Keeping it clean: invalidity of a registered Community design based on likelihood of confusion with earlier 3D Community trade mark

Author: Birgit Clark (Baker & McKenzie LLP, London)

Case T-55/12 Su-Chen v OHIM—AM Denmark (Dispositif de nettoyage), General Court of the European Union, 25 April 2013

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpt249, first published online: January 9, 2014

The General Court of the European Union confirmed the invalidity of a registered Community design for a cleaning device based on a likelihood of confusion with an earlier 3D Community trade mark covering ‘equipment and containers for cleaning’ in Nice Class 21.

Legal context

Article 25(1)(e) of the Community Design Regulation (CDR) 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.
Article 9(1)(b) of the Community Trade Mark Regulation (CTMR) provides that the proprietor of a Community trade mark (CTM) shall be entitled to prevent all third parties not having his consent from using in the course of trade: any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.


The applicant in the invalidity proceedings argued that a third party's registered Community design (RCD) for a part of a cleaning device should be declared invalid since it infringed the applicant's earlier 3D CTM, inter alia, registered for ‘equipment and containers for cleaning, including sponges, brushes, wipes, dusting cloths, mops’ in Nice class 21.


The contested design
The applicant based its declaration for invalidity of the RCD on Article 25(1)(e) CDR, claiming a likelihood of confusion between its earlier 3D CTM and the design in the sense of Article 9(1)(b) CTMR. The Office of Harmonization for the Internal Market (OHIM), OHIM's Board of Appeal and the General Court all agreed with the trade mark proprietor.

The earlier 3D
trade mark
On further appeal, the General Court confirmed the invalidity of the contested RCD based on a likelihood of confusion with the applicant's earlier 3D Community trade mark.  In its decision, the General Court confirmed 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 (para 23).
This is particularly so since
the public retains only an imperfect memory of the marks registered in the Member States or of Community marks.
The judges therefore concluded 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.
Further, while the contested design had certain differences and additions when compared with the earlier 3D trade mark, the judges found that 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 (para 27).
Given that both shapes were similar (in the words of the court: ‘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 stressed that the ‘cleaning devices’ in which the contested designs were intended to be incorporated are included in the list of class 21 goods for which the earlier mark was registered, and that they were therefore identical to those covered by the earlier mark in the sense of Article 9(1)(b) CTMR.

As regards the relevant consumer, the judges held that the goods concerned are everyday consumer items directed at the general public and that 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, the court took the view that 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, and that 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 decided 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, cleaning products). The judges also emphasized that the owner of the RCD
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 min (paras 55, 52).
In conclusion, the judges found that there was likelihood of confusion as required by Article 9(1)(b) CTMR.

Practical significance

There has been a recent upsurge of General Court cases relating to a conflict between trade marks and designs, for example Beifa Group v OHIM—Schwan-Stabilo Schwanhäußer (Instrument d'écriture) (Cases T-148/08 [2010] ECR II-01681 of 12 May 2010 and T-608/11 of 27 June 2013) and Danuta Budziewska v OHIM/Puma SE (Case T-666/11 of 7 November 2013) relating to an infringement of Article 6(1)(b) CDR.

However, Su-Chen appears to be one of a few cases so far in which the General Court has declared a registered design invalid due to a likelihood of confusion with an earlier (3D) trade mark applying the same criteria as one would in a ‘pure’ trade mark cases. Moreover, and somewhat remarkably, the General Court in Su-Chen puts the burden of proof as to whether consumers perceive the shape as a trade indication in a trade mark sense on the defendant, rather than on the trade mark owner claimant (paras 54, 60). The old practice of filing a shape mark together with another element (here the word element am) to avoid a distinctiveness objection has also received some unexpected backing. The General Court only compared the shapes of the RCD and the 3D CTM, finding, in essence, that the word element ‘am’ incorporated in the earlier 3D trade mark would more or less be ignored by the relevant consumers.

While the recent line of General Court decisions concerning conflicts between designs and trade marks may alert trade mark owners to the possibility of supplementing their trade mark portfolio with RCD design registrations, the General Court's decision in this case should certainly boost the practice of adding ‘little bits and pieces’ to an otherwise perhaps slightly bland shape to render it registrable as a trade mark.

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