Amazon subsidiary loses EU General Court TM appeal
An Amazon subsidiary that develops search engine technology has lost an appeal before the EU General Court.
In its decision, published today, November 7, the General Court upheld the European Intellectual Property Office’s ( EUIPO) decision that A9.com’s applied-for mark lacks distinctive character.
In March 2018, A9.com attempted to register a white outline of a bell on a square, black background as a trademark at the EUIPO.
Registration was sought in class 9 for goods including apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers and downloadable software and software applications permitting users to monitor their home and office.
After the application was refused, A9.com appealed the decision, but the Second Board of Appeal of the EUIPO dismissed the appeal.
It said the public would perceive the mark as an icon signifying an alarm, a reminder or a bell sound rather than an indication of the commercial origin of the goods.
In its argument to the General Court, A9.com said its applied-for mark was not devoid of distinctive character, and that the Board of Appeal’s decision is vitiated by a “procedural error” because it categorised the goods covered by the mark into groups, and did not explain why it did this.
The Board of Appeal had categorised the goods into five groups to show how the applied-for mark was functional, rather than distinctive. For example, it said “apparatus for recording, transmission or reproduction of sound or images” may contain an alarm or alert function.
Regarding “downloadable software and software applications permitting users to monitor their home and office”, the Board of Appeal said the bell on a square background is a “natural way of designing icons that, when used in relation to those goods, would be seen as representing an application having an alert or alarm function”.
In its decision, the General Court this was enough to fulfil “general reasoning for each of the groups of goods” that the Board of Appeal identified.
Additionally, the General Court upheld the Board of Appeal’s finding that the mark lacks distinctiveness.
It said a trademark “must have certain characteristics that can be easily and instantly memorised by the relevant public and would make it possible for that sign to be perceived immediately as an indication of the commercial origin of the goods at issue”.
“In that regard, it must be stated that, at present, it is a matter of common knowledge that icons representing basic bells are commonly used in order to inform users of an event, by means of alerts, notifications, alarms or reminders,” the judgment said.
It said that in this case, the applied-for mark represents a “simple and banal bell, which does not have any particular degree of stylisation or additional element that has distinctive character”.
“The overall impression created by the applied-for mark is not unusual,” the court said, adding that it does not have “any eye-catching feature which is likely to be remembered by the public”.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today's top stories:
James Dean returning to screen after film producers secure IP rights
Monzo withdraws UK TM for ‘hot coral’ signature cards
SMEs making ‘good use’ of European patent system: EPO report
