Community design representing cleaning device held to be confusingly similar to CTM

European Union

In Su-Shan Chen v Office for Harmonisation in the Internal Market (OHIM) (Case T-55/12), the General Court has confirmed a decision of the Board of Appeal of OHIM stating that a registered Community design representing a cleaning device was invalid under Article 25(1)(e) of the Council Regulation on Community Designs (6/2002) because it was confusingly similar to an earlier Community trademark (CTM).

On October 24 2008 Su-Shan Chen filed an application for registration of the following design (No 1027718-0001):

On October 6 2009 AM Denmark A/S filed an application for a declaration of invalidity of the design, relying on, among other provisions, Article 25(1)(e) of the regulation, claiming that a distinctive sign was used in the contested design. In support of its application for a declaration of invalidity, AM relied on a three-dimensional CTM registered under No 5185079 on February 13 2008 for goods in Class 3 (eg, "cleaning agents and cleaning fluids (not for use in manufacturing or for medical purposes)") and Class 21 ("equipment and containers for cleaning, including sponges, brushes, wipes, dusting cloths, mops") of the Nice Classification:

By decision of September 17 2010, the Invalidity Division of OHIM upheld the application for a declaration of invalidity on the basis of Article 25(1)(e), 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 the member state governing that sign confers on the right holder of the sign the right to prohibit such use". In particular, OHIM stated that:

  • the contested design included the three-dimensional shape of a cleaning device which could be perceived as being a sign;
  • the sign and the CTM were similar; and
  • due to their similarity and the identity of the goods covered by the signs, there was a likelihood of confusion on the part of the relevant public.

Chen filed a notice of appeal to the Board of Appeal, which confirmed by decision of October 26 2011 that the contested design had to be declared invalid on the basis of Article 25(1)(e). The board noted that the geometric form, dimensions and shape of the CTM and of the contested design were highly similar and almost identical in part, and that the slight changes contained in the design were of secondary importance. Accordingly, the CTM was included in the design and, therefore, use was made of the earlier trademark in the design under Article 25(1)(e)

Further, as to the likelihood of confusion, the board stated that the goods in which the contested design was intended to be incorporated were included in the goods covered by the trademark and, therefore, they were identical. The board considered that the CTM and the contested design could be compared only visually, and not phonetically or conceptually, as:

  • they did not contain word elements; and
  • they did not lend themselves to brief, simple descriptions in words or evoke any particular concept.

The board found that the CTM and the design were visually similar, as the public paid less attention to the slight additions and changes to the design and more attention to its overall shape. Against this background, the board stated that there was a likelihood of confusion.

On February 8 2012 Chen filed a notice of appeal to the General Court, claiming breach of:

  • Article 25(1)(e) of the Community Designs Regulation and misinterpretation of the concept of 'use' in said article; and
  • Article 8(1)(b) of the Community Trademark Regulation (207/2009).

The General Court agreed with the board that the features of the CTM, namely those of a cleaning device in the shape of a compact rectangular body rounded at the edges and housing a spray device on one side and a cylindrical sponge on the other, were discernible in the contested design. The slight changes in the design were of secondary importance, as Article 25(1)(e) of the Community Designs Regulation does not presuppose a full and detailed reproduction of the earlier distinctive sign in the design concerned.

The General Court also agreed with the board’s finding that the CTM and the design were visually similar. The board had been correct to conclude that, on the basis of the similarity of the mark and the design, and the facts that the goods were identical, there was a likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation, even taking into account the weak distinctive character of the earlier mark.  

Nina Ringen, Rønne & Lundgren, Copenhagen

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