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WEDNESDAY, 15 JUNE 2011
Punch lands home on watch designs
In T-68/10 Sphere Time v OHMI - Punch (Watch attached to a lanyard), the European General Court has rejected Sphere Time's appeal against the invalidation action of its design RCD 325949-0002 by Punch SAS. The design was of a watch on a lanyard, and it was held invalid at all three instances (the first instance decision is here, and the Appeal Board decision is here).
The first issue dealt with by the Court was the burden of proof where the one year grace period might apply. According to the Court (para 26), in the context of invalidity proceedings, the owner of the design that is the subject of the application for invalidity must establish that it is either the creator of the design upon which that application is based or the successor in title to that creator." That is, reassuringly, in line with OHIM, German and UK case law to date.
The second was an evidence point: the prior art relied upon included invoices and a statement from a Chinese competitor, who was therefore said to have an interest in invalidating the design. The Court held (paras 34-40) that "While that fact may cast a doubt on the credibility of the statement of the manager of Great Sun Technology, also provided to OHIM, the same conclusion cannot be applicable to the shipping invoice." The latter was produced contemporaneously, not for the case, and addressed to a third party. Its probative value was therefore unaffected. Neither was the fact that it was a copy relevant here.
The third issue was one of some practical importance. The design included dotted line portions. The Board relied on the OHIM practice of using these to represent parts of a product which do not form part of the protected design, although, curiously, it said the practice was "not referred to in the Examination Guidelines". The Court noted that it is indeed referred to in the Examination Guidelines at para 11.4, and gave its sanction to the practice, ignoring the dotted line parts. This helpfully clarifies the representation and status of "partial designs". The dotted lines were not really visible in the small pictures shown online and in the Certificate of Registration, but the large views held in OHIM's database and accessible there (link above) show them clearly.
Finally, the Court dealt with the fact that the picture relied on as prior art (shown left) did not include the whole loop of the lanyard. The Court held that its presence could be inferred from the use of the product, and the fact that the accompanying documents referred to a watch with lanyard. That is an interesting approach to disclosure, building on the Court's earlier decision in Case T 153/08 Shenzhen Taiden v OHIM – Bosch Security Systems (Communications equipment) [2010] ECR II-0000 paragraph 66 - it is the disclosure of the earlier design that is relevant, not merely the picture of that design.
All in all, the Court seems to have had little difficulty in reaching the correct legal conclusions on the fairly straightforward facts of this case.
Posted by: David Musker @ 14.16
Tags: burden of proof, cfi, disclosure, dotted lines, evidence, general court, grace period, partial design, watches,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA254
Punch lands home on watch designs
The first issue dealt with by the Court was the burden of proof where the one year grace period might apply. According to the Court (para 26), in the context of invalidity proceedings, the owner of the design that is the subject of the application for invalidity must establish that it is either the creator of the design upon which that application is based or the successor in title to that creator." That is, reassuringly, in line with OHIM, German and UK case law to date.
The second was an evidence point: the prior art relied upon included invoices and a statement from a Chinese competitor, who was therefore said to have an interest in invalidating the design. The Court held (paras 34-40) that "While that fact may cast a doubt on the credibility of the statement of the manager of Great Sun Technology, also provided to OHIM, the same conclusion cannot be applicable to the shipping invoice." The latter was produced contemporaneously, not for the case, and addressed to a third party. Its probative value was therefore unaffected. Neither was the fact that it was a copy relevant here.
The third issue was one of some practical importance. The design included dotted line portions. The Board relied on the OHIM practice of using these to represent parts of a product which do not form part of the protected design, although, curiously, it said the practice was "not referred to in the Examination Guidelines". The Court noted that it is indeed referred to in the Examination Guidelines at para 11.4, and gave its sanction to the practice, ignoring the dotted line parts. This helpfully clarifies the representation and status of "partial designs". The dotted lines were not really visible in the small pictures shown online and in the Certificate of Registration, but the large views held in OHIM's database and accessible there (link above) show them clearly.
All in all, the Court seems to have had little difficulty in reaching the correct legal conclusions on the fairly straightforward facts of this case.
Posted by: David Musker @ 14.16
Tags: burden of proof, cfi, disclosure, dotted lines, evidence, general court, grace period, partial design, watches,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA254
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