Farewell Post: Can QR codes be registered as trade marks?

QR codes have become well-nigh ubiquitous so that it was merely a question of time until courts had to deal with applications for QR codes as trade marks. For my last post as a GuestKat, it seems fitting to draw Kat readers' attention to a recent Swiss decision dealing with this question.

A QR (shorthand for "Quick Response") code is a machine-readable matrix barcode. QR codes originated in the automotive industry and are now commonly used in areas as advertising, payments, product tracing and detection of counterfeits and, more recently, to allow global travel in the pandemic based on a person’s health status.

The centre of a QR code does not need to be coded and can be left empty. In fact, the centre of the matrix is sometimes used to place a sign or logo that is readable by humans.

SIX Interbank Clearing AG, a major Swiss operator of payment platforms, filed for registration in Switzerland the following sign in classes 35, 36 and 38:

 

If scanned with an appropriate reader (such as most of the smartphones in use today), the information encoded in the sign is "BV01 CH4431999123000889012 Robert Schneider SA 2501 Biel/Bienne CH 3949.75 EUR Rutschmann Pia Marktgasse 28 9400 Rorschach CH 21000000000313947143000901720180701 Drucksteuerung für den Versand" [Kat readers may rightly wonder what in the world this is, but the court decision does not give any hint – it seems that instead of generating a QR code for the occasion, the applicant copied a QR code that it uses as an example in its own advertisement for "QR-invoicing"]. The application included a disclaimer that the cross used in the centre of the sign would not be reproduced either in white on red background or in red on white background. This was intended to avoid rejection of the application for being too close to the Swiss flag or the emblem of the Red Cross.

The Federal Institute of Intellectual Property rejected the application for lack of distinctiveness. It considered that: (1) QR codes have a technical purpose and are not used in direct communication with clients of the claimed services; and (2) the cross-shaped element in the middle of the sign is too small to make up for the lack of distinctiveness of the sign as a whole. The applicant appealed to the Federal Administrative Court.

The Court recognized that QR codes might be regarded as decorative patterns or device marks, both of which are signs that are inherently registrable. However, the code ultimately serves a technical purpose and the matrix can hardly be memorized or easily distinguished from other QR codes by humans. Thus, the sign cannot be used to distinguish goods or services on the market.

However, the above only relates to the part of the QR code that is "technically necessary", i.e., everything but the centre of the matrix. With regard to the cross in the centre of the sign, the Court came to a different conclusion. It considered that while this part of the sign has a "certain distinctive force", the disclaimer proposed by the applicant is too narrow.

The Court remarked that a white cross on black background would still be understood as an indication of origin referring to Switzerland and a black cross on white background as a reference to the Red Cross (for instance, as black and white versions of the Swiss flag or of the Red Cross are often used on black and white letterheads). Therefore, the use in black and white needs to be disclaimed too.

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Given that the trade mark was represented in black and white on the application form, this leads to a strange situation, where the sign as shown in the application (or later on the register) is not being used in conformity with the disclaimer. The Court acknowledges that while this is "unfortunate", this does not hinder the examination or registration of the sign.

Distinctiveness needs to be examined based on the overall impression of the sign. The fact that the central distinctive element is small (compared to the sign as a whole) is not decisive. In fact, as the Court explains, the relevant public is actually used to seeing a distinctive element at the centre of a QR code. Therefore, the central distinctive element would not disappear in the eyes of the public – to the contrary, the public expects some sign readable by humans at the centre of the matrix.

There is also no public interest in refusing the registration of the sign. Registering it as a trade mark does not provide any protection for the technical element of the QR matrix, which remains a non-distinctive part of a distinctive whole. Registering the sign does not prevent third parties from using QR codes, whether or not the centre of the matrix contains a distinctive element.

Thus, the Court granted the appeal and remanded the case to the Federal Institute of Intellectual Property to register the sign with the broader disclaimer covering the black and white version as well.

Comment

The Swiss court's decision is not the first one to deal with the registration of a QR code as a trade mark. In particular, a German Federal Patent Court decision of 2015 already came to the same conclusion with regard to the matrix pattern: it is not readable by humans and is not understood to distinguish goods and services, but rather serves as a technical access path to further information on a product or service. In the German decision however, there was no distinctive sign at the centre of the matrix (or, at least, it was not separately distinguishable from the rest of the pattern).

Overall, this Kat agrees with both the outcome and the reasoning of the decision. Nonetheless, it remains to be seen what protection this trade mark will afford its owner. The applicant seemingly wishes to obtain exclusivity (related to the services claimed) for QR codes with a cross at their centre. Now, (1) if the matrix pattern is considered non-distinctive and can be disregarded, and (2) given that QR codes are generally represented in black and white, a combination that has been explicitly disclaimed, it is unclear whether the applicant would have a strong case against anyone using a black and white QR code with a cross-shape in its centre.

 

Picture on the right (c) by Dr Judit Banhidi