OHIM Board of Appeal, Decision of 22 March 2010, R 578/2008-3
In this case, the Community design registration by Sport-Service-Lorinser Sportliche Ausrüstungen GmbH (Lorinser) for vehicle wheel rims was challenged by RH Alurad Höffken GmbH (RH) who claimed it was identical with its earlier German design and therefore lacked novelty and individual character.
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Lorinser's Community design
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RH's German design
OHIM's Invalidity Division declared the design invalid for lack of individual character.
Following the appeal by Lorinser, RH further claimed that Lorinser's identical German design registration had already been declared invalid by a decision of the German Regional Court of Stuttgart which acquired the status of res judicata. RH replied that the principle of res judicata was not applicable because the decision in issue related to an infringement proceeding in which the Regional Court of Stuttgart only gave a legal analysis of the validity of the German design which was, however, not binding so that it was still effective.
OHIM's Board of Appeal confirmed that the requirements of res judicata were fulfilled: (i) both cases were between the same parties, (ii) they related to the same issue, namely the validity of Lorinser's design (even if they related to two design registrations: one for the European Community and one for Germany) and (iii) were based on the same submissions, namely RH's claim of lack of individual character.
The Board of Appeal concluded that the principle of res judicata was applicable and it was bound by the German invalidity decision. As a result, OHIM's Board of Appeal dismissed the appeal.
