Grumpy elf - CTM cannot prevent design registration of similar cartoon

This article was included in the spring 2011 issue of snIPpets - the intellectual property newsletter.

The EU General Court has refused to invalidate a Community design registration comprising a cartoon figure of a man sitting down despite the existence of an earlier registered trade mark for a very similar cartoon image (Baena v OHIM, Case T-513/09).

Community registered design filed on 7 November 2005, for use on T-shirts, hats, stickers, and posters	Community trade mark registered on 7 November 2000 in classes 25 (including clothing and headwear), 28 and 32

The owner of the Community trade mark (CTM) applied for the invalidity of the Community registered design (the Design) based on Article 25(1) of the Community Designs Regulation 6/2002, on the grounds that the Design was not new and lacked individual character and that the Design incorporated an earlier trade mark. 

The Invalidity Division of OHIM initially decided to grant the application on the ground that the Design made use of the CTM. On appeal, the OHIM Board of Appeal ruled that the Invalidity Division had erred in its decision, but upheld the finding of invalidity on the basis that the Design lacked individual character because it did not give the informed user, namely young people or children who often buy T-shirts, hats and stickers or users of posters, a different overall impression than that produced by the CTM.

The owner of the Design appealed this decision to the EU General Court claiming that the differences between the Design and the CTM meant that they gave a different overall impression to the informed user. They relied on differences including the facial expressions of the Design and the CTM, the position of the eyebrows, the presence of a mouth on the CTM, thicker lines in the CTM, the size of the necks, presence of only one arm in the CTM with lack of any finger detail, the presence of hair in the Design and a hat in the CTM, and the position of the feet in the silhouettes. They argued that the Design looked like a person whereas the CTM had the appearance of a "grumpy elf".

The General Court carried out a close comparison of the Design and the CTM. In its opinion, the difference in the facial expression between the two silhouettes was a fundamental characteristic. This, combined with the position of the body in the CTM, makes the character look annoyed. The General Court contrasted this with the global impression created by the Design where the character has a neutral expression and a relaxed posture.

In the General Court's view, the difference in the facial expression would be clearly seen by the young people buying T-shirts and hats. It would be even more important for children using stickers to personalise their objects, who will pay even more attention to the sentiment shown by the character appearing on the sticker. 

The General Court concluded that the differences in the two silhouettes and particularly the facial expression, combined with the different body positions, were sufficiently important to create a different global impression on the informed user, despite the existence of certain similarities concerning other aspects and the importance of the freedom of the designer of the silhouettes in these circumstances. Therefore, the General Court ruled that the Board of Appeal had erred in its decision and annulled its decision.