From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 12 November 2013

Another "trade mark v design" case from the General Court

The General Court recently decided on the invalidity of a registered Community design  (“RCD”) which is intended to be incorporated into cleaning devices (see below)  based on a likelihood of confusion with an 3D Community trade  mark (“CTM”, see  further  below) covering, inter alia, the goods in class 3 and the following class 21 goods ”equipment and containers for cleaning, including sponges, brushes, wipes, dusting cloths, mops”.   

The design
The case concerned is Chen v OHMI - AM Denmark (Dispositif de nettoyage), T-55/12  of 25 April 2013 and can be retrieved here The declaration for invalidity of the RCD was brought under Article 25 (1)(e) CDR, which stipulates that “a Community design may be declared invalid if a distinctive sign is used in a subsequent design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use”.   The owner of the earlier 3D mark claimed likelihood of confusion between its CTM and the design in the sense of Article 9 (1)(b) CTMR.  OHIM, OHIM’s Board of Appeal and the General Court all agreed with the trade mark proprietor.

The 3D trade mark: not a lighter
 but a cleaning product
This Kat is quite excited about this case since it appears to be one of a few cases in which the General Court declared a registered design invalid due to a likelihood of confusion with a CTM applying the same criteria as one would in a pure trade mark cases, which is handy if you usually only deal with trade marks, Merpel muses.

What is interesting is that the General Court puts the burden of proof as to whether consumers perceive the shape as a trade indication in the trade mark sense on the defendant rather than the claimant (see  for example para 54, 60).  Having read the case several times, this Kat thinks it should have had a lot more coverage. 

So what else did the court say?  The General Court held that OHIM was correct when it considered “that the earlier mark was used in the contested design” despite the obvious differences between the shapes. In particular, the court explained what was meant by “use” in the sense of  Article 25 (1) (e) CDR which “does not necessarily presuppose a full and detailed reproduction of an earlier distinctive sign in a subsequent Community design. Even if the contested Community design lacks certain features of the sign in question or has different, additional features, there may be ‘use’ of that sign, particularly where the omitted or added features are of secondary importance” (at para 23). This in particular since  the public retains only an imperfect memory of the marks registered in the Member States or of Community marks ... and therefore the court found that OHIM’s finding "... that the geometric form and dimensions of the earlier mark and of the contested design are highly similar and identical in part must be approved. 

While the contested design had certain differences and additions as against the earlier mark, these were “limited to a transparent cap, a transparent bottom part on both sides of the main body, and a thin plastic cover placed around the sponge. OHIM rightly notes that, in view of their secondary importance, those additions and differences cannot dominate the impression left by the contested design” (at para 27).   Given that both shapes were similar (“compact rectangular body rounded at the edges which houses a spray device and a cylindrical sponge”) was enough to show “use” in the sense of Article 25(1)(e) CDR and “trade  mark type” similarity under Article 9 (1)(b) CTMR.

The court further found that there that “the ‘cleaning devices’ in which the contested design is intended to be incorporated are included in the list of goods for which the earlier mark was registered, and that they are therefore identical to those covered by the earlier mark” in the sense of Article 9 (1)(b) CTMR .  As regards the relevant consumer, the court held that the goods concerned are everyday consumer items directed at the general public and the relevant consumer was the average consumer throughout the European Union, who is deemed to be reasonably well-informed and reasonably observant and circumspect. As regards the visual comparison of the earlier mark and the contested design, it was “apparent” that “the geometric form, dimensions and shape of the earlier mark and the contested design are highly similar and identical in part", any small differences did “not alter its overall shape”, even though the earlier 3D mark only possessed a “minimum degree” of overall distinctiveness. 

On balance, the General Court found that the shape of RCD was “sufficiently unusual compared to the norms of the sector and sufficiently striking for it to be capable of fulfilling the essential function of a trade mark”, here for cleaning products.   Most notably judges stressed the RCD owner “claimed without success that the minimum degree of distinctive character which OHIM conceded to the earlier mark derives exclusively from the word element ‘am’ and that the assessment of the similarity can be carried out solely on the basis of that word element. It stands to reason that the word element, the negligible character of which was demonstrated (...), cannot of itself dominate the image of the earlier mark which the relevant public keeps in mind". 

Reading the above, this Kat concludes the old practice to file a shape together with another elements to avoid a distinctiveness objections, seems to have some merits after all given that the General Court in essence only compared the shapes of the RCD and the 3D CTM and held that word element “am” in the CTM would more or less be ignored by the relevant consumer.  All in all, this Kat is still quite fascinated by this case since it makes her re-think the value of design registrations ... and reconsider the practice of adding little bits and pieces to an otherwise perhaps slightly bland shape to render it registrable.

See the IPKat's most recent report on a conflict between a trade mark and design here.

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