Propellers for boats
Case: R 266/2007-3
In this case, the application was filed with dotted lines indicating an axis of rotational symmetry. The first instance rejected the design on the basis that it included "explanatory text, wording or symbols". The applicant appealed. The Appeal Board held that it was debatable whether the dotted lines could constitute a "symbol" as claimed by the examiner and that, in any event, the first instance had been unduly harsh in rejecting the application without giving the applicant a chance to amend.
This case shows the importance of careful preparation of a design application. If a design is filed which does not meet OHIM's requirements, it can add considerably to the expense of prosecution, as in this case.
Case: R 1493/2006-3
The applicant's agent e-filed a design claiming priority on the very last day of the priority period. Unfortunately, their filing violated the e-filing rules: the representations contained more than one view per uploaded page and were wrongly numbered. Two months after the end of the priority term, when OHIM examined the design, they refused it a filing date. Accordingly, the priority right was lost.
The Board restored the filing date and priority claim. According to the Board, "To deny the appellant that filing date, with the consequent loss of the priority claim, on the ground that two views of the design were shown on one page and that the views were numbered would be a clear breach of the principle of proportionality, which is recognised as a general principle of the Community legal order. Moreover, if the various provisions of secondary and tertiary legislation quoted above were to be interpreted in the sense that loss of a priority claim results from a minor noncompliance with detailed technical rules, the purpose and necessity of which is by no means clear, there would be grave doubts about the validity of some of those rules."
We applaud this generous approach, particularly by way of contrast with recent EPO Appeal Board decisions that deny the relevance of "proportionality". However, appeal is an expensive route, and it is advisable to ensure that all OHIM formalities are known and complied with on filing.
Case: R 592/2007-3
The design had been registered featuring different pictures of a radiator, some showing 13 bars and some showing 18. The applicant for cancellation argued both that the design lacked individual character over the prior art, and that it did not meet the definition of design since it was not features of shape of a product (but rather several products). The Appeal Board, reversing the decision of the invalidation division, held that the definition of a design was met even if more than one design was actually shown in the registration, this being a formal error. The invalidation application was therefore remitted to the first instance for consideration of individual character issues. Their finding is similar to that of the Board in R 1493/2006-3 (concerning the filing stage).
Case: R 1456/2006-3
The contested design concerned the handle of a saucepan. It was opposed on the basis of, amongst other things, British Registered Design No: 210637 showing (in our view) a very similar handle. OHIM cancelled the design, but their decision indicated both that the design was "not new" and that is should be "declared invalid due to lack of individual character". According to the Appeal Board, this ambiguity fatally tainted the decision, and the case was therefore remitted to the first instance for further consideration.
Case: R 1126/2007-3
The applicant filed a community design application from France via Federal Express. Unfortunately FedEx mixed up the filing with a letter to Algeria. Accordingly, the application did not arrive at OHIM within the priority period.
The Appeal Board allowed a request for restitutio in integrum of the priority period and of the filing date, noting that restitutio of the priority period was allowed both for Community Trade Marks and European patents under the respective revised laws.
Case: R 1126/2007-3
The application contained five designs, in three different classes. OHIM invited the (unrepresented) applicant to divide into separate applications, and pay the additional fees due (without specifying the precise amount). The applicant a request for division in due time and offered to pay the fees if the Office confirmed the amount, but the Office apparently ignored the request. The applicant then, out of time, requested a "change of category" and indicated that some fees had been paid, but failed to indicate any reference or application number. The Office informed the applicant that the application was rejected for failure to file a response to the invitation to divide.
Although the appeal was eventually allowed, this decision illustrates once more the dangers that face unrepresented applicants before OHIM.
Case: R 1303/2007-3
The application was filed, claiming priority, but the priority document was not filed. OHIM sent the usual defect notification to the proprietor, setting a deadline for response but, apparently, the proprietor's agent did not receive the fax. However, they could not produce a fax log. The design was accordingly registered without priority.
The Appeal Board held that OHIM'S fax log showing transmission was evidence that the document had been sent, which could not be contested by the applicants since they did not have their fax log. Accordingly, priority was refused.
Hiding pipe for rodents
Case: R 1447/2006-3
A multiple RCD application was submitted using the E-filing system. An official communication was faxed to the applicant indicating deficiencies which included the representations containing some inadmissible text, description, letters and symbols which illustrated the design and were clearly not part of the design itself. Additionally, two representations of the designs did not even refer to the same design since they had different colours. The Office indicated that these deficiencies could be remedied through division of the two views into separate designs, wherein further fees would be incurred for each further design. A deadline was set for the applicant to correct these deficiencies. After expiry, the Office withdrew the application on the grounds that the deficiencies had not been corrected within the set deadline.
The applicant claimed that the outstanding fees had been paid in a timely manner; the amendments to the design had been sent directly by e-mail to the relevant official (a hard copy of the transmission confirmation was submitted with the appeal); and the official communication had not specified by which manner the amendments should be communicated to the Office. They argued that OHIM's website had, in the past, indicated the suitability of electronic communication, the e-mail addresses of Office employees having even been published online and hence the applicant assumed that this was the correct manner of correspondence. After expiry of the deadline an official informed them by telephone that this manner of communication was not possible since such e-mails do not necessarily reach their destination (as apparently was the case here).
The Appeal Board considered that as regards the amended representations sent by e-mail, the transmission confirmation proved that the e-mail was received in good time and by the respective official (although neither receipt nor content of the e-mail could be confirmed by the Office).
The Board conceded that publication of such e-mail addresses could create the misconception that this manner of communication was generally acceptable. The applicant could not conclude that the amended representations, which were not originally a written submission, would be inadmissible through a further electronic transmission and, in any case, the applicant should have been informed before expiry of the deadline that such submissions per e-mail were not allowed. Even if the electronic submission did not reach the addressee for whatever reason, the fact that the fees were paid on time created a motive to thoroughly check the underlying facts. The appealed decision was cancelled and the case referred back to the Registry.
This decision illustrates the necessity of filing in the correct medium, and illustrates a weakness in the electronic filing system (in that follow-ups have to be filed in hard-copy).
Case: R 1351/2006-3
The applicant for invalidation filed applications against two designs. The proprietor responded against one but not the other (the subject of the present appeal) and the Design Department declared it invalid. The proprietor objected that they had never been sent the application to invalidate and therefore had no chance to comment on it. The Board held that "In the case under review the Designs Department is required to prove that the documents were notified in accordance with the applicable rule (Art. 48 (1) second sentence CDIR). The mere declaration (by the Coordinator of the Department) of having done so or of being sure that the design holder had received the document is not sufficient." Accordingly the decision to invalidate was cancelled and the proceedings remitted, with no order on costs.
MINI football Strip
Case: R 949-951/2007-3
An unsuccessful opponent filed an appeal over two years after the decision to uphold the design had been issued (the correct deadline is two months!) Apparently, an OHIM official had informed them by telephone that the deadline for appeal had been inhibited, and further proceedings stayed, until the publication of specific press releases.
The opponent also cited German administrative procedural law suggesting that, even in the case of a late objection, a decision based on the merits could still be justifiably made by the board of first instance, regardless of the admissibility of the legal remedy i.e. appeal procedure. The opponent also indicated that the inadmissibility of the appeal contravened Article 19, paragraph 4 of German Basic Law i.e. a person's right being violated by a public authority, as a "principle of procedural law generally recognised in the Member States". The Office then informed the opponent on two occasions of the lack of appeal and restoration fees along with the failure to observe the time limit. The opponent indicated that they had already paid over €1000 in the first instance proceedings and a potential excess should be offset against the appeal proceedings and also produced a receipt for €215 to be paid to the Office through Deutsche Post.
The Board decided that the appeal was inadmissible on the grounds that neither an appeal, nor the respective fees were submitted within the relevant time limit. The Board could not comment on the nature of the unsubstantiated telephone conversation with the official regarding inhibition of the appeal deadline, but pointed out that the legal deadline would have been mandatory in any case. Regarding the request for restoration, the € 215 paid by the opponent did not constitute an official fee according to the Regulation and thus never reached the Office. This notwithstanding the restoration request was additionally deemed not to have been submitted within the prescribed period. This decision demonstrates the crucial importance of correctly understanding and applying the new European law - the European institutions are rightly wary of applying national law remedies of any particular State. Knowledge and experience of OHIM's systems are vital if a party is to pass through the procedural maze.