On 18 July, the General Court of the European Union (“GC”), in case T-57/16, annulled a decision by which EUIPO’s third Board of Appeal had rejected an action of nullity proposed by the French maison Chanel SAS against the Community design represented below (on the left), registered for ornaments under class 32 of the Locarno classification.

EUIPO had considered, inter alia, that the overall impression generated on the informed user by such design was different from the one generated by the Chanel’s famous monogram consisting of two interlocked and opposing Cs, registered as trademark since 1989 (on the right); the GC, instead, came to an opposite conclusion – for the reasons illustrated here below – and overturned the decision.

 12

The contested design (CD no. 1689027-0001)

Chanel’s monogram

 

In its appeal to the GC, Chanel contested the grounds of the Board of Appeal’s decision, with reference to, among other things, the alleged existence of individual character in the counterparty’s design. In particular, the appellant claimed that the Board of Appeal: i) did not consider the nature of products to which the design at issue was applied; ii) did not take into account, as it should have done in order to make the comparison, the design rotation of 90° with respect to its representation included in the relevant application for registration; iii) did not properly consider, even though it has been assessed, that the design author had had a high degree of freedom in designing it. The latter circumstance, by solid case-law, means that small differences between designs must be considered insufficient to generate a different overall impression on their users.

EUIPO defended itself by arguing that it was not necessary to consider the use of designs on products, since the relevant conditions of this use entirely depend on the parties’ will and that, despite the author’s high degree of freedom, the differences between the central part of the designs at issue – deemed significant by EUIPO – excluded the identity of the respective overall impressions on their informed users.

Firstly, the GC found that there was no contestation between the parties on the following facts: i) the priority of Chanel’s monogram with respect to the counterparty’s design; ii) that the latter was registered for ornaments; iii) that the contested design’s informed users were both professionals and end-users; and iv) the high degree of freedom owned by the design author. Given the above, the GC assessed whether the Board of Appeal was wrong, on one hand, to fail to consider the nature of the products to which the contested design was applied, and, on the other hand, to compare the overall impressions generated by the conflicting designs.

With reference to the first issue, the European judges stated that the appealed decision was correct, as it was the Board of Appeal’s right to consider the design as embedded in an ornament, since it was not necessary to identify products to which such ornament was intended to be applied. In addition, the absence of any indication within the application for registration about its purpose or function did not make it possible to determine the product field in which the contested design was intended to be used, or to compare it with Chanel’s monogram.

With reference to the second one, instead, they ruled that the overall impression generated by the two designs on the user, to be considered globally, is not different and that the contested design thus does not have individual character. The design can be seen as a creation inspired by Chanel’s monogram concept, since it was not conditioned by any kind of impositions and its author did not sufficiently distinguish it from the monogram. In fact, despite the design’s different central parts – however constituted of similar oval shapes that, in any case, cannot be easily perceived by the informed user especially when the contested design is rotated by 90° – the external parts which considerably determine the outline and the overall impression generated by the conflicting designs are very similar and almost identical. According to the GC, this conclusion is also supported, on one hand, by the uncontested high degree of freedom of the author, which, as aforementioned, involves that only considerable differences between designs can generate different impressions on the relevant users; and, on the other hand, that the contested design, as it is intended for ornaments, can be applied to any product. Given that it is almost impossible to preliminarily determine how it will be used, it is necessary to take into account the overall impressions generated by the conflicting designs even more meticulously. In light of the above, the GC annulled the appealed decision.