Baena case: gnomic utterance awaited

On the right, a Community trade mark; on the left,
an apparently valid later registered Community design

"Take that expression off your face - if you want to keep your design" wrote Class 99 team captain David Musker (here), when relating the lamentable tale of the General Court's ruling in Case T-513/09 José Manuel Baena Grupo, S.A. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Herbert Neuman and Andoni Galdeano del Sel. David wrote then:

"As with several earlier General Court and OHIM decisions, the citation was taken "as a whole" and no thought was given to comparing like with like - since the design has no mouth, surely the fair comparison is to compare that part of the citation without a mouth to the design? In the context of an infringement, the implication of the General Court's approach is that one could take the entirety of a design, add something and thus avoid infringement. Is that right? What do you think, dear readers?".

Since most dear readers did not take the trouble to think or -- if they did -- they didn't take the trouble to tell Class 99, the unsuccessful party has had to take the step of appealing to the Court of Justice of the European Union, whose gnomic utterance we eagerly await.

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Stop press: I've just noticed that there are two separate appeals in this case. In Case C-101/11 P the appellants are Herbert Neuman and Andoni Galdeano del Sel while in Case C-102/11 P the appellant is OHIM itself.

Take that expression off your face - if you want to keep your design

The General Court has taken its fourth substantive Community Design appeal decision, Baena Grupo v OHIM T-513/09, on these two rather angry gnomes (or "lutins grognant"as the French text has it) - here, in French (Spanish also available).
The case has had a rather erratic history. The citation, on the right, is a published Community Trade Mark (CTM 1312651), and at first instance the Community design (RCD 426895-0002, on the left) was invalidated over the citation considered as a prior right, as being a mis-use (i.e. an infringement) of the trade mark.
The Appeal Board overturned that in Decision R 1323/2008-3 (here, in Spanish), ruling that "use" of an earlier mark in this context did not cover use of something similar (in contrast to the well-known MIDAS decision?) but held it invalid nonetheless, this time on the basis of lack of individual character over the citation considered as prior art.
What did the General Court say? They reversed the Board of Appeal, despite what one might reasonably think to be the overall similarity between the two. The twin bases were: firstly, the identity of the informed user - a teenager or a younger child (the latter was quite important), and secondly, the importance of the angry facial expression (and perhaps pose also) in the citation, as being the thing which would stick in the memory of that informed user.
From a UK point of view, it therefore makes an interesting contrast with the approach in Procter & Gamble v Reckitt Benckiser, firstly because this "informed user" is not stated to be attentive or particularly interested in design issues (and is hence pretty undiscriminating), and secondly because of what seems to be quite a strong role for the doctrine of "imperfect recollection", held in P&G to have lesser significance in design cases.
As with several earlier General Court and OHIM decisions, the citation was taken "as a whole" and no thought was given to comparing like with like - since the design has no mouth, surely the fair comparison is to compare that part of the citation without a mouth to the design? In the context of an infringement, the implication of the General Court's approach is that one could take the entirety of a design, add something and thus avoid infringement. Is that right? What do you think, dear readers?

Lego hit a brick wall - shape mark blocked by the ECJ

Another chapter in the longrunning Lego saga closes, with the ECJ today upholding OHIM in finding the distinctive red interlocking bricks invalid as a Community Trade Mark (Case C‑48/09 P, Lego Juris A/S v OHIM (Mega Brands Inc., intervening)).

The bricks were rejected as functional.  The ECJ followed their earlier reasoning in Case C-299/99 Philips v Remington and Case C-371/06 Benetton Group in rejecting the "multiple shapes" approach and finding invalidity based on, amongst other things, Lego's own earlier patents.  According to the ECJ, "the legislature has laid down with particular strictness that shapes necessary to obtain a technical result are unsuitable for registration as trade marks".  However, interestingly, although they ruled out trade mark protection they left the door open elsewhere - the matter "can, where appropriate, be examined in the light of rules on unfair competition" - over which the ECJ currently has no competence and Europe has no harmonisation.

Since trade marks are out and unfair competition is in, where does that leave designs?  The particular kind of "functionality" involved in Lego bricks is that usually called "must fit", which is specifically excluded from design protection in Europe.  However, there is an exclusion-from-the-exclusion for modular products such as Lego bricks.  The legislature would therefore seem to have taken a narrower view of the functionality exclusion for designs, as the A-G commented in the Philips case.

The narrower functionality exclusion proposed by the A-G would only bite where a design could be made in only a single shape, and the ECJ point out, in Lego, the time-honoured fear that problems arise "if various purely functional shapes of goods were registered at the same time, which might completely prevent other undertakings from manufacturing and marketing certain goods having a particular technical function."  These concerns were also recently voiced by OHIM in the "Chaff Cutters" case R 690/2007-3, and by the UK court in Dyson v Vax.

Aside, however, from "must-fit" situations (which are specifically dealt with in European design law) I am hard-put to envisage any situation where a design could consist of a simple shape for which there were only a few discreet alternatives - I am not sure it is a realistic prospect. 

Is the A-G right?  Or is unfair competition the only hope for even mildly functional designs?  A pretty threadbare hope if so.