How are unusual trade marks faring at the EU General Court?
Two recent EU General Court judgments dealt with a couple of unconventional trade marks – with contrasting outcomes. Unfortunately, the judgments are not (yet) available in English so the following analysis is based on unofficial translations.
Tactile position mark
The first case (Case T-487/21) concerned an application that was filed in September 2016, and was therefore governed by the 2009 EUTM Regulation, which included the graphical representation requirement.
The application (pictured) was indicated as “other mark” and specifically a “tactile position mark” and included a description. It covered "Sanitary elements to be inserted, in particular jet regulators and jet trainers" in class 11.
During examination, the EUIPO had suggested the applicant reclassify it as a position mark, but the applicant refused to do so. The application was then rejected. The Board of Appeal decided that, regardless of whether the application was acceptable under Article 7(1)(a) of the Regulation, it was devoid of distinctive character under Article 7(1)(b) and should be refused on that basis.
However, the Court said that the question of whether the sign for which trade mark registration is sought can constitute a trade mark is “a preliminary question which must be resolved in order to proceed with the examination of the pleas in the action”. It then found that:
“the tactile impression produced by the sign for which registration is sought does not emerge precisely and completely from the graphic representation of that sign in itself, but, at most, from the accompanying description. Consequently, that description does not specify the graphic representation of that sign within the meaning of the case-law … but on the contrary may give rise to doubts as to the purpose and scope of that graphic representation in that it attempts to broaden the subject matter of the protection sought”
The sign applied for should therefore be refused under Article 7(1)(a) of the Regulation.
Reasons to smile
The second case (Case T-553/21) had a happier outcome for the trade mark owner, McCain. It concerned a trade mark registered back in September 2001 for the three-dimensional sign pictured for "Pre-cooked potato croquettes and products based on frozen mashed potato" in class 29.
In January 2018, Agrarfrost applied to revoke the mark on the basis that it had not been the subject of genuine use for an uninterrupted period of five years. The EUIPO Cancellation Division rejected that application, and the Board of Appeal upheld its decision.
As part of its genuine use case, Agrarfrost argued that the Board should have examined more carefully the distinctive character of the mark, particularly given the evolution of smileys. However, the Court rejected that argument, saying that the registration was presumed valid. The question was whether it had been used as a trade mark, and an overall assessment of the evidence showed that it had.
In particular, a market study provided by McCain indicated that “frozen potato products in the shape of faces from other manufacturers do not currently exist and have not existed in the past” and therefore Agrarfrost was not justified in claiming that the smiley face did not differ significantly from the habits of the food sector.
These two cases testify to the ingenuity and creativeness of trade mark applicants, and the often complex arguments that examiners and judges have to contend with.
While non-traditional marks such as shapes, colours and even sounds make up a very small proportion of trade mark applications, they often provoke interesting debates among trade mark specialists!