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CASE COMMENT CASE COMMENT The pen is mightier than the figurative mark? Beifa Group Co Ltd v OHIM (defendant) & Schwan-Stabilo Schwanhaüßer (intervener), Case T-148/08. Almost five years after Beifa’s Community registered design for a highlighter pen prompted an objection by Schwan-Stabilo, judgment of the General Court came down on 12 May 2010. Arguably the most arresting aspect of the decision is the result itself, but there’s more to this case than meets the eye, says Ben Longstaff. What happens if you register a Community design for a product, and a competitor objects that your design is too much like one or more of their registered trade marks for the same product? It shouldn’t be too difficult to sort out, or at least you might hope not. Yet after just such unremarkable beginnings, this seemingly simple dispute over highlighter pens has become the first Community registered design appeal to reach judgment in the General Court. Beifa’s registration (no 352315-0007, published on 26 July 2005) was for a highlighter pen. The following summer, Stabilo succeeded in invalidating the registration under Art 25(1)(e) of the Community Design Regulation (6/2002), which refers to earlier rights arising out of either national or Community law. In this case Stabilo relied on its rights under national law – the Markengesetz, which is Germany’s implementation of the Trade Mark Directive. The Stabilo trade mark in question showed a figurative drawing of a highlighter pen, with, it must be said, at least some resemblance to the Beifa design (see German trade mark 300454708). Beifa’s appeal from the Cancellation Division was dismissed at OHIM in January 2008. The Third Board of Appeal found that use of the sign would breach Stabilo’s rights under the Markengesetz, despite certain differences between the design and the mark. Consequently there was no need to consider Stabilo’s other evidence on invalidity (this conclusion was to have a crucial bearing on the outcome). Beifa then took its case to 14 ITMA Review the General Court, arguing that the decision should be annulled and sent back to the Cancellation Division to hear the remaining points. Beifa made three particular pleas on the substance: 1) Art 25(1)(e) should be restricted to designs identical to the earlier mark; 2) Beifa was entitled to request proof of use of the earlier mark; and 3) Art 25(1)(e) had been incorrectly applied, since there had not been a proper assessment of the likelihood of confusion Perhaps unsurprisingly, Beifa lost on the first point. The General Court held that there was no reason to interpret Art 25(1)(e) so restrictively – that would prevent trade mark owners objecting to all but identical signs, and would be at odds with the recitals to the designs Regulation. The second point provided at least a technical victory for Beifa. The court ruled that the company was certainly entitled to rely on the proof-of-use provisions in the Markengesetz, despite the fact that there are no equivalent entitlements in the Regulation. This suggests that Art 25(1)(e) imports not just earlier rights arising under the national law, but also any corresponding limitations that qualify those rights. The catch was the General Court’s next finding: the correct time to ask for proof of use of the mark was during the period for preliminary observations by the proprietor. Unfortunately for Beifa, this request was therefore way out of time. Ben Longstaff The third of Beifa’s pleas created a lengthy discussion in the judgment. The appellant’s argument was that OHIM had not undertaken an assessment of the likelihood of confusion on the part of the relevant public. Again, the court turned to the national law relied on by Stabilo, the Markengesetz, which does indeed require a likelihood of confusion, in line with Art 5(1)(b) of the Trade Mark Directive. The correct test was therefore to apply the case law derived from that article – global assessment, overall impression and so on. The court duly identified the relevant public and the nature of the visual comparison to be made in this case (conceptual and aural considerations being largely impossible for the shape of pens), apparently endorsing the approach taken by the Board at OHIM. In fact it all appeared to look very promising for Stabilo, until the issue of the mark itself came under scrutiny. Here things veered badly off course for the trade mark proprietor. The General Court noted that the Cancellation Division’s judgment had referred to the “three-dimensional shape” of the earlier trade mark. It also noted that the parties all agreed that the mark was in reality a figurative mark, as recorded in the minutes. The “inescapable conclusion” of this paradox was that the comparison made by the Cancellation Division was between the design and some other, unidentified three-dimensional mark. The suggestion was that the rogue mark might well have been a German 3D mark that Stabilo had July/August 2010
elied on at an earlier stage. This error in law was fatal to the outcome, and since it had not been corrected by the Board of Appeal, the decision had to be annulled. OHIM and Stabilo argued that it was enough that the earlier mark was similar to a different sign, which was in turn similar to the design – a sort of chain of similarity. As one might expect, the General Court had little time for that argument, stating that there is no presumption that similarity will hold by extension via an intermediate sign. The comparison must be with the exact sign relied on. Moreover, to hold otherwise would require the court to make fresh findings of fact on similarity, and the court had already made quite clear that it was not able to rule on the merits of issues not already discussed below. The outcome of all this was that Stabilo’s earlier wins were overturned, restoring Beifa’s registered Community design. In a further unfortunate twist for Stabilo, the court held that even though the respondent had no less than four other grounds for challenging the registration, these had not been considered by the Board of Appeal, and so could not be looked at by the General Court. For reasons best known to Stabilo, it had not sought to have the case remitted to the Cancellation Division for hearing its other arguments in the event of Beifa winning the appeal. In contrast, Beifa had sought hearing of those other arguments, presumably expecting that this would be the normal course of events, so the appellant must have been rather relieved when the court held that it’s interests were “sufficiently safeguarded by annulment of the contested decision” without needing to give Stabilo the chance to run further arguments. Whether Stabilo’s interests have been equally safeguarded is presumably something its lawyers are exploring. The judgment also produced a couple of jurisdictional and procedural points. Notably, the court rejected OHIM’s argument that remitting the case to the Cancellation Division would amount to the General Court giving an order to OHIM, which it had CASE COMMENT no jurisdiction to do. The court held that all it would be doing in such a situation is making a decision that Board of Appeal ought to have taken, and it noted that OHIM was bound to do whatever was necessary to comply with its judgments. The court further held that although new pleas in law are not admissible on appeal as a general rule, a party can bring a plea that amplifies or is closely connected with a plea previously put forward, whether directly or by implication. Where does all this leave trade mark proprietors? The judgment certainly seems to strengthen the position of Community designs as against figurative marks. It also emphasises the need to make absolutely clear that a 3D mark is being registered as such rather than just a figurative image (see for example rule 3.4 of the Implementing Regulation 2868/95, as amended). Even so, the judgment also emphasised that the relevant public will perceive threedimensional marks differently to figurative marks, presumably referring to the lower inherent distinctiveness of shape marks. It may not seem a heartwarming judgment for trade mark owners, but clearly a great deal turned on the elementary error of making the comparison with the wrong mark. It sounds as though relying on the interloping mark, whatever it may have been, would have been a much better bet for Stabilo (OHIM seemed to think so), and of course it is also possible that Stabilo could have romped home on its other arguments. That doesn’t make the General Court ruling wrong, however. Rather, it highlights the potential inefficiency and uncertainty that can result from not deciding on all the issues at first instance, but instead allowing a single issue to determine the outcome as far as the General Court. As such, this decision probably says much more about the importance of well structured litigation than it does about the inherent strength of trade mark rights. Ben Longstaff is a pupil at Hogarth Chambers, where he has been sitting with Richard Davis, counsel for Beifa “The judgment certainly seems to strengthen the position of Community designs as against figurative marks. It also emphasises the need to make absolutely clear that a 3D mark is being registered as such rather than just a figurative image (see for example rule 3.4 of the Implementing Regulation 2868/95, as amended). Even so, the judgment also emphasised that the relevant public will perceive threedimensional marks differently to figurative marks, presumably referring to the lower inherent distinctiveness of shape marks. “ July/August 2010 ITMA Review 15
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