Hästens Sängar fails in trade mark application concerning its chequered figurative mark

Hästens chequered figurative mark

When it comes to figurative marks, distinctiveness very often plays a key role in determining whether such a mark is eligible for trade mark registration. This was the challenge that Hästens faced when it tried (and failed) to register a figurative mark consisting of a chequered gingham pattern. 

Background

On 16 December 2016, Hästens Sängar AB (a Swedish manufacturer specialising in beds, bedlinen, pillows and lifestyle accessories) filed an application with the European Union Intellectual Property Office (EUIPO) in respect of the pictured mark. Registration was sought for the following goods and services:

• Class 20: ‘Furniture,  including  beds,  bed  frames  and  bedroom  furniture;  mattresses,  spring mattresses, overlay mattress; pillows and down pillows’;

• Class 24: ‘Woven textiles, textile products, not included in other classes; bed linen; down quilts’;
• Class 25: ‘Clothing; footwear; headgear’;

• Class 35: ‘Marketing, commercial information related to furniture, home furnishings and interior decoration products, textile products, bed linen, bed covers, clothing, footwear and headgear and toys’.

Th EUIPO examiner rejected the application in 2018 in accordance with Article 7(1)(b) of Regulation 2017/1001. The decision was appealed, but without success. 

Further to an to appeal the General Court, Hästens Sängar’s main point of contention was the alleged errors of assessment made by the EUIPO Second Board of Appeal in respect of the alleged lack of distinctive character of the mark applied for.

Judgment

EU case law has provided guidance on how distinctiveness is to be assessed: (1) by reference to the goods or services in respect of which registration has been applied for; and (2) by reference to the relevant public’s perception of the mark. The General Court dealt with each of these factors in turn.

Perception of the trade mark applied for

Starting from the perception of the relevant public (collectively agreed to be the general public of the EU), the Court emphasised the need to assess whether the mark applied for was unrelated to the appearance of the goods.

It was apparent that the classes of goods and services applied for could be made from fabric bearing the pattern or contain fabric parts which might represent or bear the pattern constituting the mark applied for.

The Court drew on Louis Vuitton Malletier v OHIM - Nanu-Nana (T-359/12 and T-360/12 (IPKat analysis here), concerning the representation of Vuitton's chequerboard pattern. As affirmed in that case (and in accordance with earlier case law), the more closely the shape for which registration is sought resembles the shape most likely to be taken by the goods in question, the greater the likelihood of the shape being devoid of distinctive character is. Whilst that case law had been developed in relation to 3D trade marks consisting of appearance the goods themselves, the Louis Vuitton case highlighted that it would equally apply to figurative marks consisting of a 2D representation of that product. As such, a figurative mark consisting of a part of the shape (or characteristic) of a product could not be considered unrelated to the appearance of the goods covered by the mark.

Did you remember to specify the scope of
your trade mark application?

This could not be refuted by Hästens, since the mark was not limited in scope. Whilst it claimed that the mark's application concerned usage as a logo on the applicant's marketing materials and on labels attached to its products, the application as it was filed did not limit its usage to such: it would not prevent it from being used, for example, as a pattern applied to the surface of the goods in question. The visible ‘woven structure’ of the mark (alluding to potential use as a pattern for fabric) and its simple geometric pattern would also be taken into account.

The significant difference between the mark applied for and the norm or customs of the sector in question

In order to allow consumers to identify the sign as originating from a certain undertaking, the General Court took into consideration several factors.

Since the colours used in the mark would be perceived as being used for aesthetic purposes, it would not be sufficient on its own to distinguish the goods covered by the mark from those of other undertakings. The lack of notable variation in its representation also suggested that it would not be understood as an indication of commercial origin.

Hästens argued that the mark was unique since "no other manufacturer in that sector us[ed] similar signs as a logo or as a label attached to its products". However, as mentioned above, the lack of limitation in the scope of the mark applied for meant this argument was ineffective.

The Court also stressed the importance of considering the norms and customs of the sector as a whole, as the latter assessment factor of distinctiveness required the consideration of the actual market situation, as the mark would ultimately need to show that it originated from a specific undertaking, and could be distinguished from others on that basis.

As such, the Court concluded that the Board of Appeal was fully entitled to come to the conclusion that the mark applied for was devoid of any distinctive character for all of the goods and services applied for, for the purposes of Article 7(1)(b) of Regulation 2017/1001.

Comment

It is interesting to see Hästens Sängar's mark back on the IP scene, this time in relation to a different type of IP protection. Hästens Sängar previously unsuccessfully applied to the US Copyright Office for protection of a very similar mark, referred to as a “repeating 2-dimensional fabric pattern”. It therefore serves as a good example of how protection can be sought for (virtually) the same mark in various ways, yet still fail to do so (due to a lack of distinctiveness or a lack of originality).

As a side note, this case may also be seen to contribute to wider questions raised around the effectiveness of the EU court system. This Kat couldn’t help but be reminded of a point raised by Sir Robin Jacob when he gave his keynote speech at the JIPLP-GRUR Joint Conference in December 2019. When asked whether there could be any improvements to the EU system, he raised the three stage appeal process for trade mark decisions. In retrospect, the General Court Hästens case was, in effect, a reiteration of all of the remarks made by the Board of Appeal, which nonetheless made a reappearance before the EU courts. To a seasoned trade mark expert, the mark was unlikely to achieve the protection sought. 

Obviously, the EU court system is not something that can be changed overnight, nor does this Kat think that this will happen anytime soon. Even so, this acts as an apt illustration of how the process of trade mark registration has the potential to be improved.