In 2005, Beifa Group obtained a registered Community design for a highlighter pen. In 2006, Schwan-Stabilo successfully applied to OHIM for a declaration of invalidity of the design. The invalidation was based on an earlier German trade mark belonging to Stabilo, which was for a figurative representation of a highlighter pen. Article 25(1)(e) of the Community Designs Regulation provides a ground for invalidity where 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.

Beifa appealed to the General Court of the Court of Justice of the EU. The decision is of interest because it shows the interrelation between the harmonised designs and trade marks laws in the EU. The GC held:

1. The ground for invalidity in art. 25(1)(e) of the CD Regulation was not limited to where an identical distinctive sign is used in the subsequent design. Beifa’s design and Stabilo’s earlier trade mark were at best similar and not identical. However, the harmonised EU trade marks law entitled the trade mark owner to prevent use not only of identical but also similar signs.

2. Beifa could have demanded proof of use of Stabilo’s earlier trade mark. That was because Stabilo’s mark was more than five years old at the date of the application for invalidation of Beifa’s design. Under the applicable EU harmonised trade marks law – the German Markengesetz – the enforceability of Stabilo’s earlier mark depended on proof of use but only if Beifa had requested it. Unfortunately Beifa’s request was made for the first time before the OHIM Board of Appeal whereas it should have been made at first instance to the Cancellation Division. Beifa was therefore out of time.

3. The correct comparison for art. 25(1)(e) of the CD Regulation was between the design on the one hand and the earlier mark on the other hand. A condition of art. 25(1)(e) is that the trade mark owner must be able prohibit use of the earlier mark in the later design. Where the design is only similar to the earlier mark a likelihood of confusion in the mind of the public must be shown. OHIM based its conclusion of likelihood of confusion on a comparison of the design with another 3D mark in Stabilo’s ownership, not the 2D figurative mark relied on. Since the public’s perception of 2D and 3D marks might not be the same, the decision of the OHIM Board of Appeal must be annulled.