B&O speaker shape has appeal, so loses appeal

Peter Bang & Svend Olufsen: can you guess which one did the elegant
designing and which one was fiddling around with the circuitry?

Can it be that the General Court is trying to get into the IPKat's good books by coming up with some good decisions?  That certainly seems to be the case.  Yesterday the European Union's arguably hardest-working and least appreciated institution dismissed an appeal against the perfectly correct refusal of an Office for Harmonisation in the Internal Market Board of Appeal to allow the racist term of abuse "Paki" to be registered as a Community trade mark.  Today, in Case T-508/08 Bang & Olufsen v OHIM, it has rejected another unpromising appeal, this time against an attempt to register the seductively desirable shape of a Bang & Olufsen speaker. Rejection was based on the ground that this shape was what gave the product its substantial value.  As the Curia press release explains:

"... The Community Trade Mark Regulation provides that registration of a trade mark is to be refused on certain grounds which are expressly provided for. In particular, marks which are devoid of any distinctive character and signs which consist exclusively of the shape which gives substantial value to the goods are not to be registered. 

In September 2003, the Danish firm Bang & Olufsen A/S applied ... for registration as a Community trade mark of the ... three-dimensional sign [below left]: OHIM rejected the application on the ground that the mark applied for was devoid of any distinctive character.

Merpel thought
this was a desk-
top pen-holder 

In December 2005, Bang & Olufsen brought an action against that decision before the General Court. By its judgment of 10 October 2007, the Court upheld the action, concluding that OHIM had made an error of law in holding that the mark applied for was devoid of any distinctive character [The IPKat and Merpel were both unhappy about this decision: see here]. Acting upon the Court’s judgment, OHIM adopted a further decision, at the end of which it examined the application to register the sign on the basis of other absolute grounds for refusal and decided that the sign consisted exclusively of the shape which gives substantial value to the goods. Consequently, it rejected the application for registration. 

Bang & Olufsen therefore brought a further action before the General Court seeking annulment of the second decision. 

In its judgment today, the Court states, first, that OHIM is required to examine of its own motion the relevant facts which may lead it to apply an absolute ground for refusal [That's no surprise. The only other party apart from OHIM is the CTM applicant, and you can't expect the applicant to carry out this task]. The regulation lists the various absolute grounds for refusal which may be raised against registration of a trade mark application but does not specify the order in which those grounds should be considered. 

Furthermore, each of the grounds for refusal to register is independent of the others and calls for separate examination. In those circumstances, there was nothing to prevent the Board of Appeal from carrying out an examination of one ground for refusal after the examination of another ground [Indeed, procedural economy dictates that there is a great advantage to basing a decision on one ground and then not considering the other, though this can be a nuisance in oppositions where an opponent raises three relative grounds and succeeds on one of them, then loses on appeal. The opposition then has to start again on the other grounds]. 

Second, the Court recalls that a product’s shape is a sign which may constitute a trade mark.
... However, signs which consist exclusively of the shape which gives substantial value to the goods are not to be registered. 

The Court finds that in the present case the shape for which registration was sought has a very
specific design. In the Court’s view, that design is an essential element of Bang & Olufsen’s branding and increases the value of the product concerned. Furthermore, it is apparent from extracts from distributors’ websites and online auction or second-hand websites that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point. Accordingly, the Court holds that OHIM did not make any error in finding that, independently of the other characteristics of the product at issue, the shape for which registration was sought gives substantial value to that product.

Bang & Olufsen’s action is therefore dismissed".

While the Kat thinks this decision is entirely correct, there's something that troubles him: the concept of 'style'. He would guess that a product bearing this design was a B&O product on the basis of its slender, unorthodox style. However, IP law (rightly) does not accord protection to style as such, even though in this case it may be at least partially determinative of the product's origin.  In such circumstances, registered IP rights may not be available but trade-based protection through passing off or unfair competition may be.  The Kat would really like to see a clear and proper re-think, certainly at  European level if not beyond, of the relative significance and areas of overlap of trade mark protection, design protection, style and get-up and slavish imitation. He doubts that either consensus or consistency would be an instant result, but we might at least be better acquainted with the problems we have to solve.

B& O here
BO here
How to kill flies here