Toy marks under scrutiny: is there a rift between OHIM Appeal Boards?

What could be more appropriate, for a European Kat who is away in the Antipodes, than for him to post this guest item on Community trade mark law from a genuine Aussie who is now back in his native terrain after a stint in London? The Aussie in question is Bill Ladas of King & Wood Mallesons, an enthusiastic contributor to that firm's IP Whiteboard blog and about whom it is boldly stated that "it’s a miracle he gets any “work” done at all". Not sure what to make of that ...

This is what Bill writes:

Does the treatment of toy mark CTMs reveal a split between OHIM’s Fourth and Fifth Boards of Appeal?

I have recently discussed whether objections against stylised device marks containing descriptive words should be raised under Articles 7(1)(b) and/or (c) of the Community Trade Mark Regulation. Next question: does it matter which Board of Appeal hears your case when it comes to the distinctiveness inquiry under Article 7(1)(b)? Some recent decisions relating to the treatment of 2D and 3D marks for toys, suggest that there might be a split between the Fourth and Fifth Boards. Or are the decisions reconcilable on their particular facts?

Rejected! (Cases R2129 through 2134/2013-5)

Out Fit 7 Limited might have thought that it was on relatively safe ground in terms of its filings for various cute 3D marks (listed below in respect of goods in class 28), including action figure toys. It owns CTM registrations consisting of these same characters in 2D or “figurative” form.

Shape of a white cat: Talking Angela (R 2129/2013-5)
Shape of a ginger cat: Talking Ginger (R 2130/2013-5)
Shape of a parrot: Talking Pierre (R 2131/2013-5)
Shape of a grey cat: Talking Tom (R 2132/2013-5)
Shape of a giraffe: Talking Gina (R 2133/2013-5)
Shape of a dog: Talking Ben (R 2134/2013-5)

The examiner threw a cat among the pigeons (or parrots?), raising objections under Article 7(1)(b) on the basis that the marks lacked distinctive character. Out Fit 7 appealed.

In each case, the Fifth Board upheld the examiner’s view, based on established principles:

(i)         consumers are not in the habit of making assumptions about the origin of products on the basis of their shape in the absence of any graphic or word element;
(ii)      the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character; and
(iii)        the sign needs to depart significantly from the norm.
Taking Talking Angela as an example, the Fifth Board took the view that it resembled other white cats (white being a colour “girls tend to like”), adding that the head was bigger than that of a normal cat and that it was also standing on its hind legs. Even so, while this marked a departure from the norm, it was not a significant enough departure.

But the Fifth Board went further:

“… the toy cat figure is not expected to appear on the toy market on its own. It is noted that toys are not usually sold without their producer’s trade marks, since parents would be reluctant to buy toys of unknown origin, even if the appearance of those toys would be pleasant to look at. Since toys are usually advertised and sold under a brand name, the argument that the consumers base their choice on the shape is not persuasive. The shape modelled from the App character, ‘Talking Angela’ will most likely appear together with the name badge that will help the consumer to make its choice.”

Acquired distinctiveness under Article 7(3) did not assist. Out Fit 7 relied on use and advertising of its characters in apps under the Talking Angela, Talking Tom marks etc and the evidence did not demonstrate use in respect of the applied-for goods (“acquired distinctiveness of a sign achieved in relation to certain goods cannot be automatically transferred from one class of goods to another”). Vorsprung Durch Technik [noted by the IPKat here]was distinguished.

Accepted! Cases R 785/2014-4, R 1014/2014-4, R 1015/2014-4 and Case R 2387/2013-4

Contrast unlucky Out Fit 7 with the treatment received by Tattiemoon and The Fred Rogers Company. These decisions are well worth a read, given how rare it is for OHIM’s Boards of Appeal to overturn an absolute grounds objection. What is also notable is how differently the matter was approached by the Fourth Board as compared to the Fifth.

Fred Rogers

The Fred Rogers Company filed CTM applications for 2D representations of its popular characters:

Device of a toy toy wearing a cape (R 785/2014-4)
Device of a tiger (R 1014/2014-4)
Device of a cat (R 1015/2014-4)
The examiner raised objections under Article 7(1)(b) that the signs did not differ markedly from various basic shapes commonly used in the trade. The Fourth Board disagreed. Taking the cat-like sign (as a handy comparison with Talking Angela and as it mentions a cat), it had this to say as regards goods in class 28:

“The sign shows a stylised and humanised representation of a little cat in upright position wearing a dress, sports shoes, socks and a hair ribbon at the left ear. It is far removed from any naturalistic or stylised representation of a little cat and will be recognized by consumers as referring to a specific, fanciful character. The sign shows the type of character featuring in comics, children’s books and animated movies that one would expect to have a specific name in contrast to, for example, plush toy or toy figurines that consist in the naturalistic representations of a cat.”

In respect of the other goods in classes 21, 24 and 25 the objection was also overturned:

“Consumers of any age are accustomed to a variety of fanciful characters featuring in comics and animated movies that represent animals or persons but deviate substantially from a naturalistic or standardised representation such as Micky Mouse, Goofy, Pooh the Bear [presumably a reference to Winnie the Pooh], Lucky Luke, Ernie and Bert etc. Even when used for decorative purposes these characters are recognized as distinctive and hence capable of indicating a commercial origin”.

For completeness, Fred Rogers also has other 2D cases on appeal according to OHIM’s website.

Tattiemoon (Device of a millipede toy, Case R 2387/2013-4)

“Woolly”, another cute 2D mark, was accepted by the Fourth Board as being distinctive. Summarily overturning the reasoning of the examiner, the Board said:

“The sign applied for is a fanciful representation of an eight-legged, coloured animal with a human like, smiling face. It is neither the common representation of the goods at stake nor the true representation of an existing animal but rather an inventive creation with its own characteristics. The special features, namely the combination of eight legs, colours and the particular features of the body, create the individual image of this plush toy. The combination of these features allows it to serve as a business identifier not only for plush toys, but also for the other goods applied for.”

The Fourth Board continued, with reasoning that seems to conflict directly with the reasoning of the Fifth Board in the Out Fit 7 cases:

“Even if the sign is used in a form that represents the shape and appearance of the goods at stake, it will be perceived as an indication of origin. Moreover, the file does not contain any information that the goods at stake are currently marketed or might be marketed in the future by affixing the sign at stake to an item having the shape of the trade mark applied for. In any case, the sign is distinctive.”

What a mess: but who is right?

Is the difference in result here due only to the fact that the Out Fit 7 marks are 3D in nature, while the Tattiemoon and Fred Rogers marks are in 2D? This would appear to be a strange result (and goes against eg Case T-152/07 Lange Uren v OHIM). It also appears harsh for the Fifth Board to reject a trade mark application for a 3D mark on absolute grounds because:

(a)   the product itself is likely to be sold with labelling (in this highly regulated world, not many products are sold without labelling);
(b)   the product is referred to, advertised and sold under a brand name (how else are we supposed to talk about it or ask for it in the shops);
(c)   (in the case of Talking Angela) it is not wearing a dress … or sports shoes. [It is accepted here that some of Out Fit 7’s marks are closer to “the norm” than others.]

This is even more so, given that the Fourth Board accepted that the fact that the product is likely to be given a name was a factor in favour of registrability.

The view of the Fifth Board appears to go against market reality. Several marks can be used at the same time in respect of the same product (the recent Coke v Pepsi decision in New Zealand, noted here, being a case in point).

And do we really need to make a case that in 2014 the shape of a product can on its own be recognized or relied on as a brand (we should know from the CJEU soon whether the former is enough to satisfy the acquired distinctiveness proviso [see my note on the Kit Kat shape mark here]. Perhaps there is a fear (at least on the part of the Fifth Board) regarding the scope of rights that will accrue to the owner of such a registered mark. Given the track record of the CJEU and the General Court in enforcement cases (eg as regards stylised marks incorporating descriptive words), the fears are probably well founded. We also saw earlier this year that the word mark BETTY BOOP was infringed by images of Betty Boop in England and Wales [see Katnotes on the Hearst decision hereand here, and our note here].

It is worth noting here the sage words of Geoffrey Hobbs QC in La Chemise Lacoste v Baker Street Clothing (O-333-10, 16 September 2010), as referenced in Hearst:

A concept is not a sign capable of being protected by registration as a trade mark. The rights conferred by registration are centred on the registered representation of the protected mark. They do not enable the concept(s) of a mark to be protected without regard to the distinctive character of the mark as registered.

In the meantime, subject to how your toy mark is used, you may be on safer ground applying for it in 2D format (subject to novelty requirements, there is also the option of protecting the toy as a Community registered design).

What about Australia and New Zealand?

My recent note on the battle to save the Kit Kat shape mark (here) discussed the leading Australian decision, Kenman Kandy. That decision involved the Millennium Bug shape (right). Similarly to the Out Fit 7 scenario, the 2D version of the bug was accepted as being inherently distinctive during examination but the 3D mark was not. It took two appeals, through to the Full Federal Court, for the 3D mark to achieve acceptance (on the basis of its inherent qualities; the applicant did not rely on acquired distinctiveness).

However, more recent comments from a differently constituted Full Federal Court in Cantarella (relating to another issue at the margins, foreign equivalents) have cast doubt on the majority’s approach in Kenman Kandy. Cantarella has been appealed and we wait to see whether and how the High Court’s decision has repercussions in relation to shape marks. There’s also the fascinating world of trade mark infringement actions based on non-verbal marks, which we discussed in the context of Coca-Cola’s suit against Pepsico in New Zealand (here) based on its bottle marks.

What is clear from all of these decisions (and also see my note on BPI’s fragrance bottle in the UK here) is that the registries and courts have a difficult time in drawing lines between the registrable and unregistrable, which will inevitably lead to inconsistent results.