In a decision of Nov. 11, 2008 (ICB 4992), the Cancellation Division of the Office for Harmonization in the Internal Market (OHIM) cancelled the registered Community design 807847-0001 according to Article 25 (1)(e) of the Community Design Regulation (CDR). According to this provision, a Community design can be declared invalid if it contains a third-party trademark or other distinctive sign that is protected at least in one Member State.  

The registered owner of the more senior international mark 792611 “VITEK,” with protection for goods in Classes 3, 11 and 21, filed an application for invalidity against the registered Community design.

According to Article 5 of the Directive 89/104/EEC to approximate the laws of the Member States relating to trademarks, a trademark proprietor may prevent all third parties from using a sign without his consent in the course of trade if there is a risk of confusion. The Cancellation Division ruled that the application of a Community design constitutes use in the course of trade because the aim of the application is that the design is used for commercial purposes.  

Furthermore, as the Cancellation Division pointed out, the goods for which the “VITEC” logo in the Community design is used were identical with the goods for which the trademark “VITEK” is protected. A logo, according to the Cancellation Division, could be used for all kinds of goods and services. In particular, the aim of the logo was to use it on goods or on their packaging, as well as in business correspondence and advertising. Therefore, the registered design also concerns goods for which the mark is protected. Furthermore, there was a significant similarity between the mark and the registered design. Phonetically, the verbal elements in the two signs are identical.  

As a result, the Cancellation Division found a risk of confusion and concluded that the trademark proprietor could successfully act against the registration of the Community design. This decision confirms earlier case law of the Board of Appeals of OHIM of May 3, 2007 (R609/2006-3), in which a Community design was also declared invalid based on a more senior international trademark with protection in several Member States. Trademark owners should be aware of this possibility and should not just monitor new trademark applications, but also new registered designs. While registration of Community designs cannot be prevented for lack of opposition proceedings, Article 25(1)(e) CDR enables trademark owners to quickly and efficiently attack a more junior Community design based on a more senior trademark, once the design has been registered.