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The General Court on trade marks versus designs

The General Court (GC) in Luxembourg took a decision (T 148/08) concerning an invalidity attack against a registered Community design (RCD) based on a trade mark.

The RCD 000352315-0001, registered for “instruments for writing” (below right), was first declared invalid by the Invalidity Division in 2006 (decision ICD 2426; see also Alicante News of September 2006) because it was found to interfere with an earlier German trademark (below left) in the meaning of Article 25(1)(e) of the Community Design Regulation (CDR).

Basically, the Invalidity Division decided that Article 25(1)(e) CDR applies because the RCD contains a feature which is perceived as a sign and this sign is similar to the sign of the earlier trademark. Later, in other cases (e.g. ICD 7022), the Invalidity Division added that a feature of a design can only be perceived as a sign where this sign is not devoid of distinctive character.

The decision of the Invalidity Division was upheld by the Boards of Appeal in 2008 (R-1352/2006-3). In particular, the Boards observed that the “Community design makes use of the trade mark by incorporating a sign into the Community design having all the characteristic features of the three-dimensional shape of the Trade Mark. The sign incorporated into the Community design is similar to the trade mark.”

The decision of the Boards of Appeal was set aside by the GC because “in support of its application for a declaration of invalidity, [ the applicant relied ] not only on the earlier mark, but also, inter alia, on a three-dimensional mark registered in Germany”, but “the only mark taken into consideration by the various adjudicating bodies within OHIM, when considering the application for a declaration of invalidity, was the earlier mark, which is a figurative mark”.

At the hearing in Luxembourg “OHIM argued that, if the design in dispute were compared with the earlier mark, the outcome would be no different from that obtained from the comparison of the design with a three-dimensional sign, the shape of which is represented by the image which constitutes the earlier mark”.

However, the GC responded that “a three-dimensional mark is not necessarily perceived by the relevant public in the same way as a figurative mark” and “thus, by that line of argument, OHIM is in effect asking the Court itself to be the first to undertake a comparison of the design in dispute with the earlier mark, since no such comparison was made either by the Cancellation Division or by the Board of Appeal. However, it is not for this Court to rule on issues the merits of which were not examined by OHIM”.

At the end, the GC annulled the contested decision without referring the case back to OHIM.