Si trattava di marchio di posizione costituito da poligono a sei lati collocato in quattro punti di un occhiale:
(dal post di Anna Maria Stein)
il segno contestato:
40 The contested mark is not a mere figurative mark, but a position mark and has to be assessed as such. A trade mark may be devoid of distinctive character as a figurative mark but when applied for on a specific position or positions it may obtain a distinctive character. Thus, the position of the trade mark is relevant for the overall assessment.
However, it is to be stressed that the mark as such is also relevant for the overall
comparison.
41 The representation of the contested mark shows the position of four six-sided irregular black polygons (hereinafter ‘polygons’) each with a straight upper and lower edge and with the vertical sides formed by two parallel lines of equal length that converge inwards in a slightly concave fashion, each at the same angle. Two of these polygons are placed in a vertical direction on the front of the frames one on the left and one on the right, and two are placed horizontally on the outside part of the left and right temples. It is to be stressed that the shape of the glasses that are shown by means of dotted lines do not form part of the subject matter of the registration in accordance with Article 3(3)(d) EUTMIR
Giudizio:
49 As to the position mark showing four polygons instead of one, there is nothing about these polygons and as affixed on the goods that is unusual or memorable that might enable the relevant public to perceive the sign immediately as distinctive.
50 As correctly pointed out by the applicant, it is irrelevant whether the sign serves other functions in addition to that of an indication of origin, e.g. an aesthetic (decorative) function. However, the Board considers that the contested mark at hand does not serve (inherently) as an indication of origin. The position sign for which protection is sought on that, it is stressed, particular place of the frame and temples will be perceived by the relevant public (even to the extent it has a high level of attention) and in relation to all contested goods solely as a decoratively finished mechanism or rivet (a rivet as such has a dual purpose by having a functional and decorative purpose) that connects to or covers
the hinge that attaches the end piece or the front of the glasses to the arms (temples). (….)
54 Furthermore, as to the size of the elements of the four polygons and as affixed on the eyewear, the applicant itself admits that these elements are small but argues that this not relevant. It is true, that the size does not automatically disqualify any trade mark that is to be placed on eyewear frames from protection. Furthermore, the Board does not consider the small size of the four polygons at issue as a decisive factor. However, as an accessory remark, bearing in mind that it is unlikely that most of the consumers will analyse the mark in detail, the smaller the polygons at issue, the more difficult it may be for the
public to distinguish them from other plane figures. This finding of the public’s
perception is not changed by the applicant’s argument that the size is small due to the limited space for featuring a trade mark on eyewear frames.
Segue poi un ineressante aqnalisi del sondaggio demoscopico (mirante a provare che il segno sarebbe diustintivo presso i consumatiori tedeschi), § 59 ss
Victoria Thüsing su IPKat ci notizia di 5th board of appel EUIPO 04 gennaio 2024, proc. R 1934/2023-5, Winch Industry GmbH, su marchio tridimendionale relativo a tende da installare sul tetto di auitovetture e costituito dalla rappresetnazione delle tende stesso:
marchio 3D chiesto in registrazione
La differenza rispetto alle tende consuiete era indicata analitricamente dall’istanze.
Giustamente il primo grado e l’appello de quo rigettano la dom,anda. Tale possibile differenza è insigmnificante (se esistente) per cui l’effetto monopoistico prodotto dalla descrittività non verrebbe evitato.
Eleonora Rosati in IPKat ci notizia della confrma d’appello EUIPO secondo cui non è intrinsecamente distintivo il marchio seriale di Prada sotto rappresentato
o perlomeno non lo è per la maggior parte dei prodotti indicxati indomanda.
E’ infatti dal pubblico perceptico come decorativo, non come indicatore dell’rigina imnrpenditoriale (giudizio dubbio, data ormai la sua notorietà, ma forse alla fine esatto) e comnque siffuso nel commercio, almeno per certi prodotti
<<24 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). The same applies to a pattern mark consisting
of the two-dimensional representation of that product.
25 That is also the case for a figurative mark consisting of a part of the shape of the product
that it represents, inasmuch as the relevant public will immediately and without further
thought perceive it as a representation of a particularly interesting or attractive detail of
the product in question, rather than as an indication of its commercial origin (21/04/2015,
T-359/12, Device of a checked pattern (maroon & beige), EU:T:2015:215, § 25 and case-
law cited). The same applies to a pattern mark consisting of a part of the shape of the
product that it represents>>
Ineressanti sono poi le consiederaozipni sul raggruppamento dei prodotti in classi omogenee al fine del giudizio di distintività a
Anteriorità opposta: ROYAL nonchè ROYAL UNIBREW (ma l’esame ha riguardato solo il primo segno)
Giustamente il BoA esclude confondibilità data la assenza di distintività di ROYAL (“segno di uso comune negli usi costanti del commercio”, se si applicasse il ns diritto, art. 13.1A cpi)
<<Overall assessment of the likelihood of confusion
45 The global assessment of the likelihood of confusion implies some interdependence between the relevant factors, in particular between the similarity of the signs and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the signs, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 18/12/2008, C-16/06 P, Mobilix, EU:C:2008:739, § 46; 05/03/2020, C-766/18 P, BBQLOUMI (fig.) / HALLOUMI, EU:C:2020:170, § 69).
46 It is also settled case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore trade marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).
47 On the other hand, where the signs overlap in a descriptive, non-distinctive or weak element, the global assessment of the likelihood of confusion will not often lead to a finding that that likelihood exists (12/06/2019, C-705/17, ROSLAGSÖL, EU:C:2019:481, § 55).
48 The ratio legis of trade mark law is to strike a balance between the interest of the proprietor of a trade mark in safeguarding its essential function, and the interests of other economic operators in having signs capable of denoting their goods and services. Therefore, excessive protection of marks consisting of elements that are devoid of any distinctive character or have a very weak distinctive character could adversely affect the attainment of the objectives pursued by trade mark law, if the mere presence of these elements in the signs at issue led to a finding of a likelihood of confusion without taking into account theremainder of the specific factors in the case (18/01/2023, T-443/21, YOGA ALLIANCE INDIA INTERNATIONAL, EU:T:2023:7, § 117-118).
49 In the present case, notwithstanding the fact that the goods covered by the signs at issue are identical or similar, the low degree of visual and phonetic similarity and at most low degree of conceptual similarity between them, in conjunction with the weak distinctiveness of the earlier mark, rule out the possibility that the relevant public might think that the goods at issue come from the same undertaking or from economically linked undertakings.
50 For the part of the public which perceives the contested sign as a conceptual unit clearly referring to the Duke and Duchess of Sussex (namely Prince Harry and Megan Markle), no likelihood of confusion exists, as the conceptual difference between the signs counteracts any visual and phonetic similarities that exist (04/05/2020, C-328/18 P, BLACK LABEL BY EQUIVALENZA (fig.) / LABELL (fig.) et al., EU:C:2020:156, § 74 and the case-law cited).
51 For the remaining part of the public, the coincidence in an allusion to luxury and superb quality (being a result of the common word ‘ROYAL’) is sufficiently outweighed by the additional verbal element ‘SUSSEX’ at the beginning of the contested sign. There is no risk that this difference will not be noted by the consumers. As a result, there is no direct likelihood of confusion. The contested sign will not be taken for the earlier mark (05/02/2007, T‑501/04, ROYAL / ROYAL FEITORIA et al., EU:T:2007:54, § 47-49).
52 The opponent claims that the contested sign will be perceived as a sub-brand of the earlier mark. However, for such an indirect likelihood of association to occur, the trade mark applied for must display such similarities to the earlier mark that might lead the consumer to believe that the sign is somehow connected with the earlier right (and therefore, that the goods covered by it have the same or a related commercial origin). This likelihood of association may occur only if the trade mark applied for shares with the earlier mark characteristics capable of associating the signs with each other (by analogy 15/03/2023, T‑174/22, Breztrev / Brezilizer et al., EU:T:2023:134, § 83; 25/10/2023, T‑511/22, HPU AND YOU (fig.) / DEVICE OF THREE HEXAGONS (fig.) et al., EU:T:2023:673, § 80). If the similarity between the signs resides only in an element that has a minimal degree of distinctiveness, such an association is not likely. For such an association to occur the signs would need to overlap in a distinctive element, or at least in the structure and/or stylisation. Average consumers do not usually take one component of a composite trade mark and compare it with another mark (even less if it is weakly distinctive).
53 The earlier mark has a low degree of inherent distinctiveness. It is apparent from the case-law, that such marks enjoy less extensive protection and, therefore, the likelihood of confusion is, in such cases, not likely (12/05/2021, T‑70/20, MUSEUM OF ILLUSIONS (fig.) / MUSEUM OF ILLUSIONS (fig.), EU:T:2021:253, § 91-92, 95).
54 Bearing in mind the above, the Board finds that no likelihood of confusion exists on the basis of the inherent distinctiveness of earlier international registration No 854 092 designating the European Union for any part of the public.
55 As a result, the claim of enhanced distinctive character and reputation of the earlier mark needs to be examined (as it might substantially affect the global assessment of likelihood of confusion)>>.
Rimanda però per l’esame dell’altro segno e della domanda basata sulla rinomanza (improbabilissima , direi, per tali sgni)
Resta da capire come secondo il diritto internazionale si possa impedire lo sfruttamento della notorietà altrui (i duchi del Succesx, Harry e Meghan), a prescindere da loro registraizoni come marchio
<<The global assessment of the likelihood of confusion
77 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered by those marks. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
78 Furthermore, the degree of distinctiveness of the earlier mark, which determines the scope of the protection conferred by that mark, is one of the relevant factors to be taken into account in the context of the global assessment of the likelihood of confusion. The more distinctive the earlier mark, the greater will be the likelihood of confusion, with the result that marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; see also judgment of 29 March 2023, Machková v EUIPO – Aceites Almenara (ALMARA SOAP), T‑436/22, not published, EU:T:2023:167, paragraph 96 and the case-law cited). However, in the light of the interdependence between the factors to be taken into account, the existence of a likelihood of confusion cannot automatically be ruled out where the distinctive character of the earlier mark is weak (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 70 and the case-law cited).
79 In practice, where the earlier mark and the mark applied for coincide in an element that is weakly distinctive with regard to the goods or services at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, exists (judgments of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55; of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53; and of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 121). Where the elements of similarity between two signs at issue arise from the fact that they have a component with a low degree of inherent distinctiveness in common, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgments of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79 and the case-law cited, and of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 64 and the case-law cited).
80 In paragraphs 45 to 50 of the contested decision, the Board of Appeal found that, in the light of the identity or various degrees of similarity, from low to high, of the goods at issue, the average degree of visual similarity and conceptual identity between the marks at issue and the average degree of inherent distinctiveness of the earlier mark, the relevant public, the level of attention of which varied from average to high, was likely to believe that the goods covered by those marks came from the same undertaking or, as the case may be, from economically linked undertakings. It added, in paragraph 52 of that decision, that its assessment would not have been different if it had found that the figurative element representing a lion’s head in the earlier mark, or even that mark taken as a whole, had only a low degree of inherent distinctiveness, in the light of the dominant nature of that element in that mark and the interdependence between the various factors to be taken into account in the global assessment of the likelihood of confusion. It took the view that those assessments were not contrary, in the circumstances of the case, to the case-law of the Court of Justice and the General Court.
81 By its fourth complaint, the applicant disputes, in essence, the Board of Appeal’s assessment that there is a likelihood of confusion in the present case. It submits that the marks at issue, although they both consist of the representation of the same concept, namely a lion’s head, create a different overall impression in the mind of the relevant public. In that regard, it relies on the fact that the representation of such a concept is banal and commonplace in the fashion sector and that the earlier mark has only a low degree of inherent distinctiveness, which, in combination with the other factors in the present case, should have led the Board of Appeal to rule out the existence of a likelihood of confusion.
82 EUIPO disputes the applicant’s arguments. However, in the alternative, should the Court take the view that the earlier mark has a low degree of inherent distinctiveness, it states, in essence, that it endorses the applicant’s claim for annulment on the basis of the single plea in law relied on by the applicant, in accordance with the case-law of the Court of Justice and the General Court which ensures that marks with a low degree of inherent distinctiveness are not overprotected (see paragraph 79 above).
83 In that regard, it must, first, be borne in mind that the Board of Appeal made an error of assessment in finding that the earlier mark had an average degree of inherent distinctiveness, whereas that degree of inherent distinctiveness could only be categorised as low (see paragraph 75 above).
84 As regards the applicant’s argument that the Board of Appeal gave undue importance, in the contested decision, to the conceptual identity between the marks at issue in the context of the global assessment of the likelihood of confusion, it must be borne in mind that, according to the case-law, the purchase of goods in Classes 14 and 25 is based, in principle, particularly on their visual aspect. Clothing and clothing accessories, the purpose of which is to embellish the appearance of the human body, are generally marketed in ‘bricks and mortor’ shops or online shops, as the case may be with the help of sales assistants or advisers and, in the light of those particular marketing conditions, the consumer’s choice is mainly made by looking at them. Consequently, the marks covering those goods will normally be perceived visually prior to or at the time of purchase, with the result that the visual aspect is of greater importance in the global assessment of the likelihood of confusion (see, to that effect, judgment of 18 May 2011, IIC v OHIM – McKenzie (McKENZIE), T‑502/07, not published, EU:T:2011:223, paragraph 50 and the case-law cited).
85 In the present case, in the global assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal, by finding that there was a higher than average degree of overall similarity between the marks at issue, attached more importance, in paragraph 49 of the contested decision, to the conceptual comparison of those marks than to the visual comparison, in particular in so far as it found that the differences in the stylisation of the marks were of limited importance in the overall impression created by those marks and therefore did not have sufficient impact to assist consumers in decisively distinguishing between the marks.
86 In so doing, it attached too much importance to the conceptual identity between the marks at issue, since, first, and as is apparent from the case-law cited in paragraph 84 above, the choice of the goods at issue is based mainly on their visual aspect and, secondly, the concept represented in the marks at issue, namely a lion’s head, is used in a banal and commonplace way in the commercial presentation or the decoration of goods in the fashion sector.
87 Consequently, the second part of the second complaint must be upheld and the examination of the present action must be continued by taking into account the error of assessment thus noted.
88 In the light of the case-law cited in paragraphs 78 and 79 above and the finding, made in paragraphs 50 and 51 above, that the representation of a lion’s head is a banal and commonplace decorative motif in the fashion sector, in which consumers are regularly faced with such a motif in the commercial presentation or the decoration of the goods, with the result that that motif has lost its capacity to identify the commercial origin of those goods, it must be held that, even though the marks at issue are conceptually identical, that can be of only limited importance in the global assessment of the likelihood of confusion, since the concept in common to which those marks refer is only weakly distinctive in relation to the goods at issue and can therefore contribute only to a very limited extent towards the function of a mark, which is to identify the origin of those goods and to distinguish them from those with a different origin (see paragraphs 47 and 52 above).
89 In view of the weak distinctive character of the concept which is common to the marks at issue and the weak distinctive character of the earlier mark, considered as a whole, the fact that the marks at issue are visually similar to an average degree was not sufficient to enable the Board of Appeal to find, in the contested decision, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even if the goods at issue were identical.
90 Consequently, the applicant’s fourth complaint must be upheld, inasmuch as the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
91 In view of all of the foregoing considerations, the single plea put forward by the applicant must be upheld, in so far as it is based on the third complaint (see paragraph 76 above), on the second part of the second complaint (see paragraph 87 above) and on the fourth complaint (see paragraph 90 above) and the contested decision must therefore be annulled in so far as the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001>>.
Sono perplesso sia sulla banalità del segno anteriore, che sulla scarsa somiglianza tra i due segni: quindi complessivcamente pure sul giudizio del Tribunale.
In primo grado la domanda di registrazione è respinta ma è accolta in appello.
<<18 The mark for which protection is sought consists of the expression ‘TEAM USA’. The
examiner held that the entire European Union public would understand this expression as
having the following meaning: a group of players representing the United States of
America in a competitive game or sport, which as such is not contested by the IR holder.
19 The examiner, based on the dictionary definitions of the terms ‘TEAM’ and ‘USA’,
assumed that the expression ‘TEAM USA’ was a banal statement indicating information
about an aspect of the goods in question namely that the goods for which protection is
sought may be either used by a group of USA players during a competition, or be
distributed as promotional products or sold during competitions and/or sporting event>>
Ed ecco il dissenso :
<<22 Indeed, the examiner’s reasoning that since all the goods in question can either be used by
a group of US players during a competition or be distributed and sold during competitions
and/or sporting events, the mark for which protection is sought would be perceived by the
relevant consumer as a non-distinctive indication of an aspect of the goods and not as an
indication of their commercial origin cannot be followed. The Board also fails to
understand why the perception of the sign ‘TEAM USA’ as ‘an indication of the
provenance of a group of players’ prevents it from being able to function as a commercial
badge of origin for the goods concerned.
23 The expression ‘TEAM USA’ does not convey any concrete information evoking the
goods in question, namely jewellery items, backpacks and bags, mugs, glasses and water
bottles, as well as clothing articles. None of the examples given by the examiner can
demonstrate that the expression ‘TEAM USA’ is perceived by the relevant public as a non-
distinctive, frequently used or banal statement for jewellery items in Class 14, mugs,
glasses and empty water bottles in Class 21, backpacks and bags in Class 18 or clothing
articles in Class 25.
24 The expression ‘TEAM USA’ as a whole has the minimum degree of distinctiveness
required under Article 7(1)(b) EUTMR for the goods concerned. The registration of a sign
as a trade mark is not subject to the establishment of a certain level of creativity or artistic
imagination on the part of the IR holder, but to the sole ability of the sign to individualise
the goods of the IR holder in relation to those offered by its competitors (24/03/2021,
T-93/20, Windsor-castle, EU:T:2021:164, § 22). The mark for which protection is sought
allows the relevant consumer to distinguish the goods concerned from those of other
undertakings without conducting any analytical examination and without paying particular
attention.
25 The internet links provided by the examiner insofar as they use the expression ‘TEAM
USA’ as a whole refer to the team of top players representing the USA at particular sports
events. The name of a sports team is not excluded, in principle, from the signs capable of
constituting a European Union trade mark, as it follows from Article 4 EUTMR. In this
particular context, the mark ‘TEAM USA’ is likely to be used for goods that are typical
merchandising and souvenir articles, and therefore to designate that they are manufactured,
marketed or supplied under the control of the IR holder, to which responsibility for their
quality can be attributed. The mere affixing of the mark for which protection is sought on
the goods in question enables those goods to be distinguished from other merchandising
and souvenir articles sold or provided by other undertakings (06/09/2018, C‑488/16 P,
NEUSCHWANSTEIN, EU:C:2018:673, § 65-66; 05/07/2016, T‑167/15,
NEUSCHWANSTEIN, EU:T:2016:391, § 43).
26 Thus, the mere fact that the mark for which protection is sought may represent or coincide
with the name of a sports team, in this case the team of top players representing the USA
at particular sports events, does not preclude, as such, its registration. The need to keep a
certain sign free for competitors is, in principle, not an interest protected under
Article 7(1)(b) EUTMR, but rather of other absolute grounds, such as Articles 7(1)(c), (d)
or (e) EUTMR. As regards names, and this could apply also to the name of a sports team,
the interest not to monopolise a name independently of its distinctive character is not an
interest protected under Article 7(1)(b) EUTMR (16/09/2004, C‑404/02, Nichols,
EU:C:2004:538, § 31).
27 The examiner provided no other reason, nor can the Board see why the mark for which
protection is sought should be considered to be lacking distinctive character for the goods
in question. The sign does not lack distinctive character under Article 7(1)(b) EUTMR>>
La decisione pare tutto sommato condivisibile.
Pemsel non la pensa così: <<In this sense, the sign ‘TEAM USA’ either describes that a team based in the US is responsible for the goods in question or that the goods are meant for people supporting the USA. Both meanings appear to be non-distinctive. The fact that they are rather vague is not decisive (see e.g. T-81/13 at para. 20)>>
Al contrrio il segno non pare evocare alcuna assunzione di responsabilità in capo a chicchessia per i beni nè allusioni ad una qualche oggettiva (e non solo creata dal marketing) idoneità per i tifosi USA
Il viso di modella per ‘services of mannequins and photo models for publicity or sales promotion’ in class 35 and ‘model and mannequin services for leisure or recreational purposes’ in class 41, è sufficientemente distintivo?
L’ufficio UE dice di no in primo grado (art. 7.1.b EUTMR), di si in appello.
<<19 It is true that, although special or original characteristics are not criteria for the distinctive character of a trade mark, the mark in question must enable the public to distinguish the goods and services in question from those of other undertakings or persons (04/07/2017, T-81/16, a pair of curved strips on the side of a Tire, EU:T:2017:463, § 49).
20 The Board of Appeal considers that this is the case with the sign applied for. The image at issue, as also indicated by the examiner, consists, taken as a whole, of the faithful representation of a woman’s head/face, in common colours and on a common background.
Contrary to the view taken by the examiner, that image does indeed enable the relevant public, consisting of the general public and a specialised public, to distinguish the services in question from those of a different commercial origin and, in particular, as originating from the specific person depicted.
21 Themere fact that a photograph is a natural faithful representation of what has been depicted does not mean that that representation cannot be perceived as a trade mark, all the more so since the image in itself does not say anything about the services sought. The sign applied for relates, undoubtedly, to the representation of the face of a particular person, with its unique faces, that is to say, its specific external features and that is to say, in the form of a passport photograph. In addition to (inter alia) the surname and first name, the representation of the face in the form of a passport photograph applies to the identification of a person and thus to his or her distinction from other persons. Whether the person can actually be named when viewing the image because it is known to the
relevant public does not alter this.
22 In the view of the Board of Appeal, the representation at issue is therefore capable of fulfilling the essential function of a trade mark in order to distinguish the services applied for from a different origin, as repeatedly held in relation to comparable trade marks. The Chamber refers in this regard to the decisions of 16/11/2017, R 2063/2016-4, device (PHOTO) OF THE HEAD OF A Woman, § 37; 23/10/2019, R 2574/2018-1, FOTOGRAFÍA AND COLOR DEL ROSTRO DE UNA PERSONA, § 14-15; 19/05/2021, R 378/2021-4, WEERGAVE OF THE face OF A PERSOON (fig.), § 17; 19/05/2021, R 468/2021-4, WEERGAVE OF A PERSOON (fig.), § 17). All those decisions concern similar figurative marks for, inter alia, similar or even identical services in Classes 35 and/or 41.
23 That finding of the Chamber is not affected by the fact that, as the examiner points out, many other faithful images of faces are conceivable from women and men. They will each represent a unique representation of that particular person, with his/her own specific external characteristics. In this context, the existence of double-riders and identical multiple births may be disregarded as exceptional and exceptional. Moreover, that argument could be put forward, also wrongly, against any other type of trade mark; how many words, patterns, images of animals, etc. do not exist?
24 Theexaminer’s argument that, with regard to the services requested in Classes 35 and 41 of mannequins and photomomodels, the image would represent only the person providing those services, indicates, on the contrary, that the image may be perceived as a means of distinguishing the commercial origin of those services. The relevant public will perceive the sign as a means of identifying the origin of the services in question, namely that they originate from the person depicted, with whom the sign fulfils the essential function of a trade mark (16/11/2017, R 2063/2016-4, device (PHOTO) OF THE HEAD OF A Woman, § 24-25; 19/05/2021, R 378/2021-4, WEERGAVE OF THE face OF A PERSOON (fig.),
§ 19; 19/05/2021, R 468/2021-4, WEERGAVE OF A PERSOON (fig.), § 19).
25 Similarly, the examiner’s finding that it is not unusual for the services applied for in Classes 35 and 41 that they are presented with the representation of the person providing the services does not call into question the conclusion that the mark applied for has distinctive character. Apart from the fact that such a finding, which, moreover, is unsubstantiated, is consistent with the ground for refusal laid down in Article 7(1) (d) EUTMR, which is not at issue in the present case, the representation appears in the mark applied for only in its kind. Nor is there any question that the use of precisely the mark applied for is customary for the services in question.
26 Finally, the comparison of examiner with the case-law cited above is flawed. The decision of 24/07/2001, R 341/2000-1, Figurative MARK (Doll’s head), which was more than 22 years old, concerns the application for a figurative mark relating to a stylised representation of a popp head with the typical characteristics of all the new-born babies similar, applied for dolls and toys in Class 28. The decision of 01/09/2015, R 2993/2014-5, device OF A SQUAIRE WITH FOUR PICTURES (fig.) concerns the application for a figurative mark relating to a collection of four photographs showing as many as five different persons of
different ages applied for for goods and services in the medical sector.
Conclusion
27 Contrary to the view taken by the examiner, the mark applied for does not infringe the absolute grounds for refusal set out in Article 7(1) (b) EUTMR.
28 It is therefore not necessary to examine whether it has acquired distinctive character through use in relation to the services in respect of which registration is sought pursuant to Article 7(3) EUTM>>
La soluzione data non è condivisibilissima (pur in un caso non facile), sia per la distiontività sia per l’individuaizone del consumatore diriferimeno (non è il general public)
La fotografia di in viso determnatonon è perceputo come indicaizone dell’origine aziendale
Descrizione del marchio nella pagina web EUIPO: <<The mark consists of a product configuration consisting of a metallic gold sole on footwear. The dotted lines demonstrate placement of the mark and are not claimed as a feature of the mark. >>
Disegno ivi presente:
(dal fascicolo EUIPO)
Rigettata la domanda di registaizone dallEUIPOP n° 018731419 con decisione 31 agosto u.s..: il segno <<does not possess at first sight any distinctive character in relation to the goods pursuant to Article 7(1)(b) EUTMR and is therefore unable to function as a trade mark in the market place, i.e. it fails to distinguish these goods from those of other undertakings>>
Marcel Pemsel su IPKat comunica la decisione del Bundespatentgericht 21 agopsto 2023 che il pattern trademark (marchi costiotuiti da motivi ripetuti o seriali) de quo manca di distintività, confondendosi copn ll’aspetto tipico delle suole di calzari (purtroppo decisione in tedesco)
La decisione è esatta ma anche facile. Il marchio possiede distintività vicina allo zero (nemmeno un minimo tentativo di personalizzare -“originalizzare” o meglio “distintivizzare”, verrebbe da dire- l’immmagine dell’arma), nè rileva il fatto che si applichi a vendite di servizi on line invece che beni fisici.
Quasi invisibile la componente denominativa.
L’unico passaggio interessante è il rapporto con la privativa da disegno/modello. Per l’ufficio, esso è nullo: quantunque questa presupponga “carattere individuale”, il giudizio di distintività sul marchio è da essa autonomo.
Conclusioni dell’ufficio:
<<55 In the present case, the mark applied for constitutes a banal representation of the object which is the essence of the goods and services claimed and, therefore, merely informs the relevant public in the territory of the European Union of the nature of the goods and services at issue in Classes 9, 35 and 41, namely that they are virtual goods in the form of firearms or online entertainment, sporting or cultural services aimed at virtual firearms. The application in that figurative version does not provide the consumer public in the territory of the European Union with any additional original information.
56 The relevant consumer public will therefore not be in a position to determine the commercial source of those goods and services when it sees the mark applied for in relation to the goods and services in question in Classes 9, 35 and 41. In addition, the application contains completely non-distinctive (‘MADE IN CZECH REPUBLIC’) and small-sized, miniature (‘CZ BREN 2’) word elements which cannot in any way influence its absence of distinctive character and avert the perception of the relevant public from a completely common representation of a firearm which has no distinctive character in relation to all the goods and services defined above, or which could create a lasting impression of the mark.
57 The applicant stated that the application deviates significantly from the norm or customs in the sectors concerned and this is apparent, for example, from evidence No 1-8 submitted by the applicant at first instance (see observations of 23 May 2022). In that regard, the Board of Appeal finds, first of all, that the evidence supporting the secondary declaration of acquired distinctive character of the application cannot be taken into account in the present appeal proceedings, since the Board of Appeal deals exclusively with the question of inherent distinctiveness, which always precedes the possible application of Article 7(3) EUTMR. However, the Board of Appeal analysed the referenced Annex 1-8 in the form of an extract from Wikipedia, articles from various periodicals and photographs of firearms and indicated that they did not in any way reveal, either individually or in relation to each other, that the application was sufficiently distinctive or that it departed significantly from norms or customs in the sector concerned – those documents do not in any way support the applicant’s assertion that the figurative element of the firearm reproduced in the application was complex. That evidence does not in any way follow from that evidence.
58 As regards the applicant’s argument that the exceptional shape and general appearance of the application is supported by the fact that CZ BREN 2 is also registered as a Community design and therefore has individual character, the requirement of individual character being similar to that of a trade mark, the Board of Appeal rejects it as wholly unfounded. The existing Community design No 4409852-0001 cannot have any direct effect on the distinctive character of the trade mark application in relation to the goods and services in Classes 9, 35 and 41. The trade mark must have the capacity to distinguish unequivocally the goods and services of a given undertaking from those of another undertaking, irrespective of whether or not a related design is registered.
59 A design and a trade mark are two distinct types of industrial property rights governed by different laws and having different criteria or conditions for registration. The use of the argument that a design is registered and has individual character cannot have a direct effect on the distinctive character of the mark. That criterion applies exclusively and individually to the trade mark application referred to above, notwithstanding its similar representation with that design>>.
