The EU General Court has held that a registration consisting of the outline of a teddy bear shape is sufficiently distinctive for registration showing that the threshold for distinctiveness can sometimes be achieved where a logo evokes a shape without directly representing it. In a parallel decision, it also considered the genuine use of a similar mark (more, here).

What has happened?

• The case concerns an EUTM registration for the shape of the teddy bear depicted below, covering jewellery, owned by S. Tous S.L. (TOUS).

• Polish jewellery company Apart sp. z o.o. (APART) applied to invalidate the registration for the mark on various grounds including that it lacks distinctiveness and consists exclusively of a shape which adds substantial value to the goods. The action failed at every stage including before the General Court. TOUS's mark remains registered. 

• Unlike the Board of Appeal, the General Court considered that a teddy bear shape has no connection with items of jewellery – a decision that is questionable given other CJEU rulings on shape marks and the regular use of bear shaped pendants and earrings in the market. This aspect of the decision is important because, where a shape is connected with the goods applied for, it is only registrable if it departs significantly from the norms and customs of the sector concerned. 

• The Board of Appeal had held that the shape of the teddy bear did depart significantly from the norms and customs of the jewellery sector and was therefore sufficiently distinctive for registration. The General Court also found the mark sufficiently distinctive but on the basis that, while it is evocative of the silhouette of a teddy bear, the subtlety of the outline requires some imagination or fantasy on the part of consumers to associate it with such a figure. 

• While the General Court came to the same overall conclusion on distinctiveness as the Board of Appeal, it did so on a different basis. The decision (although arguably questionable in parts) shows that logos which evoke - but do not directly represent - a particular shape can sometimes be sufficiently distinctive for registration.

• The substantial value ground also failed since APART had not been clear how the law applied to this particular registration. Its arguments on distinctiveness and substantial value were also contradictory. This emphasises the importance of arguing a case well, with supporting evidence, and ensuring that arguments are not contradictory.

Want to know more?

TOUS is a Spanish jewellery maker with a number of EUTM registrations for stylised logos, a number of which resemble teddy bears.

APART applied to the EUIPO to invalidate the registration above, which covered "jewellery". 

In the previous rounds of proceedings, APART argued that the mark was generic for jewellery and consisted exclusively of a shape which resulted from the nature of the goods themselves, as well as that it lacked distinctiveness and consisted exclusively of the shape which gives substantial value to the goods. The General Court dismissed the pleas on the first two grounds and only considered the last two grounds.

Distinctiveness

Key aspects of the ruling on distinctiveness are as follows:

• The Board of Appeal had correctly assessed the distinctive character of the mark on the basis of the criterion applicable to 3D marks (as required by the case law).

• APART had argued that the shape of the mark is nothing extraordinary and that teddy bear shapes have been used in the jewellery sector for centuries. The Board of Appeal had held that, while items of jewellery may take the shape of a teddy bear, on its own this is not sufficient to establish that the contested mark consists of a 2D representation of the shape of the goods at issue; something more is required. 

• The General Court disagreed with this approach and stated that, irrespective of whether the shape will immediately be perceived as a teddy bear, that shape has no connection with items of jewellery. Items of jewellery generally take the form of rings, necklaces or earrings. These might bear the sign of a teddy bear, but do not take the shape of them. Conversely, the mark was more likely to be seen on packaging, labels or other advertising material in order to enable consumers to identify the commercial origin of its goods.

• The General Court agreed with the decisions of the Cancellation Division and Board of Appeal, namely that the contested mark is not simply the outline of a teddy bear, but also a "fantasy figure". It is more than a basic geometric shape. The sign is evocative of the silhouette of a teddy bear but the subtlety of the outline requires some imagination or fantasy on the part of consumers to associate that outline with the figure of a teddy bear. 

The General Court's ruling that the shape of a teddy bear has no connection with jewellery is surprising given that it's easy to picture pendants, charms and earrings which may be teddy bear shaped. This aspect of the ruling is not in keeping with other decisions of the CJEU.

If the mark does not even resemble a teddy bear, then the question of whether it is connected with the goods concerned (and so whether it departs significantly from the norms and customs of the sector concerned) does not even arise. 

Some will argue that a teddy bear is easily discernible as the shape of the mark and that the Court should have decided the case based on the "norms and customs of the sector" criterion. However, the Court did not view the mark in that way. That might be good news for brand owners who have marks which evoke but do not directly represent the goods in question. 

Substantial value

Key aspects of the ruling on whether the mark consists exclusively of the shape which adds substantial value to the goods are as follows: 

• In APART's view, teddy bears are recognised as a symbol of love which evokes positive emotions and drives sales. It said this determines its attractiveness for consumers and significantly increases the value of the goods. 

• This argument was dismissed largely because APART had merely repeated the relevant case-law without explaining how the contested mark would determine the behaviour of consumers. 

• In addition, the Court noted that APART relied on the alleged simplicity of the bear shape in order to prove that it was devoid of distinctive character, which was in direct contradiction with the argument that the same simplicity was what gives value to the goods.

Whether a different result would have been achieved had APART argued its case differently is a moot point. However, the decision emphasises the importance of arguing a case well from the outset, with supporting evidence, and ensuring that arguments are not contradictory. 

You may also be interested in our article on the IP issues engendered by deepfakes here.

We also round up other developments this month here.

This article was coauthored by Alison Cole.