A recent decision from the Board of Appeal at the EU Intellectual Property Office (EUIPO) serves as a useful reminder that, just because an image can be used decoratively, that does not mean that it is not capable of being relied on by the public to determine the trade source of goods. Hence such images may be registrable as trade marks.
The decision itself can be viewed here. The facts of the case are straightforward. In 2021, Rigo Trading S.A. (a holding company for the various trade marks used for Haribo sweets) sought protection in the European Union for a trade mark consisting of the appearance of a gummy bear, specifically:
for a broad range of non-food goods.
When considering whether to grant the application, the examiner at the EUIPO decided to refuse protection as regards a broad range of the goods in the application (including computer cases, gemstones, printed matter, bags, household linen, clothing, carpets and toys) on the grounds that they did not consider the mark to have distinctive character for such goods (i.e. it could not be relied on by the public to determine the trade source) for the following reasons:
- The appearance of the mark does not depart significantly from the norm or customs of the relevant sector, and consumers normally pay more attention to a label or name of a product than to its shape, packaging or decorative elements.
- The true to life portrayal of a gummy bear or its figurative representation is commonly used for decorative, artistic or aesthetic purposes. Therefore, the sign at issue is a mere variation of various shapes, forms of packaging or decorations commonly used in trade for the contested goods.
- The examiner had located various examples of such goods in, or depicting the shape of, a gummy bear online.
Their arguments trying to persuade the examiner to waive the objection having been unsuccessful, the Applicant appealed the refusal to the EUIPO’s Board of Appeal, arguing inter alia that:
- It is established law that purely figurative trade marks (such as that in their application) are registrable with the exception of simple geometric devices that are unable to convey any message that can be remembered by consumers (and the shape of the gummy bear clearly does not fall within this exception).
- The mark applied for has at least a minimum degree of distinctive character. It does not consist of a simple geometric device and is also not a common decorative element or representation of the contested goods.
- The sign applied for is not a real-life version of a bear but a stylised, linear and abstract version of a bear. Gummy candy products from competitors look very different. The internet extracts displayed in the decision of the examiner show products with ‘normal’ bear shaped gummy candies but not the original HARIBO Gold bear depicted in the mark in the application.
The EUIPO’s Board of Appeal duly reversed the examiner’s decision, finding that the mark crossed the necessary threshold of distinctiveness, on the basis that, inter alia:
- The more closely the shape resembles the shape most likely to be taken by the product, the greater the likelihood of the shape being devoid of any distinctive character.
- The appearance of a gummy bear or a figure of an animal has no connection with the contested goods, none of which belongs to the market sector of confectionery or sweets, and is unrelated to the likely or customary appearance of these goods.
- The fact that some of the contested goods may (emphasis added) take the shape of a gummy bear, is not in itself sufficient to establish that the contested mark consists of a representation of the shape of the goods at issue.
- The contested goods may take a variety of shapes, including that of a gummy bear. However, it cannot be established that the relevant public will associate the motif of a gummy bear with the contested goods, as they are totally unrelated.
- Since the sign does not resemble the shape that the contested goods are most likely to take and it has not been demonstrated that it is a commonplace motif for these goods, it must be held that the sign has at least the minimum degree of distinctive character necessary to be protected as a trade mark in the European Union.
Beck Greener has been registering, administering, and enforcing trade marks for its clients around the world for decades. If you are interested in protecting your trade marks, we would be happy to assist.
