A figurative mark in the European Union must have sufficient distinctive character, but must not be descriptive either. Accordingly, geometric shapes and forms of representation with lines and semicircles for trademark registration are frequently rejected. We give an overview in case law.
Particularly in the case of trade mark design based on basic geometric shapes, such as lines, angles and semicircles, there is a need for particular evidence to support the assumption that the relevant public will perceive the design as a trade mark. Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character are not to be registered.
However, the decisive factor in acquiring distinctive character is that the goods or services covered by the mark are different from those of other companies. According to the case-law, this is hardly possible with simple geometric basic shapes, since such signs are regarded only as decorative elements.
Geometric shapes and lines are often rejected
Already in 2009 the desired brand entry of a half smiley smile of the Smiley Company was rejected. The trade mark applicant argued that the relevant public regarded the mark in question as ‘half the mouth of a smiley‘ and that that was already registered as Community trade mark No 517 383. The fact that the trade mark in question consists of part of a trade mark already registered is not relevant to the desired trade mark registration, but the CJEU ruled (September 2009, T:2009:364).
Anta Co. Ltd (China) also failed with the desired trademark application of two crossing lines with an acute angle. The CJEU found that the mark applied for did not contain any element which was visually striking (April 2017, T:2017:253).
In this context, the comparison with figurative marks of the two shoe manufacturers Vans and Deichmann is interesting.
Semicircles must not be too simple
The European Court (CJEU) rejected this (March 2019, T:2019:199). The simple figurative elements do not convey a message as to the commercial origin of the goods concerned, irrespective of the attention of the relevant public.
Figurative mark or colour mark
Anyone who now plans to acquire the necessary distinctiveness for geometric shapes by means of a combination of colours should observe the case-law on this subject.
An important judgement in the border area between figurative and colour marks and also position marks was recently made by the European Court of Justice (ECJ C:2019:261: Figurative sign of a colour combination is not a colour mark). A sign showing an ordered colour combination cannot be applied for as a colour mark, the ECJ ruled. If the sign for which registration is sought is composed of a combination of colours claimed in the abstract and without contours, the graphic representation of those colours must be systematically arranged in such a way that they are linked in a predetermined and consistent manner.
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Sources:
Judgements as linked in the text
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