When trade marks and registered designs collide: highlighter pens draw attention to the use of trade marks to invalidate registered Community designs

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Trade marks and registered designs can complement each other and they can also come into conflict with each other.  Several recent decisions have seen trade marks being used to invalidate a registered Community design (RCD) under Article 25(1)(e) of the Community Designs Regulation(No. 6/2002[1]).

Trade mark owners can use their trade mark rights to invalidate subsequently filed RCDs…

Recently, the General Court gave a decision (T-608/11) in a long-running dispute relating to highlighter pens.  The General Court held, inter alia, that the contested RCD was invalid in view of various earlier German and European Community trade mark registrations, including a figurative trade mark and a 3D trade mark.  Broadly, the RCD was held to be invalid since the trade marks and the RCD were similar, covered identical goods (highlighter pens) and there existed a likelihood of confusion on the part of the public.  The similarity between the contested RCD and the earlier trade mark rights relied upon to invalidate it can be seen in figure 1 below.


[1] Article 25(1)(e) of the Community Designs Regulation (No. 6/2002) allows for a registered Community design to be declared invalid if a distinctive sign is used in the design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use.  This ground must be invoked by the right holder of the sign.

In another recent General Court decision, T-55/12, an RCD for a product intended to be incorporated into cleaning devices was held to be invalid in view of a 3D European Community trade mark (CTM), registered for cleaning products in classes 3 and 21.

 Two further recent decisions of the Invalidity Division of OHIM – ICD9026 and ICD9042 – provide examples of the owners of registered trade marks being able to invalidate a subsequently filed RCD, which incorporates an identical sign to the registered mark.

…as long as they aren’t stretching the scope of their trade mark rights too far

By contrast, in decisions ICD8857 and ICD8858 of the Invalidity Division of OHIM, the applications to invalidate the RCD based on numerous earlier trade mark registrations failed because the contested RCDs and the earlier trade mark registrations were so dissimilar.  Both cases (ICD8857 and ICD8858) related to air fresheners and involved the same parties.  The holder of the earlier trade mark registrations appears to have been trying its luck somewhat, as illustrated for ICD8857 by figure 2 below, in which the RCD is shown on the left and one of the earlier trade mark registrations (TM5) is shown on the right.

Magic Tree

Points to note

These recent decisions of the General Court and the Invalidity Division of OHIM provide useful reminders to trade mark owners that in some circumstances trade mark rights may be employed to invalidate competitors’ subsequently filed RCDs. 

For instance, figurative and/or 3D trade marks may provide additional protection for the appearance of a product.  Such marks may also be useful in invalidating competitors’ subsequently filed RCDs, since RCDs can be used to protect the appearance of products, packaging and also the design of logos.

Article 25(1)(e) of the Community Designs Regulation refers to a distinctive sign.  In the UK, this will relate to unregistered as well as registered trade mark rights.  Thus, passing off rights, e.g. in the shape of packaging and/or products, could also be brought into play when trying to invalidate an RCD.

Of course, the overlap between registered designs and trade marks can be exploited in registration of rights as well as invalidation.  For instance, new branding or logos may be protected both as a registered design and as a registered trade mark with the two types of protection complementing one another.  Moreover, the rights conferred by a design registration may help a new brand or logo having borderline trade mark registrability to acquire distinctiveness as a trade mark.

For more information on European registered Community designs, please contact Nick Braddon or your normal patent or trade mark attorney at Barker Brettell.

Further reading

Innovative designs enjoy broader protection than you might expect

Should more businesses obtain registered designs?