http://ipkitten.blogspot.com/2024/06/bejewelled-eagle-head-not-3d-trade-mark.html
By decision of 28 May 2024 (R 173/2024) the Board of Appeal of EUIPO (BoA)
rejected a 3D trade mark for jewellery constituted by the representation of a
bejewelled eagle.
Fact of
the case
On February 8, 2023, Kurt Geiger Limited (the
Applicant) applied for the registration of 3D trade mark no. 18833400, among the others, for classes 9 (downloadable
virtual products, namely jewellery; downloadable virtual products, namely
computer programs featuring jewellery; downloadable image and video files
containing jewellery) and class 14 (jewellery and costume jewellery; cufflinks;
key ring pendants; ornamental pins; scarf rings).
Here are some products of the Applicant.
On November 27, 2023,
the examiner issued a decision rejecting the requested trade mark
under Article 7(1)(e)(iii) and Article
7(1)(b) in conjunction with Article 7(2) of the EUTMR essentially on the basis that:
a) the mark is simply
a combination of presentation features, with an upper view shape and a
realistic flat lower surface with feathers, eyes, and beams, which consumers
would perceive as typical of the products in question;
b) the shape does not
significantly differ from common basic shapes used in commerce for these
products and is merely a variant.
The Applicant
appealed.
The
decision
The BoA confirmed the contested decision by
adding the following.
The evaluation of distinctive character
involves considering the nature of the goods or services and the perception of
the relevant public. For 3D trade marks, which often consist of the product’s
shape, consumer perception is critical. Typically, consumers do not assume the
origin of products based solely on shape unless it deviates significantly from
industry norms. In the case of the bejewelled eagle head, the application was
for virtual goods in Class 9 and physical jewellery in Class 14. Both class of
products are meant for the general public and professionals, with varying
degrees of attention depending on the product’s sophistication and price.
The BoA noted that the jewellery market is
characterized by multiple shapes and designs, including animal representations (R 1414/2022, T-564/22; see The IPKat here, T-331/19). Therefore, the mere presence of
an eagle head, even if bejewelled, is perceived as an aesthetic variation
rather than a specific badge of origin.
Comment
The decision underlines the importance, particularly
for 3D trade marks, of distinctive character intrinsic to the shape of the
product itself. It serves as a reminder that, while creativity in design is
valuable, it must also meet the legal criteria of distinctiveness to gain trade
mark protection. Consequently, obtaining a 3D trade mark in the jewellery sector can be
challenging.
In another recent decision of 9 April 2024 (R 2465/2023), the BoA rejected the registration
of the following figurative trade mark for class 14:
The BoA made it clear that it is not possible
to circumvent the 3D trade mark regime by filing a figurative trade mark
application and clarified that, to overcome the absolute grounds for refusal,
it would have been necessary to include additional graphic, word and/or colour
components to confer the necessary distinctiveness to the sign applied for.
To address this challenge in the jewellery
sector, especially when there is intense use in the market, secondary meaning
is frequently relied upon. Nonetheless, it is important to recognize the
significant difficulty involved in proving secondary meaning for a shape.
For example, back in 2014, Van Cleef &
Arpels applied for the registration of the 3D trade mark in China for the
well-known 3D graphics composed of four-leaf clover patterns.
At first instance, the Beijing Intellectual
Property Court determined that the disputed trade mark was recognizable to
ordinary consumers as merely the shape and model of the jewellery, rather than
an indicator of its source. On appeal, the Beijing Higher People’s Court additionally
noted that the widespread use of the four-leaf clover design in the jewellery
industry has made it a common decorative element, thus diluting its ability to
serve as a trade mark indicating the origin of the product.
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