EU General Court reiterates that low distinctiveness cannot be offset by specialised public in Balmain cases

A brand's own image is a very valuable asset, especially as far as luxury brands are concerned. The ability to register (supposedly) distinctive marks can play an important role in developing further a brand's own signature image whilst also discouraging lookalikes. Renowned luxury fashion brand Balmain experienced a minor setback when the EU General Court (GC) confirmed refusal to register figurative marks representing a lion’s head encircled by rings forming a chain for goods under classes 14 and 26, due to lack of distinctive character. The decisions are those in cases T-331/19 and T-332/19.

One lion’s head...

Background

In November 2017, Balmain submitted applications to the EUIPO to register two variations of a figurative mark representing a lion’s head encircled by rings forming a chain for goods within the following classes:

• Class 9, including scientific, nautical, geodetic, photographic, cinematographic, optical apparatus and instruments;

• Class 14, including cufflinks and jewellery;

• Class 18, including leather products;

• Class 25, including women’s, men’s and children’s clothing; and 

• Class 26, including buttons and press-studs for shoes (fasteners).

The EUIPO examiner found that registration for classes 14 and 26 would not be possible, based on Article 7(1)(b) of the Regulation 2017/1001 (EUTMR) and lack of distinctive character. 

The EUIPO Fifth Board of Appeal confirmed the examiner's assessment. A further appeal to the GC followed.

... and another

The relevant public

Reflecting the decision of the Board of Appeal, the GC held that the relevant public for class 14 and 26 goods would be the generality of EU consumers, the only exception being ‘press-studs for footwear (fasteners)’ in class 26, for which the relevant public would be the fashion sector or a professional public.

Balmain had submitted that all of the goods within class 26 would be purchased by a professional public and that this should have been taken into consideration. However, the GC stressed that, despite the degree of attention of a specialised public being higher than that of the general public, it would not necessarily follow that a lower degree of distinctiveness of the sign would be sufficient. Ultimately, distinctiveness of a trade mark is to be determined on the ability of the trade mark to allow the relevant public to distinguish the product in question from those of other undertakings. As such, neither the level of attention of the relevant public nor the fact that the relevant public were specialised would decisively impact an assessment of distinctive character. 

Distinctiveness of the marks applied for

With regards to distinctiveness, the GC emphasised that that there are a large number of buttons, cufflinks and jewellery featuring lion’s heads on the market, and that the design and arrangement of the figurative marks was not sufficiently far removed from designs frequently used on the market. The court emphasised (as the Board of Appeal had previously) that, had Balmain been able to overcome the finding that a lion’s head was often associated with all kinds of buttons, it could have been concluded that the marks deviated significantly from the norms and customs of the sector. [This was, after all, how the pictured marks were able to be registered for goods in classes 9, 18 and 25.]

Balmain had also claimed that the marks applied for were fanciful and original graphic representations of a lion’s head, resulting from artistic creation. However, the Court was quick to point out that this would not play any role in a determination of distinctive character. It also noted that the fact that there was a large number of existing EU trade marks registered for the same goods in classes 14 and 26, consisting solely of the graphic representation of a lion or the head of a lion, could not be relied upon by Balmain.