Judgments nº T-148/08 of The General Court, May 12, 2010

• Resolution Date: May 12, 2010
• Issuing Organization: The General Court
• Decision Number: T-148/08

In Case T‑148/08,

Beifa Group Co. Ltd, established in Ningbo, Zhejiang (China), represented by R. Davis, Barrister, and N. Cordell, Solicitor,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard‑Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court, being

Schwan-Stabilo Schwanhaüßer GmbH & Co. KG, established in Heroldsberg (Germany), represented by U. Blumenröder and H. Gauß, lawyers,

ACTION brought against the decision of the Third Board of Appeal of OHIM of 31 January 2008 (Case R 1352/2006-3) relating to invalidity proceedings between Schwan-Stabilo Schwanhaüßer GmbH & Co. KG and Ningo Beifa Group Co., Ltd in respect of a Community design,

THE GENERAL COURT (Fifth Chamber),

composed of M. Vilaras (Rapporteur), President, M. Prek and V.M. Ciucă, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court on 21 April 2008,

having regard to the response of OHIM lodged at the Registry of the Court on 17 September 2008,

having regard to the response of the intervener lodged at the Registry of the Court on 11 September 2008,

further to the hearing on 18 November 2009,

gives the following

Judgment

Legal context

Regulation (EC) No 6/2002

1 Article 1 of Council Regulation (EC) No 6/2001 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), as amended, states:

‘1. A design which complies with the conditions contained in this Regulation is hereinafter referred to as a “Community design”.

2. A design shall be protected:

   …

   (b) by a “registered Community design”, if registered in the manner provided for in this Regulation;

   …’.

   2 Article 3 of Regulation No 6/2002 provides:

   ‘For the purposes of this Regulation:

   (a) “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;

   …’

   3 Article 10(1) of Regulation No 6/2002 provides:

   ‘The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.’

   4 Article 19(1) of Regulation No 6/2002 provides:

   ‘A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.’

   5 Articles 24 and 25 of Regulation No 6/2002 provide:

   ‘Article 24

   Declaration of invalidity

1. A registered Community design shall be declared invalid on application to [OHIM] in accordance with the procedure in Titles VI and VII …

   Article 25

   Grounds for invalidity

1. A Community design may be declared invalid only in the following cases:

   …

   (e) if 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;

   …

3. The grounds provided for in paragraph (1)(d), (e) and (f) may be invoked solely by the applicant for or holder of the earlier right.

   …’

   6 In Title IV of Regulation No 6/2002 (Articles 35 to 44), which is entitled ‘Application for a registered Community design’, Article 36(2) provides, inter alia, that the application for registration of a Community design ‘shall further contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied’. Moreover, under Articles 41 to 44 of Regulation No 6/2002, an applicant for registration of a Community design is to enjoy, subject to certain conditions, a right of priority, the effect of which consists, under Article 43 of the regulation, in the date of priority being treated as the date on which the application for registration of a Community design was filed.

   7 In Title VI of Regulation No 6/2002, entitled ‘Surrender and invalidity of the registered Community design’, Article 52(1) provides that, ‘[s]ubject to Article 25(2), (3), (4) and (5), any natural or legal person, as well as a public authority empowered to do so, may submit to [OHIM] an application for a declaration of invalidity of a registered Community design’.

   8 In Title VII of Regulation No 6/2002, entitled ‘Appeals’, Articles 55 to 60 establish the appeals procedure before the Board of Appeal. The wording of those provisions is identical or analogous to that of Articles 57 to 62 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), Articles 58 to 64 of which correspond to Articles 57 to 62 of Regulation No 40/94).

   9 Moreover, in Title VII of Regulation No 6/2002, Article 61 provides:

   ‘1. Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals.

2. The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power.

3. The Court of Justice has jurisdiction to annul or to alter the contested decision.

4. The action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision.

5. The action shall be brought before the Court of Justice within two months of the date of notification of the decision of the Board of Appeal.

6. [OHIM] shall be required to take the necessary measures to comply with the judgment of the Court of Justice.’

   First Directive 89/104/EEC

   10 Article 4(4) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) (repealed by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25)), provides:

   ‘Any Member State may … provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

   …

   (c) the use of the trade mark may be prohibited by virtue of an earlier right other than the rights referred to in paragraph 2 and point (b) of this paragraph and in particular:

   …

   (iv) an industrial property right …’

   11 Paragraphs 1 and 2 of Article 5 of First Directive 89/104 provide:

   ‘1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

   (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

   (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.

2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.’

   12 Articles 10 to 12 of First Directive 89/104 provide:

   ‘Article 10

   Use of trade marks

1. If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use.

2. The following shall also constitute use within the meaning of paragraph 1:

   (a) use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;

   (b) affixing of the trade mark to goods or to the packaging thereof in the Member State concerned solely for export purposes.

3. Use of the trade mark with the consent of the proprietor or by any person who has authority to use a collective mark or a guarantee or certification mark shall be deemed to constitute use by the proprietor.

   …

   Article 11

   Sanctions for non-use of a trade mark in legal or administrative proceedings

   …

3. Without prejudice to the application of Article 12, where a counter-claim for revocation is made, any Member State may provide that a trade mark may not be successfully invoked in infringement proceedings if it is established as a result of a plea that the trade mark could be revoked pursuant to Article 12(1).

4. If the earlier trade mark has been used in relation to part only of the goods or services for which it is registered, it shall, for purposes of applying paragraphs 1, 2 and 3, be deemed to be registered in respect only of that part of the goods or services.

   Article 12

   Grounds for revocation

1. A trade mark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in...