The matter at hand

In 2007, the Polish company BMB filed a Community design representing a container for sweets similar in appearance to the famous Tic Tac® box, but with a label containing the word element ‘MIK MAKI’. In 2011, Ferrero (owner of the Tic Tac trade marks) filed an application for a declaration of invalidity of the design on the basis of a trade mark registration with effect in France for a figurative sign representing the appearance of the Tic Tac box. The application was based on Article 25(1)(e) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, which provides that a Community design may be declared invalid “if 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”. It was established that the applicable French Intellectual Property Code confers such rights on owners of French trade marks, by providing that (inter alia) the imitation of a mark and the use of an imitated mark may be prohibited if this causes a likelihood of confusion among the relevant pubic.

The application was granted by the Cancellation Division and the subsequent appeals to the Third Board of Appeal and the General Court were dismissed.

Before the ECJ, BMB alleged infringement of Article 25(1)(e) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, arguing that the General Court incorrectly classified Ferrero’s trade mark as a three-dimensional mark, failed to take into consideration that, unlike Ferrero’s trade mark registration, the design is represented filled with sweets and took insufficient account of the differences between the trade mark and the design. In this context, BMB referred to a judgment of thetribunal de grande instance de Paris(regional court of Paris), in which it was held that a design with the same characteristics as BMB’s design did not infringe Ferrero’s trade mark registration, considering that the design, just like BMB’s design, had no right angles, had rounded edges and included a label with, in that case, the words ‘Pick Up’.

The Judgment of the ECJ

With regard to the incorrect classification by the General Court of the invoked trade mark as a ‘three-dimensional’ instead of a figurative mark, the ECJ holds this is a finding of fact the validity of which cannot be examined by the ECJ in the context of an appeal, save where the General Court distorted the fact. Moreover, the ECJ holds that despite the classification of the trade mark as three-dimensional, it is nevertheless clear that the General Court did base its assessment on the trade mark as registered.

The ECJ furthermore rules that, contrary to what BMB contended, the General Court did consider BMB’s argument that the design represented a container filled with sweets, but dismissed it considering that this “cannot constitute a relevant point of visual comparison, since the contested design is registered merely for the box or container of those sweets and […] it is clear that the earlier international registration was also registered for a filling with sweets’” (paragraph 35). The ECJ rules that BMB’s argument thus “amounts in reality to no more than a request for re-examination of the application brought before the General Court, which the Court of Justice does not have jurisdiction to undertake” (paragraph 36).

Something similar applies to BMB’s complaint that the General Court took insufficient account of the differences between the trade mark and the design, such as the rounded edges represented in the design and the word element ‘MIK MAKI’ on the label. The ECJ rules that in assessing this argument, it would have to give a fresh appraisal of the General Court’s assessment of the facts, which does not, save where the facts have been distorted, constitute a question of law subject to review by the ECJ on appeal.

As to the reference to the judgment of the Regional Court of Paris, the ECJ holds this cannot bind the adjudicating bodies of EUIPO in invalidity proceedings, as neither the parties nor the subject matter of those proceedings are identical.