News

Highlighting the need for Community Design Registration

It appears that a trade mark owner with a trade mark registration for the shape of a product (a “figurative mark”) may not have protection for the three-dimensional shape of that product.

This week, in the first Community registered design case to be heard before the General court of the European Union, a blow has been dealt to the protection afforded by figurative trade marks. The court held that a figurative mark for a highlighter pen does not give the trade mark owner rights in the three dimensional shape of the pen.

The battle between pen manufacturers Stabilo and Beifa Group started when Beifa obtained a Community design registration for a highlighter pen. Stabilo then had the Community design cancelled based on its German trade mark registration for the three dimensional shape of its pen.

Beifa, appealed the cancellation decision but failed to convince the Board of Appeal of the differences between the shapes of the two pens (Beifa’s design and Stabilo’s trade mark). The features of Stabilo’s registered trade mark were held to be reproduced in Beifa’s Community design, with the differences not being enough to allow registration of Beifa’s design. The Board of Appeal also held that Stabilo’s earlier trade mark rights to the shape of their pen prohibited the use of the shape in Beifa’s product.

Now, the General Court has overturned the decision of the Board of Appeal in favour of Beifa and set out that Stabilo’s registered figurative mark is not considered to give it rights in the three dimensional shape of the pen. This means that Stabilo’s figurative mark cannot be used to invalidate Beifa’s Community Design Registration and cannot be used to prevent Beifa using the shape of Stabilo’s pen in its product.

It is expected that Stabilo will appeal the decision, so the debate looks set to continue. In the meantime, our advice is that trade mark owners registering a figurative mark should also consider obtaining a Community Design registration for the shape of their product.