Beifa Group Co. Ltd v OHIM, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG (2010)
General Court of the Court of Justice Case T-148/08
This was an appeal against a decision of the OHIM Board of Appeal in an application for a declaration of invalidity in respect of a registered Community design.
The design in question was registered by Beifa in 2005. The application indicated that the design would be used in designs for ‘instruments for writing’. The design was used to market low cost fluorescent highlighter pens to the general public.
In 2006, Stabilo applied for a declaration that the design was invalid according to Article 25(1)(e) of the Community Designs Regulation 6/2002 (read in conjunction with harmonisedGerman trade mark law). In summary, they alleged that the Beifa design made unauthorised use of their earlier German registered trade mark and that this use created a likelihood of confusion among the public as to the economic origin of the highlighters, because the trade mark and the design were both registered for use in respect of ‘instruments for writing’, and the design was highly similar to the earlier mark.
At first instance, OHIM found for Stabilo, holding that the design made use of the four main features of the earlier mark and that such use created a likelihood of confusion in the identical market in which both parties were trading. The Board of Appeal upheld this decision.
Beifa sought to appeal the decision of the Board of Appeal on three grounds. The first of these was that Article 25(1)(e) only prevented the use of the earlier mark in a later design, not merely a similar sign. As the design and the earlier mark were not identical, the declaration of invalidity could not be upheld.
The Court rejected this argument, holding that the Community Designs Regulation does not presuppose a perfect and detailed reproduction of the mark in question. The later design can have different features, and still be using the earlier mark, particularly where the different features are of secondary importance to the overall impression created on the general public. The public retains only an imperfect memory of the trade marks registered in the European Union and as such, the public will not necessarily notice differences between a distinctive trade mark and a design lacking certain features or having additional features to that mark. This interpretation of the Regulation was seen as being the most consistent with the Recitals to the Regulation and also as being the only way of giving effective protection against encroachment on a registered trade mark by a later registered design.
The second ground of appeal claimed that the Community Designs Regulation read in conjunction with German law provided for the right to challenge Stabilo to prove that it was making use of the earlier trade mark on which it sought to rely. Accordingly, the Board of Appeal had been wrong in law to ignore Beifa when it made this request.
The Court accepted that the scope of protection provided by the Regulation is determined by the national law applicable to the trade mark and that in this case, the German law provided the owner of the later design with the right to resist a declaration of invalidity by requiring the trade mark owner to prove use. However, the proper time to request such proof was at first instance. The Board of Appeal is not competent to decide a dispute that is different from the case decided by the first instance OHIM board. As Beifa had not raised the matter until the case reached the Board of Appeal, their plea had to be rejected.
The final ground alleged that the Board of Appeal had failed to carry out a proper assessment as to the likelihood of confusion between the earlier mark and the design. In particular, it had failed to identify the relevant public; failed to to take account of the inherently low distinctiveness associated with trade marks consisting of a shape; and ignored 16 differences between the design and the mark.
The Court noted that in the present case, the Regulation read in conjunction with German law required the trade mark proprietor to show a likelihood of confusion in order to obtain a declaration of invalidity. Such confusion would result from similarity between the earlier trade mark and the design, and identity or similarity between the goods or services for which the earlier trade mark and the design were registered. The likelihood of any confusion would be measured according to a global view of the trade mark and design, paying particular attention to the dominant components of each (bearing in mind that the average consumer will not normally proceed to analyse the various details of a mark).
The question was therefore whether the Board of Appeal had applied this test correctly. It was found that the Board had erred in allowing itself to consider the likelihood of confusion that existed between the design and a separate trade mark owned by Stabilo (which was 3D, unlike the 2D German mark). It followed that the dispute had not been decided according to an assessment of the trade mark and registered design at issue and had to be annulled for this reason.
The Court annulled the declaration of invalidity upheld by the Board of Appeal and ordered that OHIM pay the costs of Beifa. Stabilo was ordered to bear its own costs.