May 2024

Decision of the Athens Court of First Instance on the Cancellation of a Registered Community Design and Rejection of a Compensation Claim

Recently adopted by the Commission, No. 806/2024 decision of the Athens Multi-Member Court of First Instance (EU Trademark Department), which, after upholding the counterclaim for cancellation of the trade mark and industrial designs filed by our clients, dismissed in its entirety as unfounded in substance the action brought against them by the opposing party seeking the cancellation and cessation of the alleged infringement of its trade mark and industrial designs, which it affixes and incorporates in the bags it markets, and the payment of damages for the same cause of action.

Specifically, the Athens Multi-Member Court of First Instance annulled the opponent's registered national, Community and international industrial designs on the basis of the following well-founded and well-reasoned reasoning: "[...] Accordingly, in accordance with the above, all of the above registered designs of the plaintiff and in particular [...] do not meet the requirements of the new and are not individual in character, within the meaning of Article 12(1)(a) of Regulation No 40/94. 3 and 4 of Decree 259/1997 and Articles 5 and 6 of Regulation 6/2002. In particular, a visual comparison between, on the one hand, the designs reproduced on the bags in the [...] collection of the company [...] under the name [... ], the fabrics of the 'Apollon' range of the American company 'Jim Thompson Fabrics', the bags of the world-famous fashion house 'Pierre Balmain', which have been on the market since 1971, and the bags and accessories of the world-famous fashion house 'Givenchy', whose emblem was designed in 2003, and the fabric chair from the 'Statement Chairs' range of the American company 'Cindy Hattersley Design', which has been available since August 2016, and the national/European/international designs registered by the applicant, which are reproduced on the bags in the [... ], as shown in the photographs submitted both by the latter and by the defendant counterclaimants, it is established that the characteristics of the designs of all the abovementioned collections are identical, within the meaning of Article 12(1)(b) of Regulation (EC) No 40/94. 3(b) of Decree No 259/1997 or identical within the meaning of Article 5(3)(b) of Decree No 259/1997. 2 of Regulation No 6/2002, in the sense that the differences between them are not considered to be material.  ), as well as the colour variations in which they are available[...]. Consequently, despite the existence of certain minor visual differences in the designs incorporated in the applicant's [...] collection of handbags, the Court considers that those differences do not create a different overall impression on the informed user in relation to the bags in the [...] collection. ] collection of the company [...], in so far as they do not constitute a fundamental distinctive difference between the design of the [...] handbags and those of other designers inspired by the ancient Greek symbol of the meander [...]. Moreover, as is demonstrated by a comparison of the designs reproduced on the bags of the [...] collection of the company [...], the bags of the world-famous fashion house 'Pierre Balmain', which have been on the market since 1971, and the bags and six-shoulder bags of the world-famous fashion house 'Givenchy', whose emblem was designed in 2003, as well as the bags under the trade names [...], which are the most famous of the [...] collection. ], which bear the same design and styling style as the applicant's handbags, as well as similar designs inspired by the ancient Greek symbols of the meander and the labyrinth, the relevant product market is flooded with numerous motifs which are identical, if not identical in some cases, to those of the applicant. In view of the foregoing, the informed user in the case of women's handbags, that is to say, the female consumer who buys similar handbags, is informed of the fashion trends in the relevant sector and is aware of the patterns circulating on the relevant market, so that he does not obtain a different overall impression from the applicant's patterns, as compared with the patterns already applied to handbags marketed by other undertakings in the relevant sector, first, because, as stated above, the relevant market for women's handbags is flooded with the applicant's designs, which were registered between 2020 and 2021, in order to distinguish women's handbags intended for both the Greek and the European/international markets, are not new and do not have an individual character within the meaning of Article 12(1)(b) of Regulation No 40/94. 3 and 4 of Decree 259/1997 and Articles 5 and 6 of Regulation 6/2002[...]'.

Subsequently, the Court of First Instance, having accepted the second objectively cumulative claim of the counterclaim of our orders, also annulled the registered composite word and figurative EU trade mark of the opponent, because it considered that the ground of absolute inadmissibility consisting of lack of distinctive character (Article 7(1)(a) and (b) of Regulation No 2017/1001) applied to it. That judgment was the culmination of the following particularly pertinent and perceptive factual assumptions: '[...] the contested European figurative mark, which depicts a meander shape, otherwise known as the Greek key/meander, and is used by the applicant on the bags in question in the collection '... "does not contain any information indicating their commercial origin, nor does it attract the attention of the relevant public, but is perceived as a geometric shape on a purely aesthetic basis, that is to say, as a decorative element of the bags in question, since it does not contain any information concerning their origin, that is to say, the name of the plaintiff's individual company or the word element [... ], referring to the collection in question, which alone could confer distinctive character on that figurative indication[...] Moreover, the figurative indication in question is commonplace, since it is a trivial element relating to fashion products and, in particular, to handbags, clothing and accessories, since, as is demonstrated by the publication produced and relied on by the defendants-counterclaimants [...], [... ] the Greek key (meander) is a decorative outline, made of a continuous line, formed in a repeating pattern, symbolizes unity, the bonds of friendship, love and devotion and is a decorative element that is still used today in furniture, decoration, flooring materials and in the field of fashion, the female consumer public is accustomed to perceiving that representation not as an indication of the origin of the collection of handbags in question, but as a decorative element with an aesthetic function, with the result that it cannot perform the essential function of a trade mark, namely the function of origin. The conclusion that the meandering representation in question is perceived by the relevant public as a decoration is supported by the fact that it is placed by the applicant on the outer surface of the bags in question and in the centre of the bags, since the imprint of a figurative indication on the outer surface of the product does not allow the specific characteristics of the product to be retained or perceived without the intrinsic characteristics of the product being perceived at the same time and therefore cannot be memorised by the consumer.

Footnote: The trademark cancellation counterclaim provided for in the new Trademark Law (Article 38(12) of Law 4679/2020) enables the defendant in a trademark infringement action (or even a claim for damages) to defend himself by challenging the validity of the opponent's trademark before the civil courts. In fact, if an action is brought against the defendant, the counterclaim is, by express legislative provision (Article 38(15) of Law 4679/2020), the exclusive procedural vehicle for the invalidation of the trade mark of the proprietor-plaintiff. Furthermore, the law stipulates that the admissibility of a counterclaim for the cancellation of a trade mark is subject to the condition that it must be notified and registered in the relevant trade mark register at the latest by the time the dispute is discussed (Article 38(13) of Law 4679/2020). Finally, if the counterclaim for cancellation is accepted, two legal consequences arise depending on the degree of procedural maturity of the counterclaim (i.e. the counterclaim). In particular, upon the issuance of a final decision upholding the counterclaim, the action is dismissed as essentially unfounded, while once this decision becomes final, the defendant-opponent is granted the right, after notifying the Industrial Property Agency of this final decision, to request the latter to remove his opponent's mark from the trademark register (Article 38(14) of Law 4679/2020).