General Court lays down a marker in trade mark and design dispute (May 2010)

In Case T-148/08 the General Court has set out useful guidance for understanding the relationship between registered Community designs and earlier registered trade marks, and has answered questions about the extent of its jurisdiction.

Background and relevant legal provisions

In May 2005, Beifa Group Co. Ltd (Beifa) applied to register a Community design representing a pen and a lid, which it intended to apply to "instruments for writing".  The design was registered in July 2005. At that time, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG (Stabilo) was already the registered proprietor of a German figurative mark which represented a two-dimensional form of its fluorescent marker pens (also for "instruments for writing", in Class 16).

In March 2006, Stabilo applied for a declaration of invalidity under Article 25(1)(e) of Council Regulation (EC) No 6/2002 on Community Designs, which 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 a Member State governing that sign confers on the rightholder of the sign the right to prohibit such use".

The substantive issues in this case turned on whether Stabilo had a right, under Germany's registered trade mark law (the Markengesetz), to prohibit the use of its earlier figurative mark in Beifa's design. The Markengesetz transposes Articles 5(1)(a) and (b) of First Council Directive 89/104/EEC (now Directive to 2008/95/EC) and provides that registered trade mark rights cannot be exercised against third parties after five years of non-use. Under the Markengesetz, as under the Directive, it was for a defendant to raise this issue by requesting proof of use.

In order to prohibit the use of its sign in Beifa's design, therefore, Stabilo had to demonstrate that Beifa's design used, and would infringe, its earlier mark.

The Court's approach

Although there are no provisions on proof of use in the Regulation they are evidently relevant to the rights conferred on a rightholder by German law and therefore Article 25(1)(e). The Court rejected the argument of Stabilo and OHIM that in such an instance the interests of a Community design right registrant are adequately protected by the availability of invalidity proceedings under national law, but added that since proof of use is a "specific preliminary issue" requests for such proof had to be made within the period for observations. The Court reiterated that while a plea which amplifies a closely-related, existing plea can be admissible, no new pleas can be introduced in the course of proceedings. To allow Beifa to raise proof of use for the first time in an appeal, said the Court, would put the Board of Appeal in the "unacceptable position of having to rule on a dispute which is different from the dispute brought before the Cancellation Division".

On the substantive issues, the Court found that although an application for a declaration of invalidity can only succeed if the relevant public will form the impression that the Community design makes use of the distinctive sign relied upon (the first limb of Art 25(1)(e)), there was no basis for Beifa's argument that Article 25(1)(e) only applied where the subsequent design incorporated a sign that was identical to the applicant's earlier registration. In part the Court relied upon Recital 31 to the Regulation, which expressly preserves the application of trade mark law to Community designs. It also noted that there was no reason to require different tests for invalidity and infringement. Accordingly the use of a similar sign in relation to identical or similar goods or services causing a likelihood of confusion could invalidate a later Community design registration.

Other issues

The Court also addressed various issues regarding its jurisdiction, in particular its power to refer a case back to the Cancellation Division, which OHIM argued would amount to the Court issuing an order to OHIM. The Court dealt with this quickly. Referring only to Articles 60 and 61 of the Regulation, it held that since it was hearing an appeal from the Board of Appeal, whose decision it had jurisdiction to annul or alter and which itself has jurisdiction to refer a case back to a lower level with OHIM, it did have the power to refer a case back to a lower level of OHIM (although in this instance it decided that such a reference was not necessary).

Finally, the Court commented on the scope of questions it would consider in an appeal. On the one hand, the Court declined to consider grounds of invalidity which the Board of Appeal had itself declined to consider. On the other, the Court held that although it must limit its ruling to the parties' heads of claim, it was not confined to considering only those arguments which had been put forward by the parties. If it was so confined "it might be forced to base its decision on erroneous legal considerations".  In this case, the Court raised its own (fatal) objection to the Cancellation Division's declaration of invalidity when it realised that that declaration had been made on the basis of a comparison between the design and a separate three-dimensional mark belonging to Stabilo. Although this other mark was similar to both the design and Stabilo's earlier mark, it was not the mark relied upon:  three-dimensional marks are "not necessarily" perceived in the same way as figurative marks, and accordingly the contested decision had to be annulled.

A version of this article appeared in World Trademark Review in May 2010 and can be accessed here.



Ian Starr
T: +44 (0)20 7859 1454


This publication is not intended to be a comprehensive review of all developments in the law and practice, or to cover all aspects of those referred to. Readers should take legal advice before applying the information contained in this publication to specific issues or transactions.


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