Invalidity of the contested design for a box of sweets based on an older trade mark upheld

Print this page 06-03-2019
IPPT20190306, CJEU, BMB v EUIPO

Invalidity of the contested design for a box of sweets based on an older trade mark upheld. Appeal against General Courts finding that the fact that the contested design is filled with sweets cannot constitute a relevant point of visual comparison, since the contested design is registered merely for the box or container of those sweets dismissed: the appeal amounts in no more than a request for re-examination which the CJEU does not have jurisdiction to undertake. The same goes for the claim that the General Court failed to correctly take into consideration all of the relevant elements in its analysis of the similarity between the signs at issue. The General Court did not err in law by not taking into consideration a judgment of the tribunal de grande instance de Paris: this judgment cannot bind the adjudicating bodies of EUIPO in invalidity proceedings.

 

DESIGN LAW

 

In 2007, BMB filed a design with EUIPO for comfit boxes and containers in Class 09.03 of the Locarno Agreement Establishing an International Classification for Industrial Design. See the image above. The intervener at first instance, Ferrero, filed an application for a declaration of invalidity of the registered design before EUIPO pursuant to Article 25(1)(c) to (g) of Regulation No 6/2002. In support of its application, Ferrero invoked three earlier rights, including International Registration of a trade mark registered for sweets. See image on the left. The EUIPO  granted the application for a declaration of invalidity and the General Court upheld this finding.

 

In today’s judgment, the CJEU finds that the appeal against the General Courts finding that the fact that the contested design is filled with sweets cannot constitute a relevant point of visual comparison - since the contested design is registered merely for the box or container of those sweets - should be dismissed dismissed since the appeal amounts in no more than a request for re-examination which the CJEU does not have jurisdiction to undertake. The same goes for the claim that the General Court failed to correctly take into consideration all of the relevant elements in its analysis of the similarity between the signs at issue.

 

Moreover, according to the CJEU, the General Court did not err in law by not taking into consideration a judgment of the tribunal de grande instance de Paris, since this judgment cannot bind the adjudicating bodies of EUIPO in invalidity proceedings.

 

IPPT-version to follow

 

C693/17 P - ECLI:EU:C:2019:176