CLASS 99
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THURSDAY, 6 JUNE 2013
Imperfectly remembered => perfectly invalidated
The General Court recently ruled in Case T-55/12, Su-Shan Chen v OHIM, AM Denmark A/S intervening, on the impact of an earlier shape trade mark on a later Community Design. Those who spend sleepless nights on Class 99 may recall the General Court Case T-148/08, Beifa Group Co. Ltd v OHIM, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG intervening, which looked like a "shape mark" case but turned out to involve a wrongly cited 2D mark. This is therefore, strictly speaking, the first time the General Court has ruled on the impact of shape marks, though T-148/08 has plenty of obiter dicta.
This case concerned RCD 1027718-0001 (depicted right) to a cleaning device of some kind. The citation was earlier CTM 5185079, likewise a cleaning device (depicted below) - filed just a few months earlier. It was held invalid at first instance in Decision ICD 000007030, which was upheld on appeal in Decision R2179/2010-3. The General Court these days has a fairly low reversal rate, so it is perhaps no surprise that they too held the design invalid.
The decision clarifies some points previously in doubt.
Tags: cleaning device, community design, general court, invalidation, shape mark,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA460
Imperfectly remembered => perfectly invalidated
This case concerned RCD 1027718-0001 (depicted right) to a cleaning device of some kind. The citation was earlier CTM 5185079, likewise a cleaning device (depicted below) - filed just a few months earlier. It was held invalid at first instance in Decision ICD 000007030, which was upheld on appeal in Decision R2179/2010-3. The General Court these days has a fairly low reversal rate, so it is perhaps no surprise that they too held the design invalid.
The decision clarifies some points previously in doubt.
- Firstly, it clarifies that "use" of a prior sign (here: CTM) does not require identical reproduction - the question is one of infringement. "Imperfect recollection" has a significant role to play.
- Secondly, it clarifies (though there was really no doubt about it) that merely asserting invalidity of a prior CTM is insufficient. Design proprietors are going to have to file an invalidation action, and attempt to stay the design invalidation in the meantime.
- Thirdly, the presence or absence of minor textual matter is irrelevant. That will perhaps come as no surprise to those who have read the UK Whirlpool v Kenwood decision - it means that a "shape-plus-a-little-text" mark has virtually the same scope as a pure shape mark, and may be much easier to obtain.
- And fourthly, when considering whether a later RCD is invalidated by an earlier mark, the question of whether the later RCD is "trade mark use" (i.e. has an origin-indicating function) is irrelevant. A clean sweep. Design cancelled.
Tags: cleaning device, community design, general court, invalidation, shape mark,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA460
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