Il marchio tridimensionale deve differenziarsi dalle prassi del settore per avere distintività

L’appello amministrativo dell’EUIPO conferma il rigetto della domanda di registrazione come marchio 3D di una custodia (Case) per laptop per bimbi, sagomata con maniglie e piedestalli (2° Board of appeal, 24.05.2022, case R 503/2021-2, Speculative Product Design, LLC ; si v. le foto del case  nella decisione).

La domanda era stata rigettata in primo grado per forma necessaria ex art. 7.1.e.ii reg. 1001 del 2017.

Viene invece rigettata in appello per assenza di distintività ex art. 7.1.b del medesimo regolamento.

<<The shape of the sign must depart significantly from the shape that is expected by
the consumer – it must depart significantly from the norm or customs of the sector
as stated above (19/09/2001, T-30/00, red-white squared washing tablet (fig.),
EU:T:2001:223; 04/10/2007, C-144/06 P, Tabs (3D), EU:C:2007:577) – in other
words, the shape must be so materially different from basic, common or expected
shapes that it enables a consumer to identify the goods just by their shape. The
more closely the shape for which registration is sought resembles the shape most
likely to be taken by the product in question, the greater the likelihood of the
shape being devoid of any distinctive character for the purposes of Article 7(1)(b)
EUTMR (07/05/2015, C-445/13, Voss of Norway, EU:C:2015:303, § 81, 91;
24/05/2012, C-98/11, Hase, EU:C:2012:307, § 42; 07/10/2004, C-136/02,
Maglite, EU:C:2004:592, § 31).
34 When the Court of Justice refers to the ‘norm and customs of the sector’ and the
‘shape most likely to be taken by the product’, then firstly reference is being made
to design features that are conventional on the market (see 17/01/2006, T-398/04,
Tabs (3D), EU:T:2006:19, § 51). In respect of distinctive character, the view
expected to be taken by the targeted public is the decisive factor, and this is
influenced by their knowledge of available product designs and market
35 According to the Court, a simple departure is not sufficient. Rather, it must be
significant (see 12/02/2004, C-218/01, Perwoll-Flasche, EU:C:2004:88, § 49;
25/03/2020, R 1248/2020-1, Shape of a lens (3D), § 48; 24/09/2020,
R 589/2020-5, Triangular shaped notches in three double chains (3D), § 26).
36 The presence in the market of a ‘standardised shape/appearance’ does not
constitute a necessary assumption for the conclusion that a sign consisting of the
representation of the product or its packaging does not differ significantly from
that shape/appearance, which is devoid of any distinctive character. It is therefore
not necessary for there to be a ‘standard’ or ‘standardised use’ with regard to the
goods in question which are on the market. Even if there are a variety of shapes
for the presentation of these goods, it is possible that the trade mark under
examination does not diverge from these products in such a way as to be
perceived as an indication of the commercial origin of the goods themselves.

Il pubblicio di riferimento è attento: < Therefore, it is
highly likely that the consumer will carry out a comparison and pay high degree
of attention to the shape of these products as the shape is not merely a subsidiary
or irrelevant aspect in their choice>, § 41.

Al § 43 ss le anteriorità che permettono di confludere che quello inesame si inserisce “in scia”, senza dioffern ziarsi dalla prassi di settore.

Il Board però fa una supplemetnare ricerca in Internet, § 51 ss.

Lo scopo è quello appena citato: < the Board wishes to highlight, here, that the reason of providing these
examples of available designs for cases for tablets is not to prove that they create
an overall impression which is similar to the applicant’s 3D mark. The subject
matter of the appeal is not the likelihood of confusion, but the inherent
distinctiveness of the contested mark. The reason for providing these examples is
to show that there is a wide variety of shapes of cases for electronic devices with
touch screen (for kids), such as tablets, on the market and that, as a result,
consumers are accustomed to seeing products with characteristics, such as
handles or supports that resemble legs, or other features (for instance, eyes, ears,
etc.) that deviate significantly from the basic conventional rectangular shape of
cases for tablets. >, § 52.

Sintesi a §§ 57.

Che alcuni altri modelli siano contraffattori non conta a questo scopo, § 61.

In conclusione:

<< When taken as a whole, the mark applied for does not depart sufficiently and even
less ‘significantly’, from the norms and customs of the relevant sector. The
differences between the shape in the present case and the shapes that already exist
on the market will have the sole consequence that the trade mark applied for will
be perceived as a variant of those simple geometrical filter shapes (02/04/2020,
(3D), EU:T:2020:138, § 48).
71 Beyond the typical elements of cases for electronic devices with touch screen, the
sign does not exhibit any particular characteristics which could be remembered by
the consumer as an indication of origin. The characteristics are limited to those
which are technically necessary or intrinsic to the product to serve its function. As
proven by the examples above, the application fits seamlessly into the existing
range of shapes. The examples show numerous designs with playful or quirky
character, with lateral handles and legs for standing (22/06/2021, R 351/2021-4,
72 The consumer knows that the aforementioned characteristics of cases for
electronic devices with touch screen may be designed differently with regard to
the shape, colouring, and specific arrangement. However, they have no reason to
subject these design differences to an analytical assessment in order to discover
features which could guide him when deciding to purchase such goods with
regard to positive experiences and to a particular commercial origin. In particular,
they will not remember their exact design. The sign as a whole does not have a
design that would be perceived by average consumers as a commercial indication
of origin (22/06/2021, R 351/2021-4, SHAPE OF A WASSERVE LUSTERÄTS
(3D), § 20).
73 An applicant who claims that, contrary to the Office’s assessment, a trade mark
applied for has distinctive character, must provide specific and substantiated
information to show that the trade mark applied for is inherently distinctive
(25/11/2020, T-862/19, Form eines dunklen Flasche, EU:T:2020:561, § 53;
21/11/2018, T-460/17, Representation of an equilateral octagon, EU:T:2018:816,
§ 53). The Board is not required to specify, in a general and abstract manner,
everything which corresponds to the norm and customs of the sector concerned
(25/11/2020, T-862/19, Form eines dunklen Flasche, EU:T:2020:561, § 54;
13/05/2020, T-172/19, forme d’un tressage sur une bouteille (3D),
EU:T:2020:202, § 49).
74 The sign applied for is devoid of distinctive character.

(notizia della decisione da )