On March 21, 2013, the Belgrade daily Politika published the operative part of a judgment rendered by the Serbian Commercial Appellate Court in a rare case concerning trademark infringement of a drawing of the shape of a product. The Court found that Gatarić International Group, the Serbian distributor of the highlighter pens “Donau D-neon”, infringed figurative trademark representing silhouette of the highlighter “Stabilo Boss”. Legal issues of considerable complexity are included in the case, but the judgment only glances over some of them.
The court proceedings extended over a period of time exceeding three years and ended on September 13, 2012, the day the Appellate Commercial Court issued the judgment (no. 7 Pž 8968/11). Schwan Stabilo, the plaintiff/appellant in the case, is the proprietor of the International trademark registered under number 749869, which has been protected in Serbia since 2000 for goods in class 16 – pencils, pens, refills, text markers and highlighters:
Schwan Stabilo claimed that its mark was infringed by the distribution in the Serbian market of the highlighter “Donau D-neon”. The following photo of the purportedly infringing highlighter is available on the internet:
The first issue that comes to the reader’s mind is: what does the mark at issue (IR 749869) in fact protect against? Does it protect against the use by third parties of the same or similar drawing in newspaper advertisements, point of sale ads, flyers, merchandising bags, and other advertising material? Or, is the scope of the protection broader, so that the drawing protects against three-dimensional replicas of what is drawn?
The Commercial Appellate Court evidently considered self-evident, and in no need of explanation, that a figurative mark consisting of a drawing (image) of the good prevents competitors from using look-alike goods in commerce. The image, in other words, protects against the product, i.e. its design. The International mark IR 749869 therefore protects against the design of “Donau D-neon” highlighter (as depicted in the photo above).
The Court’s understanding of this aspect of the trademark law is in line with the comparative jurisprudence, which has largely accepted the general proposition that a mark consisting of a drawing of the shape of a product protects against the use of identical or similar shape in other products. In the UK case Philips Electronics NV v Remington Consumer Products (High Court, Chancery Division, [1998] E.T.M.R. 124), Justice Jacob held that it was appropriate to treat “a picture which is formally the subject of the registration … as a registration covering also a three-dimensional shape. It would be quite artificial to regard a straight picture of a thing, and the thing itself, as significantly different under a law of trade marks which admits shapes to be registered.”
In the US case Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F.Supp. 693 (1977), the plaintiff (Fotomat Corp.) had a registered mark – a logo depicting a particular kiosk design – which, it claimed, defendants infringed by construction and operation of kiosks having confusingly similar design. The court confirmed that a two-dimensional trademark depicting the shape of an object can be infringed by a three-dimensional object but found no infringement under the facts of that case. The US Court of Appeals for the 6th Circuit dismissed the claim by the guitar manufacturer Gibson Guitar Corp. that the guitar produced by the defendant and depicted below on the right side infringed Gibson’s two-dimensional trademark depicted below on the left side, not because the two could not be compared and found similar but because the highly sophisticated average consumer of the goods was unlikely to be confused as to the origin of the two guitars worth thousands of dollars each (Gibson Guitar Corp. v. Paul Reed Smith Guitars LP, 423 F.3d 539 (2005)).
In the case before the Serbian Commercial Appellate Court, the plaintiff/appellant Schwan Stabilo tried to extend the scope of protection beyond what was represented in the drawing. One of the arguments in the appeal against the decision of the lower court was that the registered mark was distinctive with respect to the colors on the product. The Court, however, ignored this argument, but found for Schwan Stabilo on other grounds (shape).
The goods in question being evidently identical, the Court directed its factual and legal analysis to the similarities and dissimilarities between the registered mark and the appearance of the “Donau D-neon” highlighter pen. The court referred to the appearance of the highlighters distributed by the defendants as “the sign used by the defendant to mark the products he distributes”.
The Court looked into two differences between the drawing of the “Stabilo Boss” pen and the appearance of “Donau D-neon”, before disposing of them as insufficient to prevent consumer confusion. The Court found the enlarged part on the cap of the “Donau D-neon” highlighter, which is absent from the protected mark, as negligible in size. As for the presence of a “handle” on the cap, the Court found it hardly noticeable because its black color was identical to the color of the rest of the cap. The Court, however, disregarded another difference which does catch the eye of an observer: the presence of surface interruptions on both sides of the “Donau D-don” highlighter. (The Schwan-Stabilo highlighter, in contrast, has smooth flat surface.) This, in fact, appears to be the most pronounced difference between the two signs, and it is a pity that the Court passed by it without elaboration.
Also absent from the judgment is an explanation of similarities between the two signs. The Court asserted that the signs were similar, but spent virtually no sentence on elaborating the argument. The specificity of the judgment is a far cry from the level of detail found in the decision of 9 August 2011 of the Third Board of Appeal of the Office for Harmonization in the Internal Market (OHIM), in a case in which Schwan Stabilo claimed that a registered Community design (RCD) held by Ningbo Beifa Group infringed the International trademark IR 749869, a three-dimensionalSchwan Stabilo mark registered in Germany and sharing the same features with IR 749869, and a few other Schwan Stabilo marks. The views of the allegedly infringing design include, among others:
The OHIM described the similarities and differences between the trademarks held by Schwan Stabilo and the RCD held by Ningbo Beifa Group in the following way:
[para. 28:] The earlier three-dimensional trade mark [with the same features as those present in the two-dimensional mark IR 749869] is in the form of a highlighter pen which includes a cap and a body. From the point where the body and cap meet, both ends become gradually narrower both in height and width. The body and the cap are separated by a double flange, the broadest part of the body being the flange between the body and the cap. The body and the cap are rounded at the sides.
[para. 29:] The registered RCD, on the other hand, shows exactly the same form of a highlighter pen consisting of a cap and a body rounded at the side that become narrower in both height and width towards the end. It contains various additions, such as a triangular shaped arrangement on the cap, recessed arched areas on each side of the cap and further differences highlighted by the design holder.
[para. 30:] The Board considers that these differences do not prevent the above mentioned features of the German trade mark from being discernible in the contested RCD. They essentially concern the surface of the highlighter pen but do not alter its overall shape. It is held that small surface interruptions are common for writing instruments as a means of enhancing their grip. (…)
The judgment of the Serbian court also stops short of identifying specific aspects of the plaintiff’s mark that are distinctive – i.e. that significantly depart from the norm or customs of the sector – and, as such, enjoy protection. The Court dispelled the issue with a brief statement to the effect that, “were the figurative representation of the product’s appearance not [distinctive], the sign would not have received protection”.
It would appear that the distinctive element of the IR 749869 is the one described by the OHIM in paragraph 28 quoted above: “From the point where the body and cap meet, both ends become gradually narrower both in height and width”. The “Donau D-neon” highlighter also contains this feature. The Court inferred from that similarity of the signs that confusion among the consumers was likely. This is consistent with the position of OHIM, which in the decision of 9 August 2011 stated that “even where the earlier mark is of a weak distinctive character, there may be a likelihood of confusion, in particular, as in the present case, where the goods in question are identical and the signs at issue are similar”. In contrast to the average consumer of the expensive Gibson and Paul Reed Smith guitars, a significant portion of the average consumers of the inexpensive highlighter pens are not very sophisticated and they are likely to confuse the goods sold by the defendant for those sold by the plaintiff.
