KEEPING ABREAST OF LATEST OHIM DEVELOPMENTS

An appeal by Ms Katy Price (better known as Jordan, the celebrity/model) against the examiner’s refusal to register her highly publicised surgically enhanced breasts as a Community trade mark has been dismissed by an OHIM Board of Appeal (Case R-546/2002-5, not yet available on OHIM website). Ms Price sought registration of her breasts in respect of goods in Classes 16 and 25 and maintained that they were a three-dimensional trade mark which was either inherently distinctive or which had acquired distinctiveness through use. The graphic representation consisted of a series of colour photographs of the relevant body parts, taken in both profiles, from the front, from above and from below. The examiner considered that the sign was not graphically represented for the purposes of the CTM Regulation, Article 4; nor was it distinctive under Article 7(1)(b).

Dismissing the appeal, Board cited the ruling in Case C-104/01 Libertel that a trade mark may be represented graphically “in a way that is clear, precise, self-contained, equally accessible, intelligible, durable and objective”. In the Board’s opinion, the photographs of the applicant’s breasts were inadequate means of representation on the basis that the alleged sign was not “self-contained” or “equally accessible”. Nor, since the sign was itself subject to the vagaries of cosmetic surgery, weight loss, weight gain and gravity, could it be said to be “durable and objective”. On the issue of inherent distinctiveness, the Board’s own internet research concluded that the relevant consumer, on viewing it upon the goods for which registration was sought, would not consider that it was serving as a trade mark and would believe that it was a decoration or embellishment of the goods concerned. As to acquired distinctiveness, the Board considered that the evidence did not demonstrate how the breasts had in fact been used. The Board’s decision also considered issues arising from Article 7(1)(e), considering whether the shape of Ms Price’s breasts were a shape which “gives substantial value to the goods” to which they are applied.

The IPKat is relieved to note that this is not a case in which it has been considered necessary for the applied-for mark to be kept free for use by others.

Other unusual trade mark subject matter here, here and here
Other breast-related trade marks here, here and here
More on enlargement here (well, what did you expect?)