OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION OF THE INVALIDITY DIVISION OF 20/08/2013.

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) OPERATIONS DEPARTMENT DESIGNS SERVICE DECISION OF THE INVALIDITY DIVISION OF 20/08/2013 IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OF A REGISTERED COMMUNITY DESIGN FILE NUMBER ICD COMMUNITY DESIGN LANGUAGE OF PROCEEDINGS English APPLICANT Bayerische Motoren Werke Aktiengesellschaft Petuelring München Germany REPRESENTATIVE OF KLAKA Rechtsanwälte THE APPLICANT Delpstr München Germany HOLDER Suzhou Eagle Electric Vehicle Manufacturing Co., Ltd. No. 699 Tongyuan Road Industrial Park District Suzhou Jiangsu Province China REPRESENTATIVE OF TBK THE HOLDER Postfach München Germany Avenida de Europa, 4 E Alicante Spain Tel Fax

2 The Invalidity Division composed of Ludmila Čelišová (rapporteur), Jakub Pinkowski (member) and Ingeborg Mendieta Vetter (member) took the following decision on 20/08/2013: 1. The registered Community design No is declared invalid. 2. The Holder shall bear the costs of the Applicant. I. FACTS, EVIDENCE AND ARGUMENTS (1) The Community design No ( the RCD ) has been registered in the name of the Holder with the date of filing of 31/05/2012 and priority date of 06/03/2012 claimed from Chinese design patent application No In the RCD, the indication of products reads an electric scooter. In the application for the registration of the RCD, the description reads: The design consists of the features of the shape and configuration of the electric scooter shown in the attached drawings, wherein image one shows a perspective view of the electric scooter in accordance with the design, image two shows a front view, image three shows a rear view, image four shows a left side view, image five shows a right side view and image six shows a top view of the design shown in image one. The design is represented in the following views published in the Community Designs Bulletin: (

3 (2) On 26/11/2012, the Applicant filed an application for a declaration of invalidity ( the Application ). The fee for the Application was paid from the current account. (3) The Applicant requests a declaration of invalidity of the RCD on the grounds of Articles 25(1)(b) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (hereinafter CDR ). (4) As evidence, the Applicant provides inter alia: - a printout of website Roofed Scooter Wikipedia, showing the following image of BMW C1 scooter (hereinafter the prior design), and containing the information that the page was last modified on 15/08/2009: - a printout of website Baumiworld Preise, showing the following image of the prior design, and containing the information price list as per April 2002 : - a copy of brochure 10 Jahre C1. Annual Meeting, Background and the Trappings, showing the following images of the prior design. The brochure was written and published by Karin Wollmer in

4 (5) In its reasoned statement, the Applicant claims that being a well-known manufacturer of automobiles and motorcycles, it developed the cited roofed scooter in 1990s and launched it on the market under the designation BMW C1 in Spring Along with its technical features, BMW C1 is distinguishable for its design, particularly for its curved windscreen flowing into a roof without transition, and following a narrower bend, horizontally dropping behind the diving seat, so that the passenger cell ends even before the rear axle and thus far before the vehicle rear. C1 scooter differs substantially from other roofed scooters as evidenced by the Applicant in the Application. The RCD corresponds to the Applicant s design and the small differences between them result mainly from the construction: BMW C1 has a combustion engine and chain drive, whereas the contested CD is electronically driven scooter without the exhaust system and the chain protection but with a battery, for which reason the floor between the driving seat and the handlebars is elevated. The contested RCD is not new and does not have individual character with respect to the prior design of BMW C1 and therefore the RCD should be declared invalid. (6) The Holder did not send its observations. (7) For further details to the facts, evidence and arguments submitted by the Applicant, the reference is made to the documents on file. 4

5 II. GROUNDS OF THE DECISION A. Admissibility (8) The Application complies with the formal requirements prescribed in the CDR and the Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (hereinafter CDIR ), in particular as laid down in Article 28 CDIR. The Application is therefore admissible. B. Substantiation B.1 Disclosure (9) According to Article 7(1) CDR for the purpose of applying Articles 5 and 6, a prior design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date of filing of the application for registration of the contested design. (10) The Applicant submits that the prior design has been made available, inter alia, on two internet websites. As a matter of principle, disclosures derived from the internet form part of the prior art. Information disclosed on the internet is considered to be publicly available as of the date the information was posted. The Wikipedia article, of which the image showing the prior design forms part, was posted on internet and modified (for the last time) before the date of priority of the contested RCD. The second disclosure - the price list, of which another image of the prior design forms part, was valid for April 2010, the period preceding the date of priority of the RCD, and it was posted on internet to inform the public - the potential customers. The brochure issued on the occasion of 10 th anniversary of a tour of BMW C1 scooter fans, which maps the history and events relating to the scooter and which contains several images of the prior design was also published in The design is deemed to be disclosed within the meaning of Article 7(1) CDR. B.2 Novelty (11) According to Article 5 CDR the RCD lacks novelty when an identical design has been made available to the public prior to the date of filing of the RCD. Designs shall be deemed to be identical if their features differ only in immaterial details. (12) The RCD and the prior design both relate to a roofed scooter. The designs have in common the following features: shape of the roof, the seat, the back of the bodywork, the side grips, the head lamp, the side mirrors and indicators. The scooters are also identical regarding most of protrusions in the bodywork. (13) The RCD and the prior design differ in the front sides of the bodywork. In the prior design there are ventilating holes which are missing in the RCD and in this part the line of the bodywork forms a smooth line toward the driver in the prior design, whereas it is more sharply indented in the RCD. 5

6 (14) The omission of the exhaust pipe and chain protection in the RCD (on the contrary to their presence in the prior design) which result from different functioning of the products (electric vs. combustion engines) has no impact on the novelty and individual character of the compared designs, neither a back storage box and a moving cam visible in the images disclosed in the brochure, which are evidently optional accessories to the scooter. The said features are not taken into consideration in the assessment. (15) The contested RCD does not differ from the prior design in the shape and in most of the details. The described differences in the side part of the bodywork are immaterial concerning their impact on the appearance of the whole product. The designs are identical within the meaning of Article 5 CDR hence the prior design forms the obstacle to the novelty of the contested RCD. C. Conclusion (16) The RCD is declared invalid on the grounds of Article 25(1)(b) CDR in conjunction with Article 5 CDR due to the lack of novelty. III. COSTS (17) Pursuant to Article 70(1) CDR and Article 79(1) CDIR, the Holder bears the fees and costs of the Applicant. (18) The costs to be reimbursed by the Holder to the Applicant are fixed to the amount of 750 Euro, composed of 400 Euro for the costs of representation and 350 Euro for the reimbursement of the invalidity fee. IV. Right to Appeal (19) An appeal shall lie from the present decision. Notice of appeal must be filed at the Office within two months after the date of notification of that decision. The notice is deemed to have been filed only when the fee for appeal has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed (Article 57 CDR). THE INVALIDITY DIVISION Ludmila Čelišová Jakub Pinkowski Ingeborg Mendieta Vetter 6