Non-conventional trade marks and distinctiveness: some remarks from the EUIPO Case Law Conference 2024

Last month, I had the opportunity and privilege to speak at the EUIPO Case Law Conference 2024 and present the challenges of trademark modernization, under the heading “Reconciling the Old with the New: Challenges of Trade Mark Modernization” [see IPKat here].

In this post, I would like to discuss the main conclusion that I reached after reviewing case law of the EUIPO issued over the period 2022 – 2023. That conclusion, likely not too shocking to anyone, is the following: non-conventional marks remain difficult to register.

With the abolishment of the graphical representation requirement in 2017 and the codification of the Sieckmann criteria in inter alia Recital 10 in the EU Trade Mark Regulation (EUTMR), the legislator envisaged to make it easier for applicants to register non-conventional trade marks (marks that comprise of either sounds, colours, shapes, motions, position and/or holograms).

Looking at the data published by the EUIPO from the past three years, trade mark registrations for non-conventional marks remain nevertheless low. We see that only 0.29% out of all EU trade marks registered in 2023 were non-traditional marks. Out of 180 thousand registered trade marks in 2021, only 600 fell under the category of non-conventional trade marks. By contrast, in 2023, out of 148 thousand registered trade marks by the EUIPO, only 443 were non-conventional trade marks:

The low trend in securing registration of non-conventional trade marks must be viewed against the most common grounds of refusal raised in connection to such marks. According to case law, applicants typically face difficulties in demonstrating the inherent distinctiveness of non-conventional trade marks and this is testified by the fact that most cases pertaining to non-conventional trade marks, spanning from 2021 to 2024, deal with the issue of inherent distinctiveness.

For a trade mark to possess distinctive character, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings.

Distinctiveness is assessed with reference to the goods and services in respect of which registration has been sought, and by reference to the perception of the relevant public, which consists of average consumers of the products or services in question, who are reasonably well informed and reasonably observant and circumspect.

The EUIPO Board of Appeal reminded in Prada S.A. v EUIPO (R 827/2023-2), a case concerning a pattern mark [IPKat here], that the criteria for assessing the distinctive character of non-conventional marks are not different from those applicable to other categories of marks:

However, in applying these criteria, the perception of the relevant public is not necessarily the same in the case of non-conventional signs. This is because average consumers do not usually presume the origin of products based on their shape or packaging in the absence of any graphic or textual elements, and it may therefore be more difficult to establish distinctive character for a pattern or a three-dimensional mark than for a word or figurative mark.

More recent case law, such as Alkim v EUIPO (R 2037/2023-4), which concerned the registrability of daisy-shaped dough for pizza and pasta dishes, also illustrates that the closer the shape is to the most likely shape the product will take, the more likely is it that the shape lacks distinctive character:

Furthermore, in Savencia SA v EUIPO (R 314/2023-2), the EUIPO 2nd Board of Appeal considered that a motion mark showing cheese being cut into a heart shape was not distinctive since the assessment could not be limited to just its movement. This case highlighted the importance of considering the mark’s content beyond its motion even if the movement as such is decisive for the classification of the type of mark:

From cases such as Alkim, Prada, and Savencia it follows that only a mark, consisting of the appearance of the product itself, which significantly diverges from the norm or customs of the relevant sector and, therefore, is capable of fulfilling its original essential function, is not devoid of distinctive character within the meaning of Article 7(1)(b) EUTMR. In the end, none of the above signs could overcome the “significant departure” test for distinctiveness. All in all, the inherent distinctiveness related to non-conventional marks remains difficult to prove.

Readers might remember that a rather isolated example of inherently distinctive shape is that of the lipstick case at issue in Guerlain, T-488/20 as a trade mark for “lipsticks” in class 3 [IPKat here]. The General Court concluded that the applicant’s shape was unusual for lipstick cases in that it reminded of a boat hull or a baby carriage. As such, it differed from any other shape on the market. The relevant public with a level of attention would be surprised by Guerlain’s memorable shape and will perceive it as significantly deviating from the norms and customs of the lipstick sector:

If we consider non-conventional trade mark registrations during the past two or three years, it is safe to say that things have been rather gloomy. We see that applicants have started to utilize other paths, including acquired distinctiveness. However, also on that front, things have appeared challenging. For instance, in 2022, the General Court held that Louis Vuitton’s Damier Azur pattern [IPKat here] did not possess any acquired distinctiveness since such requirement could not be proved to subsist in the relevant territory. In all this, there might be good reasons to restrict trade mark availability for shapes and other non-conventional marks, also considering the availability of other forms of protection under IP (e.g., design rights and copyright).