It is worth it to pay attention to one of the latest decisions of OHIM’s Third Board of Appeal of 20 November 2014 issued in the case R 2314/2013-3, which annulled an earlier decision of the Invalidity Division. While it does not discuss the issue of novelty or individual character in a new way, this decision allows us to look more closely at the issues related to evidencing the circumstances set forth in article 25(1)(f) CDR, pursuant to which a Community design may be declared invalid if it constitutes an unauthorised use of a work protected under the copyright law of a Member State.

The discussed case concerned a conflict between Ms. Pawlikowska and Mr. Piotrowski, who sought protection of their copyright to a battery housing design, and the company Makro-Market 2000 sp. z o.o., holder of the invalidated, which copied the design.

above  RCD 1723032-0001

earlier design

Evidencing the authorship and the copyright is often uncertain, because the process of creation of a work and fixing it in a tangible manner is often not documented, while it is easier to evidence the existence of its further copies. Those copies, however, may be no longer directly related to the author. Therefore, the position of the Board of Appeal seems to favour copyright holders. The Board of Appeal decided that:

It cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts. Therefore, the Board must take into account the evidence submitted to the Office as a whole.

To evidence that they hold the copyright, Ms. Pawlikowska and Mr. Piotrowski furnished the following set of documents:

- a copyright assignment document;

- copies of technical documentation regarding the injection mould for battery packaging;

- copies of invoices concerning sale of battery containers by the company of Ms. Pawlikowska and Mr. Piotrowski to third parties;

- a copy of a statement made on behalf of third party confirming delivery of battery containers by the company of Ms. Pawlikowska and Mr. Piotrowski according to a purchase order and enclosed images of the packaging;

- printouts of an email correspondence between Makro Market 2000 and an employee of Ms. Pawlikowska and Mr. Piotrowski about delivery of battery containers.

The Board of Appeal devoted much attention to the issue of an affidavit: Further, the mere fact that an affidavit was not made in the form provided for in Article 76(1)(f) CTMR, is not in itself sufficient to conclude that it is totally devoid of any probative value, at least in so far as its content has not been disputed, or alleged to be false, or contradicted by other evidence in the file. According to the case-law of the General Court, the Office may take it into account in the overall assessment of the documents submitted, basing its analysis on the assumption that the contents of that declaration were correct (08.07.2004, T-334/01, Hipoviton, EU:T:2004:223, § 43). 

In conclusion the Board of Appeal pointed out that: The key element of copyright is an exclusive right to the exploitation of the work. The exclusive right also encompasses the work in a different embodiment. However, in the case at hand, there is no notable difference between the design of a battery container shown in the documents provided by the invalidity applicants and the ‘battery housing’ covered by the contested RCD.

It appears, therefore, that OHIM presents a rather lenient approach to the issue of evidencing the copyright and accepts the Polish practice of extending the copyright onto designs, even highly utilitarian, without further objections.