2023年10月25日
– 2 / 5 观点
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).
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.
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.
Key aspects of the ruling on distinctiveness are as follows:
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.
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 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.
Part one
2023年10月25日
作者 Louise Popple 以及 Anneka Dalton