation.
The invalidity application contested the registered Community design (RCD) 000257001-0001 for footwear with the following seven views:
The RCD has been declared invalid in first instance by a decision of the Invalidity Division ( ICD 3010 ) on the basis of evidence for prior sales of similar footwear in the US by the holder of the RCD. Pieces of the evidence were found in the files of a trademark application at the USPTO. The US application was filed by the holder before the priority date of the RCD and contained said evidence as proof for the use of the mark in commerce.
The holder appealed the decision of the Invalidity Division and reasoned inter alia that the sales “were limited in quantity – in the region of 10,000 pairs – and territorially (Florida and Colorado) in order to test the product.” He argued that “these disclosures do not destroy the novelty of the challenged design because they could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community” as it is a required condition for disclosures (Article 7(1) CDR).
The Boards found this line of defense “not persuasive”. “Exhibiting a new product at a fair, uploading it on the Internet and selling it on the marketplace – these activities having been furthermore carried out over a period of several months – are precisely the sort of activities that may become known ‘in the course of business' to anybody active in the same field.”
The Board reasoned as follows: “The ‘circles specialised in the sector concerned, operating within the Community' are represented, in the present context, by footwear designers, footwear industry and footwear trade, who operate in the Community. The ‘sector concerned' is the one concerned by the Challenged Design, i.e. footwear, and particularly boat or beach footwear or, more generally, leisure footwear. Even though the Holder identified the product as ‘footwear', not ‘boat footwear' or ‘beach footwear' or ‘clogs', the design represents doubtlessly a boat or leisure clog. The product that the design actually represents has some importance. The General Court has determined, in a recent judgment, that ‘in order to identify the product… one may consider also… the design itself, to the extent that it better informs about the nature, use or function of the product' ( see judgment of 18 March 2010 in Case T-9/07 Grupo Promer Mon Graphic, SA v OHIM (‘ Metal rappers ') [ 2010 ] ECR publication pending , at paragraph 56). The fact that the design represents a boat or a leisure clog may therefore be taken into consideration for the purpose of determining the ‘sector concerned' and the ‘circles specialised'.”
In the Boards' view, “the Holder minimises the importance of these sales by comparing them with the considerable size of the US market. Yet this is not the right test. The test is whether the sales could have reasonably become known to the relevant circles in the Community. And the answer is, in the Board's estimation, in the affirmative. The launch of a new product on the marketplace always attracts attention from the public at large, the press and the business circles. This sort of news circulates instantly and easily in the Internet era.” Consequently, the decision of the Boards confirmed the decision of the Invalidity Division.
The reasoning of the Boards as regards disclosures of prior designs outside the European Union is helpful for practitioners when assessing the relevance of evidence in design invalidity proceedings. In particular, it is a warning to holders of Community designs not to underestimate the impact of acts on foreign territory on the validity of their protection rights in Europe.