Trade Mark Protection for Patterns Possible if Sufficiently Distinctive

Pattern marks, which are possible in Ireland and the EU but not in the UK, are not as common as other types of conventional or non-conventional trade marks. In a recent decision from May 2023, the EUIPO First Board of Appeal held that a mark comprising a pattern of numbers from 0 to 23 could not be registered as an EU trade mark (EUTM) on the basis that it was not sufficiently distinctive. In order to be sufficiently distinctive and to therefore qualify for trade mark protection, the Board held that the pattern must be capable of indicating the commercial origin of the goods or services concerned. We analyse the decision and its impact.

Background

In September 2021, Margiela applied to register the figurative mark below as an EUTM.

Later in November 2021, the list of goods and services covered by the mark was amended, and included a wide range of goods and services including: candles in class 4, electric candles in class 11, kitchen utensils and containers in class 21 and a wide range of retail and wholesale services in class 35. In August the following year, the EUIPO Examiner refused the application in its entirety on the basis that the application lacked distinctive character in accordance with Article 7(1)(b) EUTMR. The Examiner decided that the relevant consumers would perceive the sign as a listing of the product/article number sold by the applicant, or as a bar code on a product rather than indicating the origin of the product and linking it to a particular entity.

Appeal

The applicant filed an appeal in October 2022 against the Examiner’s decision. Amongst other arguments, it contended that according to EU case law, signs composed exclusively of numerals with no graphic modifications may be registered as trade marks.

Board of Appeal decision

The EUIPO Board of Appeal rejected the appeal and ultimately refused the trade mark application for all of the goods and services claimed. It held that:

• The relevant public will identify the sign, regarding the goods and services applied for, as a sequence of numbers from 0 to 23, presented in plain font, positioned on 3 separate lines above the other. However, these characteristics are not sufficient to support the view that it has the minimum distinctive character necessary for registration as an EUTM;
• The sign will likely be perceived by the relevant public as a pre-printed tag/label to be affixed, for example, on the goods in classes 4, 11 and 21 on their packaging or, with regard to the class 35 retail services, on an invoice, on a letter head or on a catalogue; and
• Consumers are used to seeing long sequences of numbers on internal code tags on goods, and on invoices, letter heads and catalogues, which do not serve to provide any information to consumers as to commercial origin of the goods and services at issue but would merely be perceived as some internal tagging of the goods or administrative code for the undertaking providing the services.

As a result, the Board concluded that the sign did not possess sufficient distinctive character to be registered as a trade mark.

Comment

The decision, which may yet be appealed further by the applicant, serves as a reminder of the EUIPO and European Court dogma test of distinctiveness when it comes to the registrability of unconventional trade mark applications.

For brand owners and future trade mark applicants, the takeway from the case is that in order to qualify for trade mark protection, their patterns must be easily and instantly memorised by the relevant public, as only then will it be possible for their signs to be perceived immediately as indicators of commercial origin. Alternatively, it must be demonstrated that the pattern at issue is a significant departure from the norm or customs of the sector. Where this is not possible, brand owners should also bear in mind that a design application will be an alternative option to secure IP protection for patterns or sequences provided that the requirements of novelty and individual character are satisfied.

For more information on successfully protecting your organisation’s intellectual property rights, contact a member of our Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.