Mercedes’s off-road vehicle illustration insufficiently distinctive for EU trade mark registration

http://ipkitten.blogspot.com/2025/04/mercedess-off-road-vehicle-illustration.html
On 19 March 2025, the EU General Court rendered a decision regarding the distinctiveness of a figurative sign for which Mercedes-Benz Group AG (applicant) had sought registration as an EU trade mark. The Court upheld the Fifth Board of Appeal (BoA) finding that the sign should be refused registration under Article 7(1)(b) of the EU Trade Mark Regulation (EUTMR) as it lacked distinctive character capable of indicating the commercial origin of the relevant goods.

Background

In December 2022, Mercedes-Benz filed an application to register the hand-drawn sketch below as a figurative mark for inter alia “motor vehicles and parts thereof; tyres and wheels” in Class 12 of the Nice Classification.

The EUIPO Examiner refused the registration of the sign for “motor vehicles and parts thereof; tyres and wheels” under Article 7(1)(b) EUTMR. Further to an appeal, a similar conclusion was also reached by the Board in May 2024. The applicant, as a last resort, appealed to the General Court.

Court decision

The Court dismissed the appeal.

The applicant emphasised that any distinctive character, however weak, prevents a finding based on Article 7(1)(b) EUTMR, and that the distinctiveness requirement does not necessitate signs to be creative, original, or novel; simply, signs need to demonstrate the commercial origin of the goods and services they would be used for.

Although the Court agreed with the applicant on the first point and acknowledged that even a minimum degree of distinctiveness rules out the application of Article 7(1)(b), it doubted whether the drawing at hand satisfied this threshold.

Distinctiveness of a sign needs to be assessed both in relation to the goods and services for which registration is sought, and in relation to the perception of the relevant public. If the relevant public can only perceive a sign as providing information as to the nature or characteristics of the goods it is used on, the sign lacks distinctive character.

The relevant public is, as identified by the BoA and not challenged by the applicant, said to have a high level of attention due to the expensive nature of “motor vehicles and parts thereof”. However, the Court underlined that, even when consumers pay particular attention to the sign on these goods, it would not allow them to distinguish the sign at hand, and therefore the goods it is used on, from other common drawings of such off-road vehicles or to associate the said sign with a particular undertaking.

Moving on to the other limb of the distinctiveness assessment, the Court evaluated whether the drawing could be considered distinctive in relation to the relevant goods. Based on the observations of the BoA, the Court confirmed that Mercedes’s sign features the common characteristics of off-road vehicles – i.e., a rectangular shape with four large tyres, and a spare one attached to the back of the vehicle – viewed from the side, and is intended to advertise the climbing ability of such vehicles. Accordingly, the Court held that this drawing cannot be attributed to a single undertaking as it simply is a “common representation of the goods concerned” [para 18].

Although the applicant attempted to highlight the fact that the sign consisted of a hand-drawn outline of an off-road vehicle, that it was “unusual”, “striking”, and “unique” to see such vehicles in this “specific configuration”, and was therefore “individualised”, the Court rejected these submissions primarily on the basis that the sign lacked a “message or element” which could communicate or distinguish the commercial origin of the relevant goods [paras 20 and 23].

Another (AI-generated) hand-drawn
“customary representation of an
off-road vehicle climbing a hill”

Furthermore, the Court drew a parallel between the distinctiveness assessments of three-dimensional shapes and two-dimensional representations. According to the Court of Justice of the EU, the more similar the shape of a 3D sign to the most common shape of the product that the sign would be used on, the more likely that the sign will be devoid of distinctive character. In other words, if the shape of a 3D sign does not deviate significantly from the shape dictated by the relevant “industry norm or custom”, the shape cannot be registered as a trade mark, in order to allow other undertakings to continue using that shape freely in their own products (see also Article 7(1)(e) EUTMR to that end). The Court applied this test, by analogy, to the figurative sign at hand and found that the 2D illustration was merely “a customary representation of an off-road vehicle climbing a hill” [paras 22-23]. And despite other common representations of such vehicles that differ perceptibly from the applicant’s sign existed, this was considered to be an irrelevant fact by the Court in the assessment of the contested sign’s suitability for trade mark.

Comment

A Kat with an off-road

As argued by the applicant, signs do not need to be original, novel, or creative to qualify as trade marks. Therefore, a simple drawing, a meaningless word, or a random combination of some colours might meet the distinctiveness threshold even if it may not be possible to consider them original. Likewise, the mere fact that a certain sign is original (e.g., a hand-drawn off-road vehicle) does not guarantee that it could also be considered distinctive. Reviewed from this aspect, the Court did a good job of distinguishing the tests, standards, and purposes of trade mark law from those of copyright law.


It should also be noted that, although the Examiner, BoA, and the Court focused on the distinctiveness of the sign under Article 7(1)(b) EUTMR, an explicit reference to Article 7(1)(c) might have strengthened their findings. Instead of focusing solely on the distinctive nature of the sign, it might also have been evaluated whether Mercedes’s sign “consist[ed] exclusively of” features that “designate the kind, quality, … [and] intended purpose … of the goods”. When viewed through this lens, it seems to this Kat that the figurative sign was highly descriptive – representing the kind, features, and intended purpose of such vehicles – and thus unsuitable for registration.

Image credits: Imagen 3

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