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Wednesday, 10 October 2007

Bang goes the BoA ruling

The Court of First Instance of the European Communities has this morning annulled the Board of Appeal's decision to refuse registration of a Community trade mark in Case T-460/05 Bang & Olufsen A/S v OHIM.

In essence, B&O applied to register three-dimensional sign reproduced here for goods in Classes 9 (Electric and electronic apparatus and appliances for analogue, digital or optical reception, processing, reproduction, regulation or distribution of sound signals, loudspeakers) and 20 (music furniture).

The examiner rejected the application since the mark, consisting exclusively of a representation of a loudspeaker, was devoid of any distinctive character and there was insufficient evidence of distinctiveness acquired through use. B&O appealed unsuccessfully to the Board of Appeal. According to the Board, although the shape had unusual features, B&O had not shown that that it was distinctive and that it therefore performed a trade mark function from the target consumers’ point of view. The Board did not however rule on the acquired distinctiveness issue.

B&O appealed to the CFI, on the ground that its appeal in relation to acquired distinctiveness through use had not been addressed. The Board of Appeal then sought to rectify its omission by issuing a corrigendum: it confessed that it had made an obvious mistake, but considered that such a mistake fell within the scope of Rule 53 of Commission Regulation 2868/95 (the implementing regulation) and affirming that the evidence provided by B&O was insufficient to demonstrate distinctiveness acquired through use.

Unhappy at this, B&O said that it found the application of Rule 53 questionable. Although it did not claim that the corrigendum should be regarded as inadmissible, B&O maintained that the Board's error should have an effect on the awarding of costs.

So far, the reader might think that, since the Board erred in failing to consider the acquired distinctiveness appeal, the CFI's ruling might have had something to do with that issue. Alternatively, the reader might consider that the CFI would focus on the costs issue. Not a bit of it! The CFI annulled the Board's ruling on the basis that the applied-for mark was inherently distinctive after all. Said the court:

"34 In this case, it must be borne in mind that, in the light of the nature of the goods concerned, in particular, their durable and technological nature, the average consumer displays a particularly high level of attention when purchasing such goods. The objective characteristics of the goods in question mean that the average consumer purchases them only after a particularly careful examination.

Left: a highly distinctive loudspeaker - but is he registrable as a CTM?

35 Accordingly, the distinctive character of the trade mark must be assessed in relation to the perception of the average consumer who exhibits a particularly high level of attention when he prepares and makes his choice between different goods in the category concerned ...

36 So far as concerns the examination of distinctive character, according to case-law, the criteria for assessing the distinctive character of marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark ...


39 In the present case, ... the mark applied for is ‘a vertical, pencil-shaped column, with a long, rectangular panel attached to one side. The point of the “pencil” joins to a flat base.’

40 The examination of all the presentational features referred to above which make up the mark applied for leads to the conclusion that the shape of the mark is truly specific and cannot be considered to be altogether common. Thus the body of the loudspeaker is formed of a cone which looks like a pencil or an organ pipe the pointed end of which joins to a square base. In addition, a long rectangular panel is fixed to one side of that cone and heightens the impression that the weight of the whole rests only on the point which barely touches the square base. In that way, the whole creates a striking design which is remembered easily.

41 All those features distance the trade mark applied for from the customary shapes of the goods falling within the same category which are commonly found in trade and generally have straight lines with right angles. In that respect, ... ‘…compared to a normal loudspeaker, it is inordinately tall and narrow. Furthermore, the core of the speaker is, unusually, a tube, which joins to an inverted cone. The apex of the cone is attached to a square base.’

42 Accordingly, the mark applied for departs significantly from the customs of the sector. It has characteristics which are sufficiently specific and arbitrary to retain the attention of average consumers and enable them to be made aware of the shape of the applicant’s goods. Thus this is not one of the customary shapes of the goods in the sector concerned or even a mere variant of those shapes, but a shape having a particular appearance which, having regard also to the aesthetic result of the whole, is such as to retain the attention of the public concerned and enable it to distinguish the goods covered by the trade mark application from those of another commercial origin ...

43 Even if the existence of specific or original characteristics does not constitute an essential condition for registration, the fact remains that their presence may, on the other hand, confer the required degree of distinctiveness on a trade mark which would not otherwise have it.

44 As regards the Board of Appeal’s argument that the shape of the product constituting the trade mark applied for cannot perform a trade mark function from the relevant consumers’ point of view on the ground that that mark is essentially dictated by aesthetic considerations ..., it suffices to state that, in so far as the relevant public perceives the sign as an indication of the commercial origin of the goods or services, whether or not it serves simultaneously a purpose other than that of indicating commercial origin is immaterial to its distinctive character ...

45 ... it must be concluded that, by taking the view that the trade mark applied for was devoid of any distinctive character, the Board of Appeal misconstrued the wording of Article 7(1)(b) of Regulation No 40/94 from which it follows that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that article ...".

This member of the IPKat team remains rather unconvinced since he feels that the CFI has insufficiently appreciated the issue of whether the relevant consumer, viewing the goods in question, would even regard them as a sign that indicated their origin in a sector in which it is not common for consumers to equate a product's shape with its trade origin. Merpel adds, where does this leave the approach of the England and Wales Court of Appeal towards consumer perceptions in Bongrain? towards consumer perceptions?

Right: the IPKat conducts some empirical research into loudspeakers

More unusual loudspeakers here and here


Anonymous said...

But Merpel, you're comparing chalk and, in the case of Bongrain, cheese (ha ha).

The CFI seems to have wobbled here. These speakers come in all kinds of shape variants - none of which prima facie denote origin.

Anonymous said...

I don't know if I'm the relevant consumer or not but as I scanned down the page I saw the representation of the loudspeaker and thought "I wonder what what Bang & Oulfsen have been up to". From my survey of one, it seems the shape of the loudspeaker may indeed be distinctive and associated with a particular manufacturer.

Jeremy said...

But that's just the point: B&O have a recognisable STYLE, but that's not the same as a trade mark. You could have seen not just that shape but any number of srikingly modern shapes and made the same observation: there's no trade mark protection for a style.

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