Battle of the IP rights: What happens when trademarks conflict with design registrations?


Managed as part of an IP portfolio, trademarks and registered designs are complementary rights that enable owners to protect and enforce their brand assets. But, what happens if a third party registers a design that conflicts with a brand owner’s existing trademark rights? A recent case, heard by the EU's General Court last month, considered this very issue.

The case in question dates back to August 2010 when global fashion brand Diesel SpA brought an application for a declaration of invalidity against a Registered Community Design (RCD), bearing the word ‘DIESEL’. The RCD had been filed by a Mr Dairek Attoumi and registered by the Office for Harmonization in the Internal Market (OHIM) in 2008 for use on ‘belts’. Diesel’s earlier trademark for the word mark ‘DIESEL’ also covered belts and clothing.

In a February 2012 decision, OHIM’s invalidity division found that a likelihood of confusion existed between the signs in question and that, as Diesel was able to exercise its right of exclusivity to the DIESEL trademark, the RCD was found to be invalid. Attoumi filed an appeal and requested that the proceedings be suspended. However, OHIM’s Board of Appeal ruled against him in 2014.

Undeterred, Attoumi contested the ruling. Among other things, he sought to challenge Diesel’s invalidation action based on a Spanish trademark ‘SDD SUPER DIESEL DAIREK’ (of which he is also the registrant), whose existence, Attoumi argued, lessened the likelihood of confusion between Diesel’s mark and his RCD. However, in its 9 September judgement, the EU's General Court refuted Attoumi’s arguments. After noting that the DIESEL trademark was able to enjoy a right of exclusivity on account of its distinctive character and seniority, the court also confirmed the cancellation of the contested design right.

Trademarks are powerful rights                                          
Article 25(1)(e) of the European Council Regulation on Community Designs allows brand owners to invalidate RCDs based on prior national and/or Community trademark rights. This provides trademark owners with an important tool; in particular when it comes to protecting and enforcing rights in relation to product, packaging and logo design.

To bring an invalidation action, brand owners need to show, as in the Diesel case, that the contested RCD is identical or similar to their trademark rights, that the RCD covers identical goods and that, as a result, there exists a likelihood of confusion on the part of the public. The RCD must be filed after the trademark right for which the brand owner is bringing the action. However, it’s important to note that the process covers unregistered as well as registered trademark rights; therefore, also enabling actions based on passing off in the UK.

Capturing and enforcing trademark and design rights
Of course, the ideal scenario for brand owners would be to register both their trademark and design rights prior to brand or product launches, thereby protecting against the risk of infringing design registrations in the first place. Design registrations are especially recommended for products that use design to differentiate themselves in their market. (Find out more about registered design rights here.)

To guard against RCD infringement for key trademarks and designs, brand owners should also consider putting trademark watching strategies in place. This should include, for example, monitoring and assessing all new trademark and design registrations (e.g. registrations of logo designs) at the relevant national and international trademark registers to identify potential conflicts with your trademarks.

As with trademark enforcement in general, the earlier an infringement is detected, the easier it will be to oppose registration of the conflicting mark. 

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