A recent decision from the General Court illustrates the interface between designs and trade marks.

By way of background, the regulation governing registered Community designs says that a design may be invalidated if the design uses a distinctive sign and the relevant Community or national law law allows the owner of the sign to prohibit this use. Put simply, if a design includes someone else's trade mark, the owner of that trade mark may be able to invalidate the design.

This case shows the rule in action. The registered design was for a cleaning device and the trade mark was a 3-dimensional mark registered for cleaning equipment. The court decided that, despite some differences between the two, the shape of the design resembled the trade mark and found the design to be invalid on the basis that it was likely to be confused with the trade mark.

It is interesting that no significance was given to the fact that the trade mark included the word "am", though that may be because the word was not at all prominent and was almost illegible except on close examination of the mark.

Link to Judgment

Judgment Date: 24 MAY 2016