Product packaging
The case involved a dispute over a registered Community design (which is now called EU design right) incorporating a word element, that allegedly infringes a pre-existing trade mark.
The decision on appeal was handed down by the European Union Intellectual Property Office (EUIPO) and concerns the the invalidity of a registered Community design for a cardboard box used for packaging of products. It was argued that the contested design incorporated the word “dr. albert”, which conflicted with earlier trademarks and trade names by Alberts. The Board of Appeal of EUIPO had dismissed the invalidity action.
Trade mark protection and design rights
The case revolves around the application of Article 25(1)(e) of Council Regulation No 6/2002 on the protection of European designs, which allows for the invalidation of a design if it contains a distinctive sign without the consent of the rightful owner.
This article reads that a design may be declared invalid in case ‘a distinctive sign is used in a subsequent 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;
Court decision on trade marks and design rights
The court had to determine whether the trademark rights of Alberts extended to the contested design, and if there was a likelihood of confusion between the packaging design and the trademarks.
The court ruled that the scope of protection for Alberts' trade mark rights did not extend to the design in question:
“According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (…).
[W]hen assessing the similarity between the goods at issue, all the relevant factors relating to the link between those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or complementary (…). Other factors may also be taken into account such as the distribution channels of the goods concerned (…).”
It was ruled that there was no similarity between the goods concerned by the contested design and the goods covered by earlier mark.
The court noted that the applicant’s trademarks primarily covered clothing, footwear and headgear, cosmetic products and medical services whereas the contested design concerned packaging. Therefore, the action in the invalidity proceedings was dismissed.
Key takeaways
This ruling reinforces the principle that trademark rights do not automatically extend to every instance where a similar sign appears in or is placed on a design. Even though businesses may seek to invalidate a registered design right, and this can be based on trade mark infringement, holders of protected trade marks must prove such an infringement. In cases where trademarks and designs are exploited in different commercial spheres, this may be more difficult to show.
The judgment can be accessed here.
