Press release of May 30, 2014
BARDEHLE PAGENBERG has been successful before the Invalidity Division of the Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain, in challenging validity of 13 registered Community designs (RCD) in a series of parallel Community design invalidity proceedings (Cases ICD 9050 – 9062). Proceedings had been initiated against Blue Gentian, LLC, Florida, USA, on behalf of Industex SL, a leading Direct Response Television marketing company based in Barcelona, Spain, represented by BARDEHLE PAGENBERG. The accused Community designs had been registered for hoses, claiming priority from underlying US design patent applications and showing either the entire hose or part of a hose represented by one view each (either in black and white or in color).
The Invalidity Division, with decisions of May 15 and May 19, 2014, held the contested designs to be invalid. The Office agreed that the asserted prior art applying to exercise bands should be taken into consideration for the assessment of novelty and individual character and should not be excluded from the relevant design corpus. The Office followed the arguments presented by BARDEHLE PAGENBERG on behalf of Industex that, because the indication of product of the challenged Community designs (“hose”) does not affect the scope of protection of these designs as such, a RCD “(…) may also be applied to products other than the products indicated in the application provided the features of the design are compatible. Since the RCD may be applied to the same product as the prior design, namely a tubular structure, there can be no doubt that the prior design is part of the design corpus of the RCD.” The Office concluded, in each of the 13 cases, that the prior and the challenged design produce the same overall impression (lack of individual character) and declared all 13 Community designs invalid.
The decisions are not yet final.
Representative Industex SL:
BARDEHLE PAGENBERG (Munich, Dusseldorf):
Dr. Henning Hartwig (Attorney-at-Law, Partner)
Martin Hohgardt (German and European Patent Attorney, Partner)
Adrian Kleinheyer (Attorney-at-Law)
Representative Blue Gentian, LLC:
WILSON GUNN (Manchester):
Ben Appleton (European Patent Attorney)
OHIM (Invalidity Division):
Dr. Martin Schlötelburg (Rapporteur)