ECJ clarifies test for comparing overall impression of two designs

The latest chapter in the long-running Community design dispute in Neuman v José Manuel Baena Grupo SA (Joined Cases C-101/11 P and C-102/11 P) has reached its conclusion recently when the Court of Justice of the European Union (ECJ) issued its decision on October 18 2012.

At the centre of the dispute is a registered Community design owned by the respondent, as shown below:

In 2007 the first appellant applied to have the design declared invalid on the basis of its earlier Community trademark registration for the following image:

The Cancellation Division of OHIM ruled in favour of the first appellant, holding that the earlier mark was used in the contested design in breach of Article 25(1)(e) of the Council Regulation on Community Designs (6/2002). This decision was overturned on appeal, but the Board of Appeal found that the contested design was invalid on a different ground - that it lacked individual character under Article 25(1)(b) of the regulation because it did not convey a different overall impression from the earlier mark.

Unhappy with the result, the respondent appealed to the General Court, which annulled the Board of Appeal's decision. It ruled that the dissimilarities between the contested design and earlier mark were sufficient for each to create a different overall impression. Particular emphasis was placed on the contrasting facial expressions of each character, with the impression conveyed by the contested design being neutral, as opposed to the angry character portrayed by the earlier trademark. By this stage, OHIM had joined proceedings as intervener.

Both the first and second appellants appealed to the ECJ, seeking to have the General Court's decision set aside. However, they were unsuccessful and the General Court's ruling was maintained.

Several grounds of appeal were raised by the appellants, the most notable of which was that the General Court had erred in basing the comparison of the overall impression of the contested design and earlier mark on the "imperfect recollection" of the informed user. This, it was argued, was a wrongful application of the imperfect recollection test commonly used in trademark law, which acknowledges that consumers rarely compare marks meticulously, side by side - rather, they make the comparison based on the general impression that they retain of the marks. Both appellants felt that the more appropriate test was to conduct a direct comparison of the contested design and earlier mark.

The ECJ rejected this argument. It recognised that, sometimes, an informed user will make a direct comparison but, at other times, this would be impractical or uncommon. On that basis, the ECJ ruled that the General Court could not be criticised for, and did not err by, comparing the overall impression of the contested design and earlier mark from the perspective of the informed user's imperfect recollection.

The decision of the ECJ clarifies the test for comparing the overall impression of two designs to the extent that, in some circumstances, it is acceptable to start from the point of view that the informed user has an imperfect recollection. However, it appears that, in other situations, it may be appropriate to start from the premise that the informed user will make a direct comparison and carry out the assessment in that way. Just which end of the spectrum to start from will come down to the facts of each case and the characteristics of the products that the contested design and earlier mark represent.

Richard Hing, Field Fisher Waterhouse, London