It turns out that being cute, fluffy, and having an egg-like charm, isn’t enough to rule the roost at the EUIPO! The case of Beckberg v EUIPO highlights the challenges of registering shape marks, especially in sectors where similar designs of cute abstract-like chicks are commonplace.

The EU trade mark application for a figurative chick logo that coincides with the appearance of the product, highlights that applicants seeking protection for such products, need to demonstrate that their mark ‘significantly departs’ from the norms of the specific sector concerned.

This is a decision of the General Court of the European Union (the ‘General Court’), regarding the refused EUTM application (the ‘Application’) filed by Beckberg GmbH (the ‘Applicant’) for a figurative trade mark representing a hatching chick (the ‘Mark’), in Classes 9, 11 and 28:

Class 9: Audio and video devices for monitoring babies; parts and accessories for all the aforementioned goods, included in this class;

Class 11: Lighting; night lights; night orientation lamps; soft lights; LED lamps; LED luminaires; lamps; luminaires; table lamps; intensive ceiling lights; wall-mounted lighting fixtures; desk lamps; children’s lamps; flashlights; battery-operated lamps; fairy lights; neon lamps for lighting; parts and fittings for all the aforementioned goods, included in this class.

Class 28: Toys, including electronic toys; toys; games; parts and accessories for all the aforementioned goods, included in this class.

The Application had been refused for registration by both the EUIPO Examiner and the Board of Appeal (the ‘BoA’) on the basis of Article 7(1)(b) EUTMR, for lack of distinctive character.

The BoA found firstly that, the Mark applied was indistinguishable from the appearance of the goods applied-for, or from the presentation of those goods; and secondly, that the Mark did not depart significantly from the norm or customs of the sector of audio and video devices for monitoring babies in Class 9, lighting devices in Class 11, and toys in Class 28.

To illustrate this, below are market examples that the EUIPO Examiner found to reach this decision:

The Applicant thereafter appealed to the General Court, on two grounds:

• the test for a mark having to deviate significantly from the norm or customs of the sector (the ‘Significant Departure Test’) concerned was incorrectly applied here, where the mark consisted of a two-dimensional abstract design unrelated to the goods; and
  
  
• even if the applied-for mark is perceived as representing the shape of the goods in question, that the consumer is able to distinguish the mark from the goods as the mark applied for is original and new and significantly differentiates itself from the usual shapes in the sector concerned.

The General Court dismissed the Applicant’s appeal and upheld the BoA’s decision to refuse the Application.

On the first part of the appeal

In particular, the General Court emphasised that if a mark consists of the appearance of the product itself, the criteria for assessing its distinctive character are no different from those applicable to other categories of marks. Furthermore, the closer the shape of the applied-for mark is to the shape of the product for which protection is sought, the more likely it is that that shape is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

It is only where a mark significantly departs from the norm or customs of the sector, that it will be deemed to not be devoid of distinctive character.

The General Court set out that the key factor for the applicability of the Significant Departure Test is not the classification of the mark concerned as a figurative, three-dimensional, or other mark, but the fact that that mark is indistinguishable from the appearance of the product itself. Therefore, the Significant Departure Test will apply to three-dimensional marks, as well as figurative marks consisting of a two-dimensional reproduction of the designated product.

The General Court agreed that the BoA correctly applied the Significant Departure Test because the Mark would likely be perceived as representing the shape of the goods themselves by a significant portion of the relevant public. This is because it is common practice that animal-shaped products are used in the baby monitor, baby lighting/lamp, and toy sectors.

On the second part of the appeal

The General Court held that even if the Mark is an abstract form or simple variation of a hatched chick design, it still does not deviate significantly from the common shapes and customs within the baby monitoring, lighting/lamp, and toy product sectors. This is because these sectors are already characterised by the existence of a wide range of products which take various forms of animals, and many of which clearly deviate from their natural forms.

Key lessons to avoid having your wings clipped by the EUIPO

This case offers key considerations for practitioners when looking to register figurative logos that coincide with the product appearance. You should be aware that this is how these types of marks will be examined and that just because the mark is unique, this will not mean that it will necessarily depart from the norms of that sector. The norms of the market are a key consideration and will especially be relevant for shapes or characters being in/or resembling animal, creature, or human forms, in the markets such as toys.

It is important to note that the originality of the shape mark is also seldom not enough to overcome a distinctiveness objection. Much will instead depend on the consumer’s perception of that shape mark in the relevant product sector. The crucial question is whether the consumer will view the mark as being commonplace and associated with the appearance of the product’s shape, due to the number of similar products in that market category. It would therefore be wise to analyse the market sector before proceeding with the application.

Additionally, in such scenarios, a possible strategy might be to consider filing for broader specification, as opposed to the actual category for goods of interest (baby monitors). In this instance, for example, the Applicant may have been more successful if they had applied for “Audio and video devices” in Class 9 only. This may have then drawn less attention to the Applicant’s products for baby monitors. The same can be said for Class 11.

Finally, it is hard not see this case in the context of the two other EUTM applications made at the same time as the figurative mark. These consisted of (1) a figurative mark for a more realistic image of the product and, (2) a 3D mark in three views for the realistic image of the product. All three applications were assessed by the same Examiner, which makes you wonder, if they just had the logo mark in front of them, would the link to the egg shapes on the market have been so clear, or even investigated?

Overall, whilst in context this is relatively straight-forward case, it does provide important lessons when considering trade mark protection for logos and shapes that coincide with the appearance of the product.