With its ruling of December 16th, 2010 the European Court has rendered its decision in case T-513/09 regarding a conflict between an Community design (CRD) and a Community trademark (CTM).

The CRD in question, which depicted an imaginary personality used as an ornamental motif on T-shirts, helmets and stickers, was initially declared invalid by the OHIM (Office for Harmonization in the Internal Market) at the end of an invalidity proceedings brought by the holder of a prior CTM representing a stylized human figure claiming the classes of clothing, games and toys.

As is known, the OHIM is the European authority responsible for the registration and the validity of Community trademarks and designs.

Although the OHIM’s Appeals Board had confirmed the First Instance Division’s nullity ruling, on appeal – citing the lack of individual character of the design, but finding that it had not been created using the prior mark – the European Court disagreed and overturned the decision of the Appeals Board.

With this ruling the European Court argued that there is differences in the facial expressions and posture of the two figures which is clear and visible to “informed users” of the product, in this case teenagers and children, who are therefore able to glean a different general impression from the two depictions.


contested EU model                            prior EU trade mark

Even though the author of the design had had a wide margin of freedom in the possible creation of the artwork and this could potentially have been prejudicial to his case, since it could have led to a stricter comparison, in assessing the case the Court favoured the judgement of the informed user – in this case, the teenager or child who was intended to receive the product – and his or her particular sensitivity in perceiving facial differences. In fact, the Court argued that such differences have to be considered pertinent to emotional aspects which are capable, in the judgement of the Court, of being impressed in the memory of the individual and can therefore sufficiently differentiate the two depictions.

The decision therefore introduces a significant precedent regarding the value of elements which, while being apparently marginal from the point of view of similarity (such as the facial expression of an imaginary personality), still become relevant when they are such as to be perceived in a meaningful way by the informed user.

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