Invalidity appeal · Board of Appeal · 2020-01-20

R2300/2018-3

Contested design: 002758268-0001

CDRAppellant: holder

Outcome

Appeal dismissed

The appeal is dismissed and the design holder is ordered to reimburse the invalidity applicant's costs in the appeal proceedings.

Show verbatim operative text

1. Dismisses the appeal; 2. Orders the design holder to reimburse the invalidity applicant's costs in the appeal proceedings.

CostsHolder ordered to pay costs

Applicant · invalidity challenger

MOSTOSTAL Spółka Akcyjnavia PDF extraction

Poland (PL)

ul. Konwiktorska 4, 00-217 Warszawa, Poland

Represented by

Holder · RCD owner

Polimex - Mostostal S.A.via PDF extraction

Poland (PL)

ul. Al. Jana Pawła II 12, 00124 Warszawa, Poland

Represented by

Sylwia Owczarek

Trade mark

Earlier logo design (same graphic/wording in light blue) published in Polish Patent Office bulletin — earlier self-disclosure by design holder

Polish trade mark No Z.305 733 · Polish Patent Office bulletin · disclosed 2006-05-15

Article 25(1)(b)Article 25(1)(e)Article 5Article 7

›The design holder (Polimex - Mostostal) appealed arguing that the difference in shade/intensity of blue between the contested RCD (dark/navy blue) and the earlier design (light blue) is a material difference sufficient to establish novelty, and that its exclusive trade mark rights in the earlier design should have been considered; it also renewed its request for suspension of proceedings pending Polish court challenges to the invalidity applicant's trade marks.
›The invalidity applicant responded that the colour difference is merely a variation of shade in the same colour (blue), is immaterial due to inevitable printing/scanning variation, and that suspension is unnecessary since the contested decision rests on the design holder's own self-disclosure, not the invalidity applicant's trade marks.
›The Board held that the only difference between the two designs is a difference in shade of the same colour (blue); since neither design had its colour identified in registration, and printing inevitably causes shade variation, this colour-shade difference is an immaterial detail within Article 5(2) CDR; the contested RCD lacks novelty.
›The appeal was dismissed and the invalidity declaration based on self-disclosure of the earlier trade mark confirmed; the suspension request was rejected as unnecessary given the decision's reliance solely on the design holder's own prior disclosure.

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