Burberry failed to register its famous pattern as an EU trademark for digital goods

Theoretically, patterns can be registered as trademarks which is really important for some industries such as fashion. However, not every pattern meets the trademark law requirement for distinctive character and this can be a huge challenge for every applicant.

Is this the same for the so-called digital goods and services that have become popular in recent years?

Absolutely yes, what’s more, it could be even more challenging because the Patent Offices’ practice is still not so developed for these new digital goods.

One case in that regard is an attempt by Burberry Limited to register as an EU trademark its famous pattern for different digital goods and services in classes 9, 35, and 41:

The EUIPO partially refused this trademark based on absolute grounds – lack of distinctiveness. According to the Office:

In the present case, the figurative mark applied for shows a combination of elements that form a check pattern design. The horizontal and vertical lines of red, white and black colour are placed in a base of beige colour. The Office notes that case-law,
which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where the contested mark is a figurative mark consisting of the two-dimensional representation of that product. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the products it covers (21/04/2015, T-359/12, Device of a checked pattern (maroon & beige), EU:T:2015:215, § 24 and case-law cited). In general, a mark consisting of a decorative pattern that is simple and commonplace is considered devoid of any element that could attract the consumers’ attention, and insufficient to indicate the source or origin of goods or services.

Having regard to the goods in question, which include downloadable and virtual versions of real life clothing, footwear and decoration related goods, the Office notes that the figurative mark is presented in the form of a pattern intended either to be
placed on part of the goods or to cover the whole of their surface area and thus corresponds to the outward appearance of the goods. Therefore, the assessment of the distinctive character of the contested mark shall be based on the principles applicable to three-dimensional marks (21/04/2015, T-359/12, Device of a checked pattern (maroon & beige), EU:T:2015:215, § 28-31 and the case-law cited). The Office states that a combination of elements forming a check pattern is obvious and typical for the goods and not essentially different from other check patterns commonly found in the trade. The Office notes that the consumer’s perceptions for real-world goods can be applied to equivalent virtual goods as a key aspect of virtual goods is to emulate core concepts of real-world goods.

The Office showed examples of products using a similar pattern and from that point of view, the conclusion was that consumers will not perceive the pattern as a source of trade origin.

The mark was allowed only for the following:

  • Class 9 Downloadable interactive characters, avatars and skins; Video games and downloadable video game software.
  • Class 41 Providing online information about digital games; Providing online video games; Provision of online information in the field of computer games entertainment; Entertainment services, namely, providing online electronic games, providing a website with non-downloadable computer games and video games.

This decision was upheld by the Board of Appeal. Interestingly, the applicant already owns the same pattern as an EU trademark but for physical goods. That shows some inconsistency in the practice regarding distinctiveness in the case of digital and physical goods but on the other hand, shows the necessity of proving secondary distinctive character for the digital world too.

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