EU trade mark dispute: cleaning capsule - EU design dispute: LED light bulb

EU trade mark dispute: cleaning capsule

On 13 February, the General Court of the European Union ruled in case T-361/24 on the distinctiveness of a trade mark consisting of a cleaning capsule.

In 2022, the Dutch company Reckitt Benckiser Finish BV applied to the European Union Intellectual Property Office (EUIPO) for registration of the EU figurative mark no. 018805771, representing a cleaning capsule composed of segments in different colours, in particular white, blue and red. The mark applied for covered several goods in Class 3 of the Nice Classification, including dishwashing preparations, detergents, bleaching preparations and other related goods.

At first instance, the examiner refused the trade mark application for all the products on the ground that it lacked distinctive character under Article 7(1)(b) EUTMR. The Board of Appeal later upheld this decision, but remitted the case to the examiner after the applicant claimed that the mark had become distinctive through use. The Dutch company appealed the decision to the General Court of the European Union, which had to determine whether the mark had sufficient distinctive character to be registered.

First, the Court noted that distinctiveness refers to a mark's ability to identify a specific product and to distinguish it from others on the market. That assessment is based on the average consumer's perception of the goods in question. In that regard, the Board of Appeal stated that the mark applied for was merely a graphic representation of a cleaning capsule. Its shape was not significantly different from other capsules on the market, so that it could easily be associated with similar products, rather than uniquely identifying the applicant's goods.

Although the applicant argued that the red element in the mark could confer distinctiveness, the Court considered that the shape and colour used were common in the sector and could not be considered unique or distinctive. The applicant also referred to examples of other registered marks, but the Court pointed out that previous decisions of the EUIPO were not binding on the Boards of Appeal, meaning that each case had to be assessed independently. As a result, the Court dismissed the appeal.

EU design dispute: LED light bulb

On 12 March, in case T-66/24, the General Court of the European Union ruled on the invalidity of a Community design representing an LED light bulb.

In January 2017, the Taiwanese company Liquidleds Lighting Corp registered a Community design corresponding to an LED light bulb (nº 003619881-0003. In March 2021, the German company Lidl Vertriebs GmbH & Co. KG filed an application for a declaration of invalidity of the design for lack of novelty and individual character. Lidl originally claimed that this was due to the fact that two earlier designs had already been disclosed at the time Liquidleds filed the application for the protection of the design. 

Both the Cancellation Division and the Board of Appeal of the EUIPO rejected the application. Furthermore, the Board of Appeal argued that the first earlier design did not invalidate the design registration in application of Article 7(2) of the EU Design Regulation, and that Lidl had not provided sufficient evidence to prove that the second design had been disclosed prior to the contested registration.

The exception in Article 7(2) of Regulation No 6/2002 allows the creator or his successor in title to register a design even if it has been previously disclosed, provided that such disclosure took place within a “grace period” of 12 months before the application is submitted, and that it was inter alia the result of the design owner’s actions. 

Lidl appealed to the General Court of the European Union, claiming that the grace period exception only applied when the previously disclosed design was identical to the design applied for. The Court rejected the argument and pointed out that the exception in Article 7(2) of Regulation No 6/2002 applies to the assessment of novelty and the individual character of a design in relation to earlier designs, including even if they are not identical, as long as it produces the same overall impression on the informed user. 

In addition, Lidl also argued that the EUIPO Board of Appeal had wrongly shifted the burden of proof onto them, and that the design owner should be the one having to demonstrate that Article 7(2) applied in this situation. The Court held that this was indeed correct, but that the EUIPO Board of Appeal had not shifted the burden of proof: the design holder had provided evidence, but it was Lidl’s responsibility to bring forward arguments against them.