Further clarification from E.U. court about trademark-design relationship

On 25 April 2013, the General Court of the European Union weighed in on the issue of relationship between three-dimensional marks and designs. In Su-Shan Chen v. OHIM, the Court compared a registered Community design incorporated into cleaning devices, on the one hand, and a Community three-dimensional mark, registered earlier, with very similar geometric form, dimensions and shape, on the other. The proprietor of the trademark prevailed over the proprietor of the design.

We addressed a similar issue in the second part of our previous post, Highlighter infringes drawing of another highlighter, says Serbian court. In that post, we referred to the decision of 9 August 2011 in which the Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) found that a Community design in the shape of a text highlighter infringed a three-dimensional Schwan Stabilo mark registered in Germany.

In Su-Shan Chen v. OHIM, the mark at issue, registered under number 5185079 and held by AM Denmark A/S, looked as shown below:

The contested design, on the other hand, was represented as follows (only some of the views otherwise shown in the judgment are included below):

The judgment of the General Court employs analytical tools quite similar to those used by OHIM’s Board of Appeal in theSchwan Stabilo case. In both instances, the design was found to be invalid on the basis of Article 25(1)(e) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs:

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.

As this provision makes clear, for a Community design to be declared invalid, two conditions must be fulfilled: an earlier distinctive sign must be used in the design and applicable Community law or the law of the Member State must authorize the right holder of the sign to prohibit such use.

In Su-Shan Chen v. OHIM, the Court first found that the three-dimensional sign was indeed “used” in the design, because the geometric form and dimensions of the earlier mark and of the contested design were highly similar and identical in part (para. 26 of the judgment). Where the (subsequent) design to some extent differs from the earlier distinctive sign – as it does here – by lacking some of its features or having additional ones, there may nevertheless be “use” of that sign, “particularly where the omitted or added features are of secondary importance” (paras. 23 and 27).

Having thus disposed of the “use” prong of the analysis, the Court turned to the second prong, concerning the right of the trademark proprietor to prohibit the use of the design. In the specific case, considering that the proprietor (AM Denmark A/S) held a registered Community mark, the law empowering the proprietor to prohibit the use of the design was Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark. As Article 9(1)(b) of the Regulation stipulates,

The proprietor 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.

(In OHIM’s Schwan Stabilo case, referred to above, the relevant provision was paragraph 14(2)(2) of the Markengesetz (the German trade mark law), because the three-dimensional Schwan Stabilo mark was registered in Germany. The substance of the provision in the German law is identical to the substance of Article 9(1)(b) of the Council Regulation).

Therefore, the Court in Su-Shan Chen had to determine whether there was a likelihood of confusion between the earlier three-dimensional mark (no. 5185079) and the contested design. This inquiry followed the standard goods-relevant public-signs route and, unsurprisingly, lead to the conclusion that confusion was likely.

The goods in relation to which the mark is used are cleaning devices, the very goods which incorporate the contested design (para. 47). As regards the relevant consumer, the Court identified it in the average consumer throughout the European Union, who is deemed to be reasonably well-informed and reasonably observant and circumspect (para. 48). Finally, similarity of the signs could only be analyzed at the visual level, because phonetic and conceptual comparisons were precluded by absence of any word elements from the signs and by impossibility to evoke any particular concept from them (para. 53). Visually, the geometric form, dimensions and shape of the two signs were found to be highly similar and identical in part (para. 49).

The final, and unsuccessful, argument which Su-Shan Chen used in order to convince the Court that confusion was not likely was that, compared to the norms of the sector, the three-dimensional mark no. 5185079 was devoid of distinctive character. The Court started from the presumption of distinctiveness, based on the fact that the mark had been registered (para. 57). Next, Su-Shan Chen did not provide concrete evidence that the shape of the earlier mark lacked distinctiveness (para. 60). Finally, the Court said, even where the earlier mark is of a weak distinctive character, there may be a likelihood of confusion, in particular where the signs in question are similar, and so are the goods (para. 63; the Court, in fact, could have said that the goods were outright identical). On this point, again, in the Schwan Stabilo decision of 9 August 2011, OHIM’s Board of Appeal had used identical arguments, in paragraphs 33-34.