Trade mark for three-balled vibrator is functional, confirms General Court

After a particularly gruelling
session with her ball of yarn, Merpel
enjoys some post-yarn grooming.

Like any Kat, Merpel loves playing with balls - balls of yarn, bouncy balls that give her chase and furry balls that she can sink her teeth into. So when IPKat friend, Stephanie Bodoni (Bloomberg), alerted her to news of today's decision from the General Court in Fun Factory v OHIM concerning not one, not two, but three balls Merpel was thrilled. The thrill, if that is the appropriate word, quickly diminished when she realised that the balls in question were not intended for her paws (or indeed her) but for a, ahem, different purpose.

The case concerns an application by the German Fun Factory GmBH for a three-dimensional mark (below) for goods ["Or should that also be services?", wonders Merpel] in Class 10 and corresponds to "Vibratoren", the German for "Vibrator" (Trade Mark Application No. 009390691).

Fun Factory's mark in question

After the examiner rejected the application for being devoid of distinctive character, Fun Factory appealed. The appeal was short-lived when, last year, the Fourth Board of Appeal of OHIM dismissed Fun Factory's case. The Board held that the shape of the goods applied for was dictated by technical function in that the goods had to adapt to the human body in order to perform its job. Further, the Board found that the mark applied for did not indicate the commercial origin of the goods. The Board endorsed the examiner's decision that although competitors' products were in "stick form" (or in French "une forme de baton"), products also existed in ball or round shapes. As such, the mark applied for was not distinctive as compared to the products already on the market place. In short, the mark did not allow the consumer of the product to, without any further analysis, comparison or astute attention to detail, distinguish the goods from those of another undertaking.

Fun Factory appealed arguing that the board of Appeal had not properly considered the characteristics of the mark - the nested spheres, the arrangement of multi-coloured and shaped buttons around the logo in the command area and the logo (which the Board did not take into account as it was not discernible or easy to read from the mark as applied).

The average consumer of the goods

The decision of the General Court - which has so far only been published in French and German - first sets out the basic principles of distinctive character.  Marks which are devoid of distinctive character - meaning that they do not identify the product for which registration has been applied as originating from a particular undertaking as opposed to another - must not be registered. Distinctive character is assessed first by reference to the products/services for which it is applied and then, in relation to the perception of the relevant public, i.e. the average consumers of the goods or services who are reasonably well informed, observant and circumspect. The General Court also noted that three-dimensional marks consisting of the appearance of the product itself are generally unlikely to be distinctive in the eyes of the average consumer.

Upholding the Board's conclusion, the General Court held that the form in which protection was sought did not diverge significantly from the norm or customs of the sector and slight deviances in the arrangement of the nested spheres and the arrangement and colours of the buttons would not overrule that finding. Further, the shape of the goods were designed in order to adapt to the human body and "meet the desired goal" ["Or a technical result!", quips a patent lawyer]. The General Court also noted that the inclusion of the word "fun" on the vibrator was descriptive and indicative of its purpose. The General Court therefore held that the Board of Appeal was correct in rejecting the registration for being devoid of distinctive character.

Sadly no joy or "fun" for Fun Factory, but the decision is definitely not a surprise. The case nevertheless leaves Merpel feeling a bit unsatisfied. She was eager to spy a sentence regarding the identity of the average consumer but, unless the English translation uncovers a gem, there was no mention of the mystery consumer. ["But perhaps that is a roundabout way of identifying the average consumer", ponders the IPKat]. In the meantime, we will just have to wait to see if Fun Factor appeals to the CJEU...

A Katpat to Stephanie (find her article on the case here) who hopes that this is not the only story for which she will be remembered.