A Community Design Is Misleadingly Similar To an Earlier Registered Three-Dimensional Trademark

Authors: Mykolas Jakutis, an Assistant to Attorney-at-Law in METIDA, Reda Zaboliene, Managing Partner, Attorney-at-Law, Patent Attorney in METIDA

On 25th April, 2013 the European General Court (EGC) analysed a case relating to the declared invalidity of the registration of the Community design representing a cleaning device. In its decision the EGC stated that the disucussed Community design used an earlier  Community trademark representing a cleaning device which includes a sprayer and a sponge.


         (Community design)                         (earlier Community three-dimensional trademark)

The proprietor of the earlier three-diemensional Community trademark AM Denmark A/S, referring to Community’s regulation articles and their relavant parts, applied to have the registration of the Community design declared invalid. Both the Invalidity Division and the Boards of Appeal declared the discussed design as invalid. In its decision, the third Board of Appeal stated that the geometric form, dimensions and shape of the earlier trademark were very similar and almost identical to the discussed Community design and the various trivial changes in it did not change the similar appearance of the compared objects. The Board also indicated that the goods for which the Community design was registered were included in the list of goods for which the previous Community trademark was registered, therefore, the identity of goods was stated.

The EGC rejected the appeal and let the decision of the third Board of Appeal hold. Taking into consideration all reasonings the EGC stated that the Boards of Appeal came to the right conclusion that the differences involving trivial elements and additional verbal elements (‘am’) should be ignored, for these differences are in the small parts of the cleaning device, and thus they do not affect the device’s form. The court decided that when comparing the Community design with the three-dimensional trademark, the phonetic and the conceptual comparisons are not possible. Firstly,  the earlier trademark possesses only an illegible verbal element, whereas the discussed Community design does not have a verbal element at all. Secondly, neither the trademark nor the design  evokes any similar semantic associations.

Due to the identity of goods between the Community design and the Community trademark, the Court concluded that there was a likelihood of confusion, despite assuming that the earlier three-dimensional trademark had a weak distinctive character.

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