Press release of March 19, 2012

BARDEHLE PAGENBERG has been successful in a series of three Community design invalidity proceedings before the Office for the Harmonisation of the Internal Market (OHIM) in Alicante, Spain (Cases No ICD 8447, 8321 and 8287).  Invalidity proceedings were initiated against Fitness Brands, Inc., Texas, on behalf of Industex SL, a leading TV-marketing company based in Barcelona, represented by BARDEHLE PAGENBERG since 2003.  The accused Community designs had been registered for gymnastics and sports apparatus and equipment showing a fitness device represented by six or seven different views.

BARDEHLE PAGENBERG decided to rely on only one single piece of prior art, i.e., a Chinese design patent registration published prior to the relevant date of application of the accused Community designs.  The Office found the contested Community design new but lacking “individual character” in the sense of Article 6 Community Design Regulation.

This result is an example of the European novelty approach, which is world-wide in scope and without limitation in time, but requires that the circles specialised in the sector concerned in the European Union could reasonably be expected to have known of the prior designs.  Under this approach, prior art may prove to be harmful when challenging a Community design even if the prior design originates from distant jurisdictions, such as China, Japan, Taiwan, Korea etc.  In fact, the Office – the Invalidity Division as well as the Board of Appeal – confirmed repeatedly that publications from these and other countries could be easily searched and, therefore, “reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community” (Article 7 [1] CDR).

The decisions are not final.

Representative Industex SL:

Dr. Henning Hartwig (Attorney-at-Law, Partner),
Dr. Philipe Kutschke (Attorney-at-Law, Associate)

Representative Fitness Brands, Inc.:

Patentanwälte Westphal, Mussgnug & Partner (München): Michael Bickel (European Patent Attorney)

OHIM (Invalidity Division):

Dr. Martin Schlötelburg (rapporteur)