Charlie Chaplin’s Charlot character cannot be trademarked in the EU

As it is well-known fictional characters can be registered as trademarks in many countries around the world. There are a lot of examples of such marks from Mickey Mouse and Superman to Super Mario.

The question is, however, what can represent an obstacle to the registration of these marks.

Recently, the EUIPO has issued a decision on a European trademark application for the following mark in classes 9 (scientific apparatus and instruments, photographic apparatus and instruments, cameras), 35 (advertising, business management, clerical services), 38 (telecommunication services), 41 (teaching, training, entertainment services), and 42 (computer software design):

The mark represents the great actor Charlie Chaplin in his most famous role as the Charlot character.

EUIPO refused to register this mark based on absolute grounds Article 7(1)(b) – (c) and 7(2) of Regulation 2017/1001 (EUTMR). According to the Office, consumers would perceive this character as conveying modern, liberal, and humanist values by denouncing totalitarianism and Nazi ideology.

This is the reason why consumers would perceive the image as an advertising approach to encourage sales based on the values attached to the Charlot character. From that perspective, it is not likely for consumers to get the image as a particular source of trade origin. This is emphasized by the widespread practice where famous people and characters are used for enforcement practices.

In addition, the image could be descriptive too if consumers consider the content of some services mentioned in the application as related to Charlot and Charlie Chaplin.

Source: IPKat.

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