Non-traditional trade marks: fame is not the same as distinctiveness!

What has happened?

• A number of applications for non-traditional trade marks – such as colour, pattern, shape and position marks - have recently been considered at EU level. The decisions illustrate that it remains difficult - although not impossible - to register non-traditional trade marks, particularly on a pan-EU basis. 
• For shape marks to be accepted for registration absent evidence of acquired distinctiveness through use, it is necessary to show that the shape in question diverges significantly from the norms and customs of the sector concerned and is capable of functioning as an indicator of origin. Many well-known shapes have failed to meet this high standard. 
• This was the case recently for Christian Dior. The EUIPO Board of Appeal held that its well-known saddle bag was not inherently distinctive for bags in class 18. The application has now been referred back to the EUIPO Examination Division for them to consider Dior's claim that the mark has acquired distinctiveness through use. The decision follows similar rulings concerning the shape of Eos's lip balm (see article here), Samsonite's/Speculative Product Design's laptop case and Tecnica Group's moon boot (see images below). These decisions  can be contrasted with those in which the marks were deemed inherently distinctive such as the shape of Guerlain's lipstick and the Absolut Company's bottle shape.
• In practice, evidence of acquired distinctiveness through the extensive use of the mark in question is nearly always required for a non-traditional trade mark to be accepted for registration. Even then, it should be remembered that fame does not necessarily equate to distinctiveness. Simply showing that a particular product is well-known or famous in the marketplace won't - of itself - mean it has acquired distinctiveness through use or that relevant consumers will view the mark in question as an indicator of origin. This is illustrated by the recent moon boots case.  
• Likewise, it should be remembered that applicants for EU trade marks need to show that the mark in question has acquired distinctiveness throughout the EU. This is a potentially big task, as demonstrated recently when Louis Vuitton’s (LV) 'Damier Azur' pattern was invalidated on the basis that there was insufficient evidence of acquired distinctiveness in six EU member states – those in which LV does not have any stores. The same was true for the Samsonite/Speculative Product Design laptop case where evidence was also absent for six EU member states. 
• Before filing an application for a non-traditional trade mark, careful consideration needs to be given to issues such as what other signs are on the market, how the sign in question differs from those other signs (if at all), who the average consumer of the product/service in question is (see more on this in the context of the colour blue mark below), how the mark will be perceived by that consumer and what evidence of acquired distinctiveness is available. 

Want to know more?

Dior's Saddle bag not inherently distinctive for bags

In March 2021, Christian Dior Couture filed an EU trade mark application in classes 9 and 18 for a 3D shape trade mark comprising a line drawing of its saddle bag (see here and above), which has been used since early 2000. The application was refused for some goods in class 9 and most goods in class 18 on the grounds that the mark "does not diverge sufficiently from the standards and habits of the sector".

Dior filed an appeal, which was successful for all goods except "Bags, handbags, pouches (leather goods), travel kits (leather goods), toiletries and make-up pouches (empty)" in class 18. In maintaining the refusal against these goods, the Second Board of Appeal reiterated that only a trade mark which diverges significantly from industry standards or practices is capable of functioning as an indicator of origin.

The Board referred to similar products identified by a simple Internet search and stated that, in order for a 3D mark to be inherently acceptable for registration, the differences in its shape / appearance (from other products on the market) must be such that they immediately inform consumers of the commercial origin of the product, irrespective of any distinctive character acquired by the use of that shape as a trade mark.

The application has been referred back to the EUIPO to consider Dior's claim of distinctiveness acquired through use in relation to the refused goods. While this may ultimately succeed, the case again highlights the difficulties faced in registering 3D marks absent evidence of extensive use.

The General Court confirms that Louis Vuitton’s 'Damier Azur' pattern lacks distinctive character

This case involves the EU designation of an International trade mark for a chequer board pattern (see here and above). The application was originally accepted for registration by the EUIPO in November 2009, only to be successfully cancelled in December 2016 (following an action by a Polish individual, Mr Norbert Wisniewski) on the grounds that the mark was devoid of any distinctive character.

The EUIPO rejected an appeal by Louis Vuitton (LV) and although the General Court agreed with that ruling, it nevertheless referred the application back for further examination because evidence of acquired distinctiveness had not been properly evaluated. However, the application was again rejected by the EUIPO and an Appeal Board, before once more making its way to the General Court; which maintained the rejection of the application.

The Court held that LV had not proven that its mark has acquired a distinctive character in Bulgaria, Estonia, Latvia, Lithuania, Slovakia, and Slovenia (in which it does not have any stores). The GC rejected the claim that the mark is well-known in those countries by reason of the fact that it is heavily used in neighbouring countries. It also dismissed as "too general in nature" LV's claim that consumers throughout the EU "engage in homogeneous behaviour as regards luxury brands" by reason of the fact that they travel and regularly use the Internet.

This judgement serves as a reminder that, although the evidence required to register (or maintain a registration for) an unconventional trade mark does not need to show that the mark has been used in every Member State, it must nevertheless demonstrate that it has acquired a distinctive character throughout the EU.

The General Court considers the distinctiveness of the colour light blue

In February 2019, Magnetec GmbH filed an EU trade mark application in classes 6 (metallic alloys, metal cable ducts etc), 9 (motor cables and electrical conductors etc) and 17 (insulating sheaths etc) for a colour mark, which the application described as “Light blue: RAL 5012” (see here and above). 

The application was rejected by the EUIPO on the grounds that it was devoid of distinctive character. Magnetec filed an appeal (and simultaneously applied to limit the goods of the application). The appeal was rejected by the Fourth Board of Appeal and the restriction was held not to comply with the rules, so Magnetec appealed to the General Court.

In its recent judgement, the General Court annulled the Board of Appeal's decision in its entirety. The Court held that Magnetec's restriction of the goods covered by the application was acceptable. It also held that the Board of Appeal had failed to provide sufficient grounds for holding that the mark lacks distinctive character. 

The case will now come before the Board of Appeal again who will have to issue a fresh decision on the restriction and inherent distinctiveness. This does not necessarily mean that Magnetec's mark will be accepted for registration. Rather, the Board of Appeal will have to provide fuller reasons for whatever decision it comes to. 

It should be noted that the General Court in particular held that:

• The EUIPO and Board of Appeal had failed to clearly and unequivocally identify the relevant public to which all of Magnetec's goods were targeted – identifying the relevant public is key to assessing how that public will view the mark (and whether it is inherently distinctiveness).
• Marks comprising colours or combinations of colours "can only be recognized as inherently distinctive in exceptional circumstances".