The General Court of the EU has ruled in Case T‑580/15, Flamagas, SA v EUIPO.
The case concerns the following registered three-dimensional EU trademark for classes 4 (fuel gas, compressed), 34 (lighters for smokers) and 35 (advertising, business services):
Against this mark, a request for invalidation was filed based on the Absolute grounds for refusal of a trademark registration in particular Article 7(1)(a) to (c) and 7(e)(i) and (ii), read in conjunction with Article 52(1)(a), of Regulation No 207/2009:
1. The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
Initially, EUIPO dismissed the request but after that, the Board of Appeal upheld the invalidation. This decision was appealed.
According to the intervener, the mark represents the shape of the product which is necessary to obtain a technical result so through acquiring a monopoly right the trademark owner can try to prevent its future use by other producers on the market.
The owner argued that its mark is distinctive because of the word part “CLIPPER” that was included in the sign.
According to the General Court, the word part is not enough for a conclusion that the mark has a distinctive character. The way in which it is represented suggests that it is not a dominant and center part of the mark and pottentially could not be noticed by the consumers taking into account the small font size and the gray background.
What’s more, the Court considers that by not mentioning the word part as an essential element of the mark, the owner himself doesn’t consider it as an important for the sign as a whole.
The Court dismissed the claim for acquired secondary distinctiveness due to the lack of sufficient evidence for this.
Based on the foregoing, a note that can be deduced is that in the case of three-dimensional trademarks, their shape has to depart in some way from the widespread shape typical for the market and any word part attached to it has to be presented properly so to be visible and dominant for the sign as a whole.