Chinese scooter lethal for Multimox - novelty European Union designs

Many companies register the design of new products in the EU with a Community Design. This allows counterfeiting to be tackled easily and the company maintains a monopoly on this design. However not every design can be claimed just like that. The design must be novel and have its own character (something creative). However, this requirement of novelty applies worldwide and the authorities in the EU do not actively check this. So the applicant should always check first with the design team (or the manufacturer) if the design is actually new. If this is not the case, third parties can easily cancel the rights.

Multimox registers the design of its scooter in 2006 as a Community Design. Competitor Asian Gear is about to start selling a similar scooter, so it starts a nullity procedure against the CDR claiming that the design is not novel, because in 2005 a similar model was registered in China. But could a company have been aware of this in this pre-internet period?

Yes, even back then design registrations could be checked via a trademark agency. This requirement of novelty applies worldwide, so the fact that the company has no registration in the EU is irrelevant. An older Chinese registered design is sufficient. The overall impression of both scooters is the same. Consequence: the design rights have been canceled and Asian Gear can start trading an alternative product. (Soure image EUIPO)

 

design-law



Latest news
The Bulldog rightly claims damages from Red Bull
Trademark Escobar parfum contrary to public order
Abcor team in World Trademark Review 1000
Louis Keijzer passes BBMM exam with flying colours
Competitor registers domain name
Our Clients
Follow Abcor
claimant
defendant
claimant
defendant

IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?