What do recent EU trade mark and design judgments mean for the UK?
Updated: Dec 20, 2021
Although EU law is no longer binding on the UK, in practice, the laws remain the same and what happens in the EU courts will continue to have a bearing on UK practice for some time to come. That means that we still need to keep up to date with the latest decisions of the European Court of Justice and the EU General Court. The General Court is a particular hotbed of IP activity as it considers a large number of appeals from EUIPO concerning EU trade marks and registered Community designs.
We’ve selected a few recent decisions that are likely to be of particular interest to consumer brands.
Trade mark: Red shoelace tips lack distinctive character
Case T-298/19 Think Schuhwerk GmbH v EUIPO (only available in French and German): In a judgment published on 17 November 2021, the General Court upheld a Board of Appeal ruling rejecting an EUTM application for a position mark comprising the red tips of shoelaces on the basis that the trade mark application lacks distinctive character.
The description for the trade mark (see above for the relevant sign) read: “The mark in question is a position mark. Trade mark protection is requested for the red ends of shoe laces, in the form of red tips, arranged on the shoe (red colour) (pantone: 18-1658 TCX Pompeian Red); other shapes and/or design features recognizable in the visual representation do not form part of this mark.”
The application covered “Orthopaedic footwear, namely shoes with laces” in class 10 and “Footwear, namely shoes with laces” in class 25.
The Fifth Board of Appeal said the mark applied for was devoid of distinctive character under Article 7(1)(b) and that acquired distinctive character through use within the meaning of Article 7(3) had not been proved. The Court agreed with the Board’s finding that the red tips would not be perceived as a distinctive sign by the relevant public: they were purely decorative and the particular shade of red chosen was irrelevant. It said: “the criterion which the mark applied for in the present case must meet is not that of simple originality ... in order to be able to be registered, the mark applied for must diverge, in a significant manner, from customs and industry standards”.
This was the second time the applicant had applied to an EUTM for red-tipped laces. The earlier application, filed in 2010, was also rejected.
Trade mark: SANDRIVER (figurative) confusingly similar to SAND
Case T-505/20 Ms Xiuling Guo v EUIPO/Sand CpH A/S: The General Court upheld a finding of likelihood of confusion between an EUTM application for a figurative mark (pictured) for various goods related to knitting in class 25 and an earlier EU word mark SAND registered for “Clothing, footwear, headgear” in class 25.
The Cancellation Division of EUIPO had dismissed the application for a declaration of invalidity, on the basis that the differences between the marks were striking, but the Second Board of Appeal disagreed, and found there was a likelihood of confusion.
The Court said the Board was right to focus on the German-speaking public, and to find that the level of attention was average. It correctly found that the element “sand” in the applied-for mark had an “independent distinctive role” and rejected the argument that there was a “logical unit” in the applied-for mark that prevented that element being perceived separately.
The signs were therefore visually, phonetically and conceptually similar to a certain degree. From an English speaking perspective, this is a somewhat surprising decision and possibly an indication of a change in the EU approach toward English language marks in the EU.
Registered Community Design: Hair clips
Case T-823/19 JMS Sports sp. z oo v EUIPO/Inter-Vion SA (not in English): This case concerned a registered Community design for “hair clips”, registered in 2010 (pictured).
The General Court upheld a finding that the design was invalid, based on lack of novelty in light of earlier designs (also pictured).
The judgment dismissed the applicant’s attempt to submit evidence that had not been provided during the administrative procedure at EUIPO.
The Court also upheld the Board of Appeal’s finding that the earlier designs had been disclosed on certain websites, as demonstrated by screenshots: “This evidence, the content and date of which were corroborated by several sources, did not raise serious doubts as to its reliability and credibility and, moreover, the applicant had not put forward any concrete evidence demonstrating the existence of doubts about such evidence.”
Importantly from an evidence gathering perspective, the court noted that the applicant's arguments that websites and blogs could be manipulated were merely general and abstract assertions without proof that manipulation had in fact happened.
Registered Community Design: Labels
Case T-443/20 Sanford LP v EUIPO/Avery Zweckform GmbH: In a case concerning a registered Community design for “labels”, the General Court agreed with the Board of Appeal that the RCD was invalid.
The Board of Appeal had found that some (but not all) of the features were dictated by technical function, so the Article 8(1) attack failed. However, the design produced the same overall impression on the informed user as earlier designs, and lacked individual character.
The Court agreed that the informed user, “without being a designer or a technical expert, knows the various designs of printer label rolls from the product range available on the market, possesses a certain level of knowledge with regard to the features which those label rolls normally include and, as a result of his or her interest, shows a relatively high level of attention when using them”, and the degree of freedom of the designer was considered to be average.
To find out more about the issues raised in this case contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - email@example.com #trademarks #iplaw #intellectualproperty #court #RCD #Designs #registereddesigns #IP #trademark