[co-author: Nikolaus Von Bargen]

In its judgment C-693/17 earlier this year, the CJEU confirmed a decision of the GC in design invalidity proceedings, in which the proprietor of a trademark protecting the image of product packaging successfully took action against the filing of a design featuring similar packaging filled with coloured sweets.

Background

The plaintiff manufactures coloured oval sweets and in 2007 filed a Community Design for the packaging shown below for “comfit boxes and containers”.

The intervener at first instance, known internationally for manufacturing sweets packaged in small, transparent boxes, among other products, filed an application for a declaration of invalidity of the design, based on its registered figurative trademark shown below.

The Cancellation Division and the Board of Appeal of the EUIPO granted the invalidity application.

The action to overturn the Board of Appeal decision, brought before the GC, was unsuccessful. The GC supported the Board of Appeal in all points at issue under substantive law. Among other things, the plaintiff pointed out that the overall impression of its design filing was determined primarily by its rounded edges, the prominent logo on the label and the coloured oval sweets that can be seen in the photographs included with the filing. In all these points, the plaintiff contended that the design in question differs from the trademark of the opposing party. The GC was unable to find anything legally relevant in any of these arguments. On the contrary: it took the view that the overall impression of the opposing product packaging is not determined by the (rounded) edges and that the logo is not of any consequence, since the label in its basic form – extending from the front of the box over the lid to the back – is similar and that the relevant group of consumers are generally not expected to pay much attention to confectionary packaging. The court found that the fact that the photograph shows the packaging filled with coloured sweets is also irrelevant as the design was filed precisely only for “comfit boxes…”, i.e. the packaging of the actual product, and not for the product itself.

The plaintiff proceeded to appeal before the CJEU, arguing among other things that the GC had incorrectly treated the trademark as a three-dimensional trademark and not as a pure figurative trademark. In addition, it stated that the court had ignored characteristic design features of the design filing; the coloured oval sweets shown in the photographs and the logos on the product packaging.

Decision

The appeal before the CJEU was also unsuccessful. The CJEU first noted that the GC’s findings with regard to the type of trademark are factual in nature and that these could only be challenged using the remedy of appeal if the content of the file was falsified or the facts of the case were distorted. It stated that such a judicial error was not being asserted by the plaintiff.

As to disregarding the influence of the depicted coloured sweets on the nature of the design filing, the CJEU found that the plaintiff merely repeats its argument from the previous instance. In the CJEU’s view, this is not a legitimate challenge of the GC’s judgment.

Finally, the CJEU ruled that the objection that the logos found on the product packaging were allegedly not taken into sufficient consideration was not convincing either. It held that, in this respect, the assessment of the facts by the lower court was being challenged and that such a challenge below the threshold of the falsification of the facts is not permitted in the appeal.

Comment

The decisions of the CJEU and at the previous instances are to be welcomed not only from a legal point of view. They also serve as a good example of how IP rights can also be effectively defended across different types of right – in this case a well-known trademark against a registered design.

Taking a comprehensive trademark strategy is a key strength here. If a product or its packaging is to be protected, it often makes sense to apply for a corresponding trademark in addition to other rights. This is because it is precisely when claims under design or unfair competition law fail (e.g. because the term of protection has expired or a proprietary product has not been unfairly imitated), that the registration of a figurative or three-dimensional trademark might be able to close gaps in protection. In the case at hand, the trademark proprietor’s protection strategy ultimately paid off.

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