Keywords

Summary



Keywords

1. Community design – Appeals procedure – Appeals before the Community judicature – Jurisdiction of the General Court – Referral to a lower level within OHIM

(Council Regulation No 6/2002, Arts 60(1) and 61(3) and (6))

2. Community design – Grounds for invalidity – Use of a distinctive sign in a subsequent design – Use of a sign bearing similarity to the distinctive sign – Included

(Council Regulation No 6/2002, Art. 25(1)(e))

3. Community design – Grounds for invalidity – Use of a distinctive sign in a subsequent design – Proof of use of the distinctive sign

(Council Regulation No 6/2002, Art. 25(1)(e))

4. Community design – Grounds for invalidity – Use of a distinctive sign in a subsequent design – Proof of use of the distinctive sign

(Council Regulation No 6/2002, Art. 25(1)(e))

5. Community design – Grounds for invalidity – Use of a distinctive sign in a subsequent design – Perception by the public of the design as being a distinctive sign – Lack of separate analysis

(Council Regulation No 6/2002, Art. 25(1)(e))

6. Community design – Grounds for invalidity – Use of a distinctive sign in a subsequent design – Comparison between the contested design and the distinctive sign – Three-dimensional sign

(Council Regulation No 6/2002, Art. 25(1)(e))

7. Procedure – Obligation for the Court to observe the parameters of the dispute as defined by the parties – Obligation for the Court to rule solely on the basis of the arguments put forward by the parties – None

Summary

1. Under Article 61(3) of Regulation No 6/2002 on Community designs, the Court has jurisdiction to annul or to alter a decision of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) ( OHIM). Under Article 61(6) of that regulation, OHIM is required to take the necessary measures to comply with the judgment of the Court, which means that it is not for the Court to issue directions to OHIM: rather, it is for OHIM to draw the appropriate inferences from the operative part of the Court’s judgment and from the grounds stated.

Under Article 60(1) of Regulation No 6/2002, where the Board of Appeal hears an appeal against a decision taken at a lower level within OHIM, it may, following the examination as to the merits, refer the case back to be dealt with at that level.

It is apparent from those provisions and considerations that, in an appeal against a decision of a Board of Appeal of OHIM, a head of claim by which the Court is asked to refer the case back to the lower adjudicating body whose decision was challenged before the Board of Appeal is not inadmissible.

If the Court were to uphold such a head of claim, it would not be imposing on OHIM any obligation to take action or to refrain from doing so and thus the Court would not be issuing directions to OHIM. The upholding of such a head of claim is akin, rather, to the Court itself taking a decision which the Board of Appeal ought to have taken or could have taken and, accordingly, to the exercise by the Court of its jurisdiction to alter the decision of the Board of Appeal which is being challenged before it.

(see paras 40-43)

2. Article 25(1)(e) of Regulation No 6/2002 on Community designs must be interpreted as meaning that it may be relied on by the proprietor of a distinctive sign for the purposes of applying for a declaration of invalidity in respect of a subsequent Community design, where use is made in that design of a sign similar to its own.

In the first place, the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002 does not necessarily presuppose a full and detailed reproduction of an earlier distinctive sign in a subsequent Community design. Even though the Community design may lack certain features of the earlier distinctive sign or may have different, additional features, this may constitute ‘use’ of that sign, particularly where the omitted or added features are of secondary importance. It follows that a literal interpretation of Article 25(1)(e) of Regulation No 6/2002 does not necessarily preclude the application of that provision where use is made, in a subsequent Community design, not of a sign which is identical to that relied upon in support of the application for a declaration of invalidity, but of a sign which is similar.

In the second place, the way in which Article 25(1)(e) of Regulation No 6/2002 is thus construed is the only interpretation capable of ensuring, first, effective protection of the rights of the proprietor of an earlier mark – whether a Community mark or a mark registered in a Member State – against any encroachment on that mark through its use in a subsequent Community design and, secondly, consistency between the relevant provisions of Regulation No 6/2002, on the one hand, and those of First Directive 89/104 to approximate the laws of the Member States relating to trade marks or Regulations No 40/94 and No 207/2009 on the Community trade mark, on the other.

(see paras 50, 52-53, 59)

3. One of the requirements under Article 25(1)(e) of Regulation No 6/2002 on Community designs is that Community law, or the national legislation governing the earlier sign relied on in support of an application for a declaration of invalidity on the basis of that provision, must confer on the right holder of the sign the right to prohibit the use of its sign in a subsequent design. Where Community law or the legislation of the Member State in question provides that the proprietor of an earlier mark may not exercise its rights against third parties if, during the five years preceding the assertion of those rights, the trade mark has not been used for the goods or services on which the proprietor relies for the purposes of exercising its rights, proof of such use must be adduced.

(see paras 63-65)

4. Since no specific provision is made in Regulation No 6/2002 on Community designs concerning the procedure for requesting proof of genuine use of the earlier sign, to be followed by the proprietor of the Community design in respect of which an application for a declaration of invalidity has been brought on the basis of the earlier sign, it may be inferred that that request must be submitted to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) ( OHIM) expressly and in due time. As a rule, the request must be submitted within the period of time granted by the Cancellation Division to the proprietor of the Community design at issue for submitting its observations in response to the application for a declaration that the design is invalid.

On the other hand, a request for proof of genuine use of the earlier sign relied on in support of an application for a declaration that a Community design is invalid cannot be made for the first time before the Board of Appeal. It is unacceptable that the Board of Appeal could be put in the position of having to rule on a dispute which is different from the dispute brought before the Cancellation Division, that is to say, a dispute the scope of which has been extended through the introduction of the preliminary issue of genuine use of the earlier sign, relied on in support of the application for a declaration of invalidity.

(see paras 67-68, 71)

5. An application, based on the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002 on Community designs, for a declaration that a Community design is invalid can succeed only if it is found that the relevant public will form the impression that use is made, in that Community design, of the distinctive sign relied on in support of the application for a declaration of invalidity. If it is found that the relevant public will not form the impression that, in the Community design in respect of which the application for a declaration of invalidity has been submitted, use is made of the distinctive sign relied on in support of that application, any likelihood of confusion can clearly be ruled out. However, it is not necessary to analyse separately the question whether the relevant public will perceive the Community design covered by the application for a declaration of invalidity as a distinctive sign.

(see paras 105-107)

6. The examination of the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002 on Community designs must be based on the perception by the relevant public of the distinctive sign relied on in support of that ground, as well as on the overall impression which the sign leaves in the mind of the public.

A three-dimensional mark, however, is not necessarily perceived by the relevant public in the same way as a figurative mark. In the case of a three-dimensional mark, the relevant public perceives a tangible object which it can examine from a number of angles, whereas in the case of a figurative mark, the public sees only an image.

The possibility cannot be ruled out, of course, that where two three-dimensional objects are similar, a comparison of one of those objects with an image of the other might also lead to a finding that they are similar. The fact nevertheless remains that the examination of the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002 involves a comparison between the Community design at issue and the distinctive sign relied on in support of that ground.

On the other hand, a similarity between the design at issue and the sign relied on in support of the application for a declaration of invalidity cannot simply be presumed merely because that design is similar to another sign, even though that other sign is similar to the sign relied on in support of the application.

(see paras 120-123)

7. Although the Court must rule only on the heads of claim put forward by the parties, whose role it is to define the framework of the dispute, the Court cannot confine itself to the arguments put forward by the parties in support of their claims, or it might be forced to base its decision on erroneous legal considerations.

(see para. 130)