In 2015 Karl Storz GmbH & Co applied for an EU designation of the International Mark for the figurative mark '3D' (above) in respect of various goods in classes 9, 10 and 16.
The examiner refused the designation under articles 7(1)(b) and (c) of the Regulation, that is the sign is descriptive and non-distinctive. The applicant appealed to the Second Board of Appeal of EUIPO, which confirmed the refusal. The applicant then filed a notice of appeal before the General Court.
Firstly the applicant claimed that the sign did not evoke the notion of three-dimensionality, due to the particular layout of the elements '3' and 'D', which produced a memorable and unusual figurative element. The relevant public would not necessarily have perceived the sign as an abbreviation of the term 'three dimension', but rather as a fanciful sign of a particular company. In addition, the applicant claimed that the Board of Appeal assessed the descriptiveness of the sign categorising the goods in a number of groups rather than each term in the specification individually. The applicant also claimed that, since another figurative mark '3D' covering goods in class 9 and 10 was allowed by the EUIPO, the office should have allowed the registration of their '3D' sign.
The General Court stated that even if the expression '3D' was stylised, the relevant public was still able to clearly recognise the elements '3' and 'D', even more so because the sign strengthen the idea of three-dimensionality associated with the expression '3D'. For this reason, the sign '3D' was incapable of conferring a meaning different from the concept of three-dimensionality. In addition, even if this was possible, the General Court stated that according to settled case law, when a sign has several meanings, the registration must be refused if at least one possible meaning designates the characteristic of the goods in question.
The General Court also considered the categorisation of the goods and largely confirmed the findings of the Board of Appeal, with the only exception of stationery goods for which the sign '3D' possessed a minimum degree of distinctiveness. All the other goods shared a close connection with the concept of three-dimensionality which made the sign '3D' descriptive for those goods. This is because, for example, the goods in question incorporated a screen that could reproduce three-dimensional images; technology for three-dimensional image reproductions; three-dimensional audio effects; medical apparatus related to three-dimensional technology or used a particular technology to obtain three-dimensional images.
The General Court also stated, as expected, that the applicant could not rely on an earlier registration for an identical mark covering identical classes and comparable goods.
In relation to the issue of non-distinctiveness of the sign for the purposes of article 7(1)(b), the General Court confirmed the principle, recognised in settled case-law, that descriptive signs are deemed to be incapable of performing the essential function of trade marks and therefore cannot be seen as distinctive.
In conclusion, the application was refused for all the goods listed in the application, with the only exception of stationery goods falling in class 16.
Case Ref: Case T-413/17
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