Nexus: distinctiveness

Hästens Sängar fails in trade mark application concerning its chequered figurative mark

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Hästens chequered figurative mark

When it comes to figurative marks, distinctiveness very often plays a key role in determining whether such a mark is eligible for trade mark registration. This was the challenge that Hästens faced when it tried (and failed) to register a figurative mark consisting of a chequered gingham pattern.

Background

On 16 December 2016, Hästens Sängar AB (a Swedish manufacturer specialising in beds, bedlinen, pillows and lifestyle accessories) filed an application with the European Union Intellectual Property Office (EUIPO) in respect of the pictured mark. Registration was sought for the following goods and services:

Class 20: ‘Furniture, including beds, bed frames and bedroom furniture; mattresses, spring mattresses, overlay mattress; pillows and down pillows’;

Class 24: ‘Woven textiles, textile products, not included in other classes; bed linen; down quilts’;
Class 25: ‘Clothing; footwear; headgear’;

Class 35: ‘Marketing, commercial information related to furniture, home furnishings and interior decoration products, textile products, bed linen, bed covers, clothing, footwear and headgear and toys’.

Th EUIPO examiner rejected the application in 2018 in accordance with Article 7(1)(b) of Regulation 2017/1001. The decision was appealed, but without success.

Further to an to appeal the General Court, Hästens Sängar’s main point of contention was the alleged errors of assessment made by the EUIPO Second Board of Appeal in respect of the alleged lack of distinctive character of the mark applied for.

Judgment

EU case law has provided guidance on how distinctiveness is to be assessed: (1) by reference to the goods or services in respect of which registration has been applied for; and (2) by reference to the relevant public’s perception of the mark. The General Court dealt with each of these factors in turn.

Perception of the trade mark applied for

Starting from the perception of the relevant public (collectively agreed to be the general public of the EU), the Court emphasised the need to assess whether the mark applied for was unrelated to the appearance of the goods.

It was apparent that the classes of goods and services applied for could be made from fabric bearing the pattern or contain fabric parts which might represent or bear the pattern constituting the mark applied for.

The Court drew on Louis Vuitton Malletier v OHIM - Nanu-Nana (T-359/12 and T-360/12 (IPKat analysis here), concerning the representation of Vuitton's chequerboard pattern. As affirmed in that case (and in accordance with earlier case law), the more closely the shape for which registration is sought resembles the shape most likely to be taken by the goods in question, the greater the likelihood of the shape being devoid of distinctive character is. Whilst that case law had been developed in relation to 3D trade marks consisting of appearance the goods themselves, the Louis Vuitton case highlighted that it would equally apply to figurative marks consisting of a 2D representation of that product. As such, a figurative mark consisting of a part of the shape (or characteristic) of a product could not be considered unrelated to the appearance of the goods covered by the mark.

Did you remember to specify the scope of
your trade mark application?

This could not be refuted by Hästens, since the mark was not limited in scope. Whilst it claimed that the mark's application concerned usage as a logo on the applicant's marketing materials and on labels attached to its products, the application as it was filed did not limit its usage to such: it would not prevent it from being used, for example, as a pattern applied to the surface of the goods in question. The visible ‘woven structure’ of the mark (alluding to potential use as a pattern for fabric) and its simple geometric pattern would also be taken into account.

The significant difference between the mark applied for and the norm or customs of the sector in question

In order to allow consumers to identify the sign as originating from a certain undertaking, the General Court took into consideration several factors.

Since the colours used in the mark would be perceived as being used for aesthetic purposes, it would not be sufficient on its own to distinguish the goods covered by the mark from those of other undertakings. The lack of notable variation in its representation also suggested that it would not be understood as an indication of commercial origin.

Hästens argued that the mark was unique since "no other manufacturer in that sector us[ed] similar signs as a logo or as a label attached to its products". However, as mentioned above, the lack of limitation in the scope of the mark applied for meant this argument was ineffective.

The Court also stressed the importance of considering the norms and customs of the sector as a whole, as the latter assessment factor of distinctiveness required the consideration of the actual market situation, as the mark would ultimately need to show that it originated from a specific undertaking, and could be distinguished from others on that basis.

As such, the Court concluded that the Board of Appeal was fully entitled to come to the conclusion that the mark applied for was devoid of any distinctive character for all of the goods and services applied for, for the purposes of Article 7(1)(b) of Regulation 2017/1001.

Comment

It is interesting to see Hästens Sängar's mark back on the IP scene, this time in relation to a different type of IP protection. Hästens Sängar previously unsuccessfully applied to the US Copyright Office for protection of a very similar mark, referred to as a “repeating 2-dimensional fabric pattern”. It therefore serves as a good example of how protection can be sought for (virtually) the same mark in various ways, yet still fail to do so (due to a lack of distinctiveness or a lack of originality).

As a side note, this case may also be seen to contribute to wider questions raised around the effectiveness of the EU court system. This Kat couldn’t help but be reminded of a point raised by Sir Robin Jacob when he gave his keynote speech at the JIPLP-GRUR Joint Conference in December 2019. When asked whether there could be any improvements to the EU system, he raised the three stage appeal process for trade mark decisions. In retrospect, the General Court Hästens case was, in effect, a reiteration of all of the remarks made by the Board of Appeal, which nonetheless made a reappearance before the EU courts. To a seasoned trade mark expert, the mark was unlikely to achieve the protection sought.

Obviously, the EU court system is not something that can be changed overnight, nor does this Kat think that this will happen anytime soon. Even so, this acts as an apt illustration of how the process of trade mark registration has the potential to be improved.

GC excludes likelihood of confusion between marks representing stylized human figure and relating to same goods due to low distinctiveness of shared concept

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In an intriguing judgment delivered earlier this month (T-149/19), contrary to the earlier decision of the EUIPO Second Board of Appeal, the General Court (GC) excluded any likelihood of confusion between the two signs represented below, despite sharing the same public and considering the latter’s average level of attention, and the average degree of conceptual similarity between the signs.

Background

In 2016, Nestlé (the Applicant) sought to register this sign as an EU Trade Mark (EUTM):

The application was for certain goods in Classes 29 (soups, soup concentrates, preparations for making soups, stock also in the form of cubes, of tablets or granulated, bouillons, bouillons concentrates, preparations for making bouillons, broth) and 30 (flours and preparations made from cereals, bread, yeast, pastry, rice, pasta, noodles, foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes) of the Nice Classification.

Based on Article 8(1)(b) of Regulation 2017/1001 (EU Trade Mark Regulation EUTMR)), Pasa Africa opposed the application, claiming that the applicant's sign conflicted with its earlier EUTM designating goods in Classes 29 (meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats) and 30 (coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard; vinegar, sauces (condiments), spices, ice’) of the Nice Classification:

In 2017, the Opposition Division rejected the opposition, assuming that the goods at issue would be identical (there was also a question regarding the senior trade mark’s use).

The decision was upheld by the Second Board of Appeal (the Board), which emphasized, among other things, the low distinctiveness of the earlier trade mark and the average degree of visual and conceptual similarity of the signs at issue. In particular, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR could be established if the goods in question were regarded as identical. The case was therefore sent back to the Opposition Division for a decision on the genuine use of the earlier mark and the actual comparison of the relevant goods.

Appeal to the GC: parties’ arguments

The Applicant appealed the Board’s decision, arguing that: (1) the signs at issue would not be visually and conceptually similar; and (2) the earlier trade mark only has a weak distinctive character because human figures do not have an inherent distinctive character. As such, no likelihood of confusion could be found, irrespective of the characterization of the goods at issue.

According to Nestlé, the visual component should have been excluded from the assessment. The Board should have instead focused on the distinctive elements of those marks which were capable of differentiating them, namely the stylized character and direction of those figures as well as the colours and contour of those marks.

In respect of conceptual similarity, the Board should have found that both the human figure and the figurative element of the earlier mark constituting a ‘check icon’ indicated to the relevant public that the goods marketed under that mark were beneficial to or recommended for health, whereas the mark applied for conveyed the notion of strength.

The EUIPO submitted that the Board had correctly found that the marks would be visually and conceptually similar to an average degree and that the earlier mark had an average distinctive character.

The decision

Comparison of the signs

The global assessment of the likelihood of confusion must be based on the overall impression conveyed by the signs at issue, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyze its various details (OHIM v Shaker, C‑334/05 P).

In considering such distinctive and dominant elements, the Court noted that the figures in both marks are likely to represent strong or healthy people. In those circumstances, since the goods in question are foodstuffs, those figures are likely to indicate to the relevant public that the goods contribute to making people who consume them strong or healthy. Therefore, the figures are not necessarily perceived as indicating the commercial origin of those goods; the distinctive character of those figures is thus weak.

Visual and conceptual similarity

The figurative elements of the earlier mark are black whereas the human figure and the other figurative element of the mark applied for (depicting an escutcheon) are red and blue. Whether a mark is registered in colour or in black is not regarded as a wholly negligible element in the eyes of consumers (Pico Food v OHIM, T‑623/11).

There are also differences between the dominant elements of the marks at issue: the human figure in the earlier mark represents a man standing on one foot, whereas the lower limbs of the human figure in the mark applied for are not depicted. In addition, the shapes of the other figurative elements are not similar.

In light of the weak distinctive character of the human figures in each of the marks at issue, the GC took the view that those marks would not be visually similar.

The Court did however consider the marks conceptually similar to an average degree, since both marks are likely to evoke the notion of goods which are beneficial to health and/or strength.

The distinctive character of the earlier mark

The highly distinctive character of a sign is relevant only in respect of the earlier mark and not the later mark (I Marchi Italiani and Basile v OHIM, T‑133/09). Consequently, the fact that the applicant’s argument implies that the mark applied for is weakly distinctive is not such as to affect the assessment of the distinctive character of the earlier mark. Furthermore, both the human figure and the other figurative elements of the earlier mark have a weak distinctive character since there are no other specific indicia, such as the way in which the elements are combined, to indicate that the earlier mark, taken as a whole, is greater than the sum of its parts.

Likelihood of confusion

The mere association which the public might make between two signs as a result of their similar semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion (SABEL v Puma, C‑251/95). Therefore, in view of the weak distinctive character of the earlier mark and lack of any visual similarity, the General Court held, contrary to what the Board found, that the likelihood of confusion could not be established, despite the average level of attention of the relevant public and the average degree of conceptual similarity, even if the goods in question were to be regarded as being identical.

Nexus

Hästens Sängar fails in trade mark application concerning its chequered figurative mark

GC excludes likelihood of confusion between marks representing stylized human figure and relating to same goods due to low distinctiveness of shared concept

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