Country: EU
Tribunal: OHIM Invalidity Division
Date: 27/07/04
Case No.: ICD 000000206
Design: 000003660-0001
Language of Proceedings: Spanish
Author: David Musker, R G C Jenkins & Co

The design in suit had a filing date of 1 April 2003. The product named was “handcarts, wheelbarrows”. The application to invalidate was filed on 16/2/04, based on CDR Art. 25(1) (c), (d), (e), (f), or (g), citing Spanish Utility Model U200201615/1 (granted 11/3/03) which was stated to be identical to the registered design. The citation related to portable equipment for washing cars. A certified copy of the grant of the Utility Model was supplied, showing the application as filed 26/06/02, and published 16/12/02 as 1052389 U. The proprietor made no observations in reply.

It was clear that attack was based on lack of novelty, CDR Art. 25(1)(b), since it was argued to be identical to the Utility Model, and was not inadmissible even though the applicant erroneously cited the wrong grounds and did not make out a case on those grounds. The formal requirements were met, and the application was therefore admissible.

Novelty (CDR Art. 5)
“The publication on 16/12/02 disclosed an identical model to the Community Design, by means of the publication in the Government Report of Industrial Property of the Spanish Office of Patents and Marks (OEPM). The characteristics between both differ only in insignificant details such as for example the disposition and the appearance of the wheels. Nevertheless, these differences do not affect the identity between both.”
There was no need to enter into an analysis of the circumstances of the disclosure under CDR Art. 7, since the proprietor had not disputed the fact of publication.

There was a lack of novelty under CDR Art. 25(1)(b) in relation to CDR Arts 4 & 5. The design was declared invalid. Costs to the applicant for invalidation.

José Izquierdo Peris (chairman), Harri Salmi (member) and Eva Udovc (member)