Protection of three-dimensional trademarks can be a real challenge both in the process of their registration with the Patent Offices and in case of enforcement.
One indicative case about this is the following EU trademark application filed by Pinball Factory GmbH for classes 11, 12(including camping vehicles), 20, 21 и 39:
Against this application, an opposition was filed by the German car manufacturer Volkswagen based on the following earlier three-dimensional trademark in classes 12, 20, 21 и 39:
Initially, the EUIPO dismissed the opposition finding both signs dissimilar. According to the Office, the images in the earlier mark represent “true-to-life depiction of a camper van, or bus” because of this they have a low distinctive character.
The mark applied for shares a similar image of a van but because of its low distinctiveness, it is not decisive for the assessment of similarity. On the other hand, the word part CULTCAMPER plays a differentiating role between both marks.
In the appeal, however, the Board of Appeal overturned this decision. The Board stated that the earlier mark has to be taken as a whole, not as individual perspectives only. The fact that the mark represents a depiction of a van is not sufficient to conclude that the marks’ distinctiveness was low.
On the contrary, the Board considered the earlier mark as distinctive enough because it departs from the norms and customs of the sector concerned.
In the case at hand, “the front of the van is characterised by a divided windshield and the curved V-shape on the bonnet with the circular headlights on each side“.
The same elements were shared by the mark applied for although stylized. The word part CULTCAMPER cannot be so differentiating because it can be interpreted as a laudatory word combination – CULT and CAMPER, that is to say, “camper van which is greatly admired or regarded as fashionable“.
Taking into account all of this the Boarded concluded that there was a likelihood of confusion and that the later mark can be associated with the earlier sign by consumers.