On 23 April 2013, the General Court of the European Union (the “GC”) upheld an earlier decision of the Board of Appeal of the Office for Harmonisation in the Internal Market to invalidate a registered Community design (“RCD”) of Su-Shan Chen (“Chen”) on account of an infringement of an earlier registered 3D trade mark of AM Denmark A/S (“AM Denmark”). Both the later RCD and the earlier 3D trade mark relate to a cleaning device with a rectangular body with a spray device on one side and a sponge on the other.
The 3D trade mark holder AM Denmark requested the declaration of invalidity of RCD on the basis of Article 9 (1) (b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark. According to this provision, the trade mark holder may prevent from using in the course of trade any sign if, “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”.
Article 25 (1) (e) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (the “Community Designs Regulation”) provides 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.”
Chen contested the invalidity of its RCD on four grounds. First, Chen argued that AM Denmark’s earlier mark was not “used” in the contested design in the sense of Article 25 (1) (e) of the Community Designs Regulation because of certain differences and additions in the RCD such as the addition of a thin plastic cover around the sponge. The GC dismissed this argument as it considered these additions and differences to be of secondary importance and “did not prevent the features of the earlier mark […] from being discernible in the contested design”. The GC moreover confirmed that Article 25 (1) (e) of the Community Design Regulation “does not presuppose a full and detailed reproduction of the earlier distinctive sign in the design concerned”.
Second, Chen claimed that even if the earlier trade mark were assumed to be used in the contested design, the design is not likely to cause confusion. Chen contested that average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape in the absence of any graphic or word element (with reference to Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089). The GC dismissed this argument as well as it considered that the shape of the design is sufficiently unusual and sufficiently striking to the norms of the sector that the relevant consumer will be led to perceive the design as an indication of the origin of the cleaning products.
Third, Chen claimed that there is no likelihood of confusion because the earlier trade mark and the RCD are not similar. The GC dismissed this claim as it considered that similarity between two signs “must be based on the overall impression given by the signs”. The average consumer normally perceives the sign as a whole and does not proceed to analyse its various details.
Fourth, Chen asserted that the trade mark only has the minimal degree of distinctive character. According to Chen, this distinctive character can only be derived from the word element “am” on the earlier trade mark, while the shape of the trade mark itself lacks distinctive character. The GC rejected this argument as well holding that it must be presumed that the shape of the trade mark bears a distinctive character since the mark had been registered and had not been declared invalid. The GC recalled settled case law confirming that, even in a case involving a trade mark of weak distinctive character, there may be a likelihood of confusion on account of a similarity between the signs and between the goods covered.
It is clear from the reasoning of the GC that the likelihood of confusion between a RCD and a Community trade mark will be assessed applying the same criteria as for likelihood of confusion between two trade marks.
