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 02/09/2014

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

FILE NUMBER ICD 9484 COMMUNITY DESIGN 000222591-0027 LANGUAGE OF PROCEEDINGS English APPLICANT JOHN MILLS LIMITED JML House Regis Road

Kentish Town London NW5 3EG United Kingdom REPRESENTATIVE OF THE APPLICANT Graham Watt & Co LLP St Botolph’s House 7-9 St Botolph’s Road Sevenoaks, Kent TN13 3AJ United Kingdom HOLDER HOMELAND HOUSEWARES, LLC.

11755 Wilshire Boulevard Suite 1150 Los Angeles CA 90025

United States of America REPRESENTATIVE OF THE HOLDER DENNEMEYER & ASSOCIATES P.O. Box 1502 1015 Luxembourg Luxembourg

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The Invalidity Division, composed of Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Martin Schlötelburg (member), takes the following decision on 02/09/2014: 1. The application for a declaration of invalidity of registered Community

design No 000222591-0027 is rejected. 2. The Applicant shall bear the costs of the Holder. I. FACTS, EVIDENCE AND ARGUMENTS (1) Community design No 000222591-0027 (the RCD) was registered in the name of

the Holder with the filing date of 03/09/2004, claiming the priority from US patent No 29/202,701 of 02/04/2004. The RCD’s indication of products reads blenders. When registered, the design was published with the following views:

27.1 27.2 27.3

(https://oami.europa.eu/eSearch/#details/designs/000222591-0027) (2) On 10/03/2014 the Applicant filed an application for a declaration of invalidity (the

Application) contesting the validity of the RCD. (3) The Application is based on the grounds of Article 25(1)(b) Council Regulation

(EC) No 6/2002 on Community designs (CDR), namely on non-compliance with the requirements of novelty and individual character of the RCD, and on the ground of Article 25(1)(d), namely that the RCD is in conflict with a prior design.

(4) The Applicant submits the following facts and evidence in support of the invalidity

grounds:

• An extract from a trade mark application filed by the Holder at the United States Patent and Trademark Office to register MAGIC BULLET as a word trade mark. The extract contains a sworn declaration filed by Mr. Lenny Sands, the president of the Holder, stating that the trade mark had been used commercially in the US ‘at least as early as 19/08/2003’; and two specimens: a box packaging of the Magic Bullet blender set, and a user guide and recipe book provided with the blender set (D1).

• Printouts from the website www.buythebullet.com as archived in

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web.archive.org on 18/11/2003 and 04/12/2003, containing images of Magic Bullet blender set (D2).

• A printout from the database of the Chinese State Intellectual Property Office of design application No. 01 341 709.6 (D3).

• A printout from the database of the Chinese State Intellectual Property Office of design application No. 02 360 548.0 (D4).

• A printout from the database of the Chinese State Intellectual Property Office of design application No. 01 322 489.1 (D5).

• A printout from the database of the Korean Intellectual Property Office of patent application No. 20-0202865, published on 15/11/2000 (D6). The Applicant indicated the following images of the invention:

• A printout from the database of the Korean Intellectual Property Office of patent application No. 20-0191160, published on 01/09/2000 (D7). The Applicant indicated the following images of the invention:

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• printout from the database of the Korean Intellectual Property Office of patent application No. 10-0263732, published on 01/09/2000 (D8). The Applicant indicated the following images of the invention:

• A printout from the database of the United States Patent and Trademark Office of patent No 4,487,509 for a portable blender, granted and published on 11/12/1984 (D9). The Applicant indicated the following images of the invention:

• A printout from the database of the United States Patent and Trademark Office of design patent No D487 668 for a blender and canister set, granted to Lohan Media LLC and published on 23/03/2004 (D10).

• A printout from the Office database of RCD No 000129515-0002 registered for blenders in the name of the Holder and published on 04/05/2004 (D11).

• A facsimile from Sinolink International Trading Co. Ltd., China, to WS Teleshop International confirming the sale of the multifunctional food processor, the product identification SQ-2119, forwarded on

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09/09/2004 (D12).

• A printout from an internet page containing the CB Test Certificate for SQ-2119 food processor made by the International Electrotechnical Commission on 05/04/2002 (D13).

• A printout from the internet page of Sinolink containing the image of the food processor SF-2119E, allegedly replacing SQ-2119E (D14).

• Two undated copies of the user’s manual for the KISS Mixer produced by ILJIN Precision Ind. Co. Ltd, Seul, Korea; a copy of the main cover of the product packaging posted on 04/01/01 and mailed to Hestia in the Czech Republic; a copy of a facsimile from Hestia to WS Teleshop International’s Czech subsidiary, dated 02/01/2001; indicating that a product sample will be sent, and a copy of a mail delivery order for a package from Hestia to WS Teleshop International’s Czech subsidiary posted on 04/01/01 (D15). The manuals and the packaging contain, inter alia, the following image of the product:

• A printout from the United States Patent and Trademark website concerning the status of the trade mark KISS MIXER registered in the name of STP America Inc, the US distributor of the KISS Mixer (D16).

• Printouts from the internet page www.kissmixer.com of STP America Inc., filed in the WayBackMachine internet archive on 30/11/2001 and 27/09/2002 (D17).

• Copies of two brochures of Jaewon Joyce Co., Ltd. showing kitchen assistants, product indications SKP-3150 and SKP 3160, undated (D18).

• An undated copy of a brochure of Shunde Ronggui Qu Sheng Electrical Appliance Factory, China, showing a design of the blender Mx-T8GN (as follows), and a printout from WayBackMachine’s internet archive of the same product, dated 08/08/2002 and 21/08/2003 (D19).

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• A copy of the front and first page of product brochure of the handy mixers UHM-3140 and UHM-3150 from UNICO China MFY, Ltd., undated; and a copy of an email and facsimile correspondence from November 2000 between Unico and WS Teleshop Int. concerning the products (D20).

• Copies of 3 pages of a brochure from June 2003 showing a logo of Jinling, China, Gaobaier, China, and on page 56 an image of the blender GBE-626 (D21).

• A photo of the blender YT-3186 of Yutai Electrical Enterprise Co. Ltd. and a facsimile of 15/09/2004 stating that the product has been offered for several years in the US, Europe and Korea (D22).

• A printout from the Office design bulletin of RCD No 000049424-0001 for combination juicers, blenders, grinders and mincers registered in the name of WS Teleshop International Handels-GMBH and published on 13/01/2004 with the following views (D23):

1.1

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1.2

1.3

1.4

1.5 1.6 1.7

(5) In the reasoned statement the Applicant submits that though RCD 000129515-

0002 (D11) was declared invalid, it constitutes a prior right to the contested RCD that has to be declared invalid for this reason. Apart from that the RCD does not meet the required conditions of novelty and individual character because the design of the Magic Bullet blender (D1 and D2) was made available to the public before the filing date and the grace period of the RCD. The RCD also lacks individual character over prior designs in the evidence shown. ‘The threads around the rim are to allow ‘engagement with a lid or converter ring, they perform solely technical function and must be excluded from protection pursuant to Article 8(1) CDR.’

(6) The Holder did not submit its observations. (7) For further details of the facts, evidence and arguments submitted by the

Applicant, reference is made to the documents on file. II. GROUNDS OF THE DECISION A. Admissibility (8) 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

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Article 28(1)(b)(i) CDIR 1 . Furthermore, the Application complies with Article 28(1)(b)(vi) CDIR, since it 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 The earlier design right (9) According to Article 25(1)(d), a Community design shall be declared invalid if it is

in conflict with a prior design which has been made available to the public after the date of filing of the application of the Community design, and which is protected from a date prior to the said date by a registered Community design.

(10) According to Article 26(1) CDR, when a Community design is declared invalid, it

shall be deemed not to have had, as from the outset, the effects specified in the Regulation.

(11) The earlier design according to D11 was registered on 02/02/2004 in the name of

the contested RCD’s Holder and by decision ICD 537 of 15/09/2005 it was declared invalid. As the registered design is not valid and has no effects from the outset, it does not constitute a prior right.

(12) Furthermore, according to Article 25(3) the invalidity ground provided for in

paragraph 25(1)(d) may be invoked solely by the applicant for or holder of the earlier right, which is not the case.

(13) For both the reasons specified above, on the ground of Article 25(1)(d) the

Application is rejected. B.2 Disclosure (14) According to Article 7(1) CDR, for the purpose of applying Articles 5 and 6, a prior

design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the filing date or the date of priority of the contested design, 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.

(15) According to Article 7(2) CDR, a disclosure shall not be taken into consideration

for the purpose of applying Articles 5 and 6 if a design for which protection is claimed under a registered Community design has been made available to the public by the designer, their successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title during the 12-month period preceding the date of filing of the application.

(16) D1 contains an extract from the application for registration of the Holder’s word

trade mark MAGIC BULLET. In it, the Holder confirms use of the trade mark on

1 Commission Regulation (EC) No 2245/2002 of 21/10/ 2002 implementing Council Regulation

(EC) No 6/2002 on Community designs.

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the provided guide and recipe book and on the packaging of the Magic Bullet blender set. The Holder declares that ‘[t]he mark is used by imprinting the same directly labels, tags, or on the goods themselves or packaging thereof, which are distributed and / or displayed to customers for purposes of identifying applicant’s goods and services, or in the manner customary in the trades. Two (2) specimens illustrating the mark for each class are included herewith.’

(17) According to the declaration, the trade mark Magic Bullet is used directly on the

goods themselves, as shown in the specimen, namely on the blender set. D2 is a disclosure of the same blender set on a web page offering the product to customers. The indication Magic Bullet can be found in the text of the web page and is used within the meaning of a blender set. The trade mark was used on the blender set and offered or displayed to customers. The trade mark applicant (the RCD Holder) declared as the initial date of use 19/08/2003, which precedes the RCD’s filing date, however, it falls within the grace period pursuant to Article 7(2) CDR counted from the RCD’s priority date, namely 02/04/2004. For this reason the blender set as shown in D1 is not taken into consideration when applying Articles 5 and 6 CDR.

(18) D2 contains extracts from the internet archive of the webpages offering the

Holder’s Magic Bullet blender set. As both the extracts bear the date of disclosure of the blender set within the grace period stipulated in Article 7(2) CDR, D2 is not taken into consideration in the assessment of novelty and individual character.

(19) D3, D4 and D5 are extracts from the official patent database of the Chinese State

Intellectual Property Office. All the extracts are in Chinese. According to Article 29(5) CDIR, where the evidence in support of the application is not filed in the language of proceedings, the applicant shall on its own motion submit a translation of that evidence into that language. The Applicant did not provide translations of the extracts. It provided some information in its reasoned statement. It contains the following details: Chinese design application number, filing date, OPI date and publication number. The provided explanation is, however, insufficient to determine the date when the applications were published. The Applicant failed to provide a translation of the documents. For this reason, documents D3, D4 and D5 are disregarded.

(20) D6, D7 and D8 are extracts from the official database of the Korean Intellectual

Property Office. All three applications were published prior to the RCD’s priority date, therefore the inventions as shown in them were disclosed in compliance with Article 7(1) CDR.

(21) D9 is an extract from the official design database of the United States Patent and

Trademark Office. The patent was granted and published prior to the RCD’s priority date, therefore it was disclosed in compliance with Article 7(1).

(22) D10 is an extract from the official patent database of the US Patent and

Trademark Office. The design patent was granted to a third person and it was published on 23/03/2004. The patent contains the contested RCD, created by the RCD’s designer, therefore exception pursuant to Article 7(2) CDR applies to it. The design of D10 is not taken into consideration in the test of novelty and individual character.

(23) D11 is an extract from the official design database of the Office. The design was

published following its registration, after the RCD’s priority date, therefore it was

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not disclosed in compliance with Article 7(1) CDR and it is not taken into account in the test of novelty and individual character.

(24) D12 to D14 concern evidence of disclosure of the multifunctional food processor

of Sinolink International. It contains a simple statement in the facsimile, which is not signed, it lacks the full identification of the person who makes the statement as well as the purpose for which the statement is made and therefore it is not considered as proof of disclosure of the food processor mentioned in it. The quality test of the food processor made by a professional organisation and attested by the quality certificate is not an act of disclosure of the design in compliance with Article 7(1) CDR. The internet page provided is undated and it contains a product bearing a different indication from the one indicated in the facsimile and the test certificate. Mere assertion, without any further evidence that the products concerned look the same, is insufficient. The Applicant failed to proof disclosure of the design of food processor of Sinolink International.

(25) Documents D15 to D17 are evidence that the Kiss Mixer, as shown in D15, was

used in the course of business prior to the RCD’s priority date and therefore it is deemed to have been made available to the public within the meaning of Article 7(1) CDR.

(26) Documents D18 are undated and therefore do not prove disclosure of a prior

design in compliance with Article 7(1) CDR. (27) Documents D19 are evidence of disclosure of the MX-T8Gn Blender Mill Mincer

Juice on internet prior to the RCD’s filing date. The design is deemed to be disclosed in compliance with Article 7(1) CDR.

(28) D20 contains images of products which were allegedly disclosed in the course of

business. The brochure with the images is, however, undated, and the correspondence between the two companies has a low probative value. It is not clear how and under which circumstances the products were made available to the public. Therefore D20 is not taken into consideration when applying Articles 5 and 6 CDR.

(29) The three copies of D21 show separate pages which have no common layout,

each page contains different companies’ details, logos etc. They do not give the impression of one document but rather three individual leaflets. Only the first page bears a date whereas page 56 containing the image of the blender concerned is undated. Without the original document, the three copies are not sufficient evidence of disclosure of the blender before the RCD’s priority date, therefore D21 is not taken into account.

(30) The facsimile of D22 is not an affidavit or sworn statement and therefore does not

prove disclosure of the design attached. D22 is not taken into account in the test of novelty and individual character.

(31) D23 is an extract from the Office’s design database. The design was published

prior to the RCD’s priority date, therefore it was disclosed in compliance with Article 7(1) CDR.

(32) After considering all the evidence provided, it is concluded that the Applicant

proved the disclosure of designs shown in D6 (hereinafter prior design 1), D7 (hereinafter prior design 2), D8 (hereinafter prior design 3), D9 (hereinafter prior

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design 4), D15 (hereinafter prior design 5), D19 (hereinafter prior design 6) and D23 (hereinafter prior design 7).

B.3 Novelty (33) According to Article 5 CDR, an RCD lacks novelty when an identical design has

been made available to the public prior to the filing date of the RCD. Designs shall be deemed to be identical if their features differ only in immaterial details.

(34) Prior designs 1 to 7 and the RCD all concern kitchen utensils such as blenders,

mixers and their accessories. (35) The RCD concerns, in particular, a mug as an accessory to a blender. It is

registered in the form of black and white drawings avoiding any colour or material specification and decoration, therefore no colours, materials or decoration are considered in the earlier disclosed designs either.

(36) The RCD consists of a mug with threads around its top rim. The Applicant

submitted that the feature should be excluded from the protection, because it is solely dictated by its technical function pursuant to Article 8(1) CDR. The Office does not fully agree with the Applicant. The threads have to be reproduced so that the mug can be fixed in the blender. This feature is therefore deemed to be excluded from the assessment pursuant to Article 8(2). Despite this disagreement, the conclusion must be that the threads are not taken into consideration when the RCD is assessed on its novelty and individual character with respect to the prior designs.

(37) Prior designs 1, 2 and 3 and 7 are all concerned with blender sets with

accessories. Among the accessories, there are cylindrical cups all with a shape of a simple cylinder and threads at its rim. As all the cups are very similar, for reasons of the procedural economy in the assessment of novelty and individual character, only the cup as shown in design 1 is compared with the RCD, with conclusions that are also applicable to prior designs 2, 3 and 7.

(38) The cup of the prior design 1 and the RCD have in common the following

features:

- The shape of the body of the cup and the mug according to the RCD is a cylinder with mild bevel at the bottom.

- On the internal side there are vertical indentations. (39) Prior design 1 and the RCD are different as regards the following features:

- The RCD contains a handle. (40) The difference in the handle according to the RCD is not an immaterial detail.

Prior designs 1, 2, 3 and 7 do not constitute an obstacle to the novelty of the RCD.

(41) Prior design 4 concerns a blender set with accessories. Among the accessories,

there is a mug attached (bottom up) to the blender. The mug of prior design 4 and the RCD have common the following features:

- The shape of the body is a cylinder.

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- Both the mugs have a handle. (42) The mug of prior design 4 and the RCD are different as regards the following

features:

- The mug of the prior design clearly has a flat bottom whereas the bottom of the RCD is slightly bevelled.

- The handles in both designs have a different shape. (43) The recognised differences between the mug of the prior design 4 and the RCD

are not immaterial details. Therefore, prior design 4 does not constitute an obstacle to the novelty of the RCD.

(44) Prior designs 5 and 6 both concern blender sets with cups. These cups in both

sets have a very similar shape and they only differ in their height. As all the cups are very similar, for reasons of the procedural economy only the cup attached to the power base according to prior design 5 is compared with the RCD, in the assessment of novelty and individual character, with conclusions also applicable to all the cups in both designs.

(45) The cup of prior design 5 and the RCD have in common the following features:

- The shape of the body of the cup and the mug according to the RCD is a cylinder.

(46) The cup of prior design 5 and the RCD are different as regards the following

features:

- The RCD contains a handle. - The bottom of the cup of prior design 5 is rounded whereas the bottom of the

RCD is almost flat with a mild bevel. - There are vertical indentations on the internal side of the RCD, whereas the cup

according to prior design 5 has indentations on the outer side, at the bottom forming support for the cup.

(47) The differences in the cup of prior design 5 and the RCD are not immaterial

details. Prior designs 5 and 6 therefore do not constitute an obstacle to the novelty of the RCD.

B.4 Individual character (48) 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 individual character of the RCD, the degree of freedom of the designer in developing the design shall be taken into consideration.

(49) Without being a designer or a technical expert, the informed user knows various

designs which were present in the sector concerned before the RCD’s filing date, they possess a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of their interest in the products concerned, show a relatively high degree of attention when they use them

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(judgment of 20/10/2011, C-281/10 P, ‘Representation of a circular promotional item’, paragraph 53).

(50) In particular, the informed user is familiar with kitchen blenders and mixers. The

degree of freedom of the designer of this type of products is limited to the extent that the blenders have to fulfil their function and they have to be safe when used. For those reasons they usually consist of a base with an electrical engine, a cutting blade unit and containers with lids or without for the blended contents. All the parts may have various shapes, forms and construction. The degree of freedom of the designer when developing the appliance is therefore quite high.

(51) Cups of prior designs 1, 2, 3 and 7 have a simple shape of a cylinder with internal

indentations. They have the appearance of containers for preservation of blended contents. The RCD has also a cylindrical shape with internal indents, however, the presence of the handle gives it an appearance of a feasting dish. The overall impressions produced on the informed user by the mugs of the prior designs and the RCD are different. Therefore, the RCD has individual character over prior designs 1, 2, 3 and 7.

(52) The mug according to prior design 4 has a similar basic cylindrical shape as the

RCD but the flat bottom and angles of the handle give it a different overall impression than the mug of the RCD which has a rounded handle and a bevelled bottom. Therefore, the RCD has individual character over prior design 4.

(53) The cups of prior designs 5 and 6 have a simple shape of a cylinder with external

indentations. They have the appearance of containers for preservation of blended contents. The RCD also has a cylindrical shape, however, it does not have external indents and the presence of the handle gives it the appearance of a feasting dish rather than a storage container. The overall impressions produced on the informed user by the cups of the prior designs and the RCD are different. Therefore, the RCD has individual character over prior designs 5 and 6.

C. Conclusion (54) The facts and evidence provided by the Applicant do not support the grounds of

invalidity under Article 25(1)(b) and (d), therefore, the Application is rejected. III. COSTS (55) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Applicant shall bear

the costs of the Holder. (56) The costs to be reimbursed by the Applicant to the Holder are fixed to the amount

of EUR 400 for the costs of representation.

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IV. RIGHT TO APPEAL (57) According to Article 57 CDR, a notice of appeal must be filed in writing at the

Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

THE INVALIDITY DIVISION

Ludmila Čelišová Jakub Pinkowski Martin Schlötelburg