When registered designs clash with trade marks

When trade marks and registered designs clash

The General Court recently gave its decision in Chen v OHMI – AM Denmark (Dispositif de nettoyage), T-55/12, a case where the owner of a three-dimensional trade mark sought a declaration of invalidity against a Registered Community Design. The basis of the opposition centred around whether there was a likelihood of confusion between the design and the mark in question. The registered design related to a lighter, whereas the trade mark was registered in relation to cleaning equipment.

Whilst the design did not reproduce the earlier trade mark in its entirety, the court nevertheless held that the mark was used in the design, noting the doctrine of imperfect recollection by the general public. The court went on to explain that the differences in the respective shapes did not subtract from high degree of similarity in relation to their form and dimensions. Of particular importance was the overall impression created by the respective products, which was sufficiently differentiated by the design including additional but otherwise non-distinctive elements to the core design.

The decision is similar to that in Budziewska v OHIM — Puma AG Rudolf Dassler Sport, T-666/11) in relation to a jumping feline device, commonly associated with the Puma sports brand. In this case, Community designs were applied for in relation to a jumping feline logo. This was opposed by Puma on the basis that the design was not new, it lacked distinctive character and made unauthorised use of Puma’s earlier trade mark.

The General Court upheld the decision of OHIM’s Board of Appeal to invalidate the design, noting that the design had been “disclosed” by Puma in its international trade mark. It further noted that the design was similar to the mark, in that the both represent a light coloured jumping feline on a dark background facing towards the left with a raised tail. It rejected the argument that the design sufficiently differentiated itself from the mark by adding detail to the eyes, ears and legs of the feline. The court held that these were minor details and did not create a different overall impression in the minds of the public.

The cases above highlight the overlap between these two intellectual property rights and the manner in which disputes will be assessed.

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