CJEU says ‘innovative’ product does not make TM distinctive
A trademark does not have distinctive character simply because the product it covers is “innovative”, according to the Court of Justice of the European Union (CJEU).
The Eighth Chamber of the court delivered its judgment today, May 16.
Germany-based Triggerball develops therapeutic treatments for muscle pain. In 2016 it applied to register a 3D trademark for massage balls with the European Union Intellectual Property Office, in class 5 for “compresses” and class 10 for “orthopaedic articles”.
The massage ball was described as a “bullet-like body with a plurality of edges, consisting of four identically shaped design elements, separated by a contrasting colour band, of which three elements have a lighter colour and the fourth a darker colour".
In December 2016 an examiner rejected the application in respect of the goods in class 10. The Fourth Board of Appeal upheld the decision in April 2017, affirming the examiner’s finding that the sign was devoid of distinctive character.
The board said the average consumer would not perceive the angular profile and distinct grooves on the product as being any different from the appearance of usual massage balls.
Triggerball appealed against the decision. It argued that the product covered by the applied-for mark has an “angular form” consisting of 42 angles, and this fact differentiates the item from other therapy devices which have a round shape.
The court explained that for the mark to have a distinctive character, something must differentiate the product covered by the applied-for mark from “the norm of habits of the sector”.
It said that the “innovative nature” of the invention, or the idea behind it, does not constitute “relevant criteria” for assessing the distinctiveness of the mark.
The court agreed with Triggerball that “if it is true” that the asymmetrical aspect of the product is unique in the sector, it “would enable the relevant public to quickly recognise the mark applied for”. However, this was not corroborated by “concrete and substantiated” evidence, the Eighth Chamber said.
Triggerball had presented a new illustration of the product to the court to prove its assertions. However, the document was found to be inadmissible as it constituted new factual evidence which had not previously been submitted to the EUIPO.
Overall “the applicant merely asserted that the graphic configuration and the angular form were not common, without, for example, having made a concrete comparison between the mark applied for and the norms or customs of the sector”, the court said.
Ultimately, the Eighth Chamber concluded that a 3D mark which consists of the shape of the product covered by the mark is not sufficient to establish distinctiveness—even if that shape is a “‘variant’ of one of the usual forms”.
The court dismissed the appeal and ordered Triggerball to pay the costs.
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