RCD invalidated based on earlier 3D mark

In Beifa Group Co Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-608/11, June 27 2013), the Seventh Chamber of the General Court has rejected an action against the decision of the Third Board of Appeal of OHIM that Beifa Group’s registered Community design (RCD) was invalid due to the existence of a similar earlier three-dimensional (3D) mark.

In 2005 Beifa Group Co Ltd filed an application for registration of a Community design for a highlighter pen and obtained a registration.

German company Schwan-Stabilo Schwanhäußer GmbH & Co KG applied for a declaration of invalidity of the design based on, among other things, its prior German registrations for a figurative mark and a 3D mark, which both consisted of identical representations of a highlighter pen (depicted below) for “instruments for writing” in Class 16 of the Nice Classification.

The Invalidity Division of OHIM declared that the RCD was invalid based on Article 25(1)(e) of the Council Regulation on Community Designs (6/2002), according to which a RCD 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 right holder of the sign the right to prohibit such use”. The Invalidity Division found that the earlier mark was used in the design in dispute, in that "a sign with all the characteristic features of the three-dimensional shape of the earlier figurative mark, and in consequence similar to that mark, was incorporated in the design in dispute". The goods covered by the design were identical to those covered by the earlier figurative mark, leading to a likelihood of confusion on the part of the relevant public. This gave Stabilo the right under the German Trademark Law to prohibit the use of the sign used in the design in dispute.

The Third Board of Appeal of OHIM dismissed Beifa Group’s appeal in January 2008.

In a widely discussed judgment of May 12 2010 (Case T-148/08 - see here and here), which was one of the first decisions of the General Court in invalidity proceedings involving a RCD, the court annulled the decision of the Board of Appeal on technical grounds that Beifa Group had not even raised in its action: the contested decision of the board was based on Stabilo’s 3D mark, even though the conclusion as to the likelihood of confusion was based on a comparison with the earlier “figurative mark”. The General Court also dealt with other issues, such as the fact that Beifa Group had requested proof of genuine use of the earlier mark for the first time before the board (this plea was found inadmissible). Concerning its jurisdiction, the court found that Beifa Group’s interests were sufficiently safeguarded by the annulment of the contested decision, without there being any need to refer the case back the Cancellation Division.

After the case was reallocated to the Third Board of Appeal by the Presidium of the Boards of Appeal, the board dismissed Beifa Group’s appeal. It limited its examination of Article 25(1)(e) of Regulation 6/2006 to the earlier 3D mark and held that Stabilo was not required to submit proof of genuine use of that mark because the applicant had failed to file its request before the Invalidity Division. Moreover, it considered that, despite the existence of certain differences between the contested design and the earlier 3D mark, the characteristic features of that mark could be discerned in the contested design. Consequently, the board declared the contested design to be invalid; it also based the declaration of invalidity on the ground of lack of individual character under Article 25(1)(b) of Regulation 6/2002.

Beifa Group appealed, putting forward seven pleas in law. The General Court dismissed the action in its entirety:

• Contrary to Beifa Group’s claim, the re-examination ab initio by the board was necessary for compliance with the General Court’s previous judgment, and a mere annulment of the decision of the Invalidity Division would not have been sufficient. Following the annulment of the board’s 2008 decision, the Third Board of Appeal was required to carry out a new, full examination of the merits of the application for invalidity, in terms of both law and fact, without being bound by the content of the decision of the Invalidity Division.
• According to the General Court, the board had not introduced new facts, but had undertaken an assessment of the similarity between the contested design and the earlier 3D mark and an assessment of the novelty and individual character of the design on the basis of the facts presented to it. It had assessed the signs in detail and concluded that, due to differences in detail, the contested design and the earlier 3D mark were similar, and not identical.
• The General Court re-confirmed its first decision that Article 25(1)(e) of Regulation 6/2002, in its literal interpretation, does not necessarily preclude its application to an earlier sign which is only similar, and not identical, to a subsequent Community design.
• The General Court rejected Beifa Group’s plea that the board had failed to examine the extent to which the contested RCD and the earlier 3D mark were similar. The board had assessed the contested design in global terms and, precisely because of the surface differences of the contested design, had concluded that the design and the earlier 3D mark were similar and not identical.

All in all, the two decisions of the General Court give clear guidance with respect to invalidation proceedings against RCDs based on (similar) earlier trademarks. The second decision of the court contains no surprise with regard to the substantive aspects. 

Florian Schwab, Boehmert & Boehmert, Munich