Volkswagen is a happy camper as BoA upholds its EU trade mark opposition

3D trade marks are always a topic of interest, with some proprietors despairing as to whether trade mark law will provide them with any practical protection. The recent decision of the EUIPO’s Board of Appeal may provide some comfort.

In its decision, the BoA considered whether two 3D trade marks could block an application for a figurative mark containing a similar representation of one of the perspectives. Ultimately, it decided that they could, disagreeing with the EUIPO’s Opposition Division [Opposition Division decision here, BoA decision here].

Background

On 27th September 2019, European Flipper / Pinball Factory GmbH applied to register the following logo as an EU trade mark:



The application covered the following goods and services and was published for opposition on 3rd October 2019:

Class 11: Camping stoves.

Class 12: Camping cars; Mobile homes [caravans]; Camper vans; Camping vehicles.

Class 20: Furniture for camping; Camp beds; Camping tables; Camping mattresses; Metal furniture and furniture for camping.

Class 21: Camping grills.

Class 39: Rental of recreational vehicles.

On 3rd January 2020, Volkswagen Aktiengesellschaft filed an opposition against Pinball’s application for all of the goods and services applied for, claiming a likelihood of confusion with:

1. Its EUTM Registration No. 10511591 for the 3D mark below, covering goods and services in Classes 12, 16, 35, 37, 39, and 41:



2. EU Designation of International Registration No. 922784 for the 3D mark below covering goods and services in Classes 12, 14, 16, 18, 20, 21, 25, 28, 30, 35, and 37:



Volkswagen submitted that its marks enjoy a high degree of recognition within the relevant public in connection with, at least, vehicles in Class 12. As evidence, it submitted a Wikipedia article about the Volkswagen Type 2.

At first instance, the EUIPO’s Opposition Division rejected the opposition in its entirety. It found that the goods and services applied for were identical (or similar, depending on the class) to the various goods and services covered by Volkswagen’s earlier marks, but that the marks had a low degree of visual similarity and an average degree of conceptual similarity (aural similarity being omitted as it was not possible to compare the marks aurally). Nonetheless, it ruled that the similarities between the marks were insufficient to lead to a likelihood of confusion, and that, for the non-English-speaking public, the ‘Cultcamper’ element in Pinball’s mark would differentiate it from the Volkswagen marks.

Volkswagen filed an appeal on 1st April 2021. Pinball did not file any observations in reply.

The BoA’s Decision

Volkswagen submitted that the Opposition Division had erred in its assessment of the marks. It claimed that the ‘Cultcamper’ element in Pinball’s mark expressly referred to its ‘Bulli’ campers (paragraph 11), meaning that the term would be descriptive and explicitly linked to its own vehicles. Volkswagen argued, therefore, that the figurative elements were the dominant parts of the marks. It also claimed that Pinball’s mark adopted the front view of the Volkswagen mark, “cop[ying] it in an identical manner”, noting that “[t]he location of the famous VWlogo is chosen to position the peace-sign – a simple substitution of one circular logo by another.”

The BoA agreed. It found that the Opposition Division had erred in its assessment of the distinctive character of Volkswagen’s marks. The BoA held that the Opposition Division should have considered the perspectives individually, rather than collectively, and emphasised that a 3D trade mark should be deemed to lack distinctive character only “if it does not depart significantly from the norms and customs of the sector concerned” (paragraph 25). The BoA noted that the Opposition Division did not state this to be the case here, nor had Pinball filed any arguments in this respect. In contrast, the BoA found Volkswagen’s marks to be distinctive, “because the front of the van is characterized by a divided windshield and the curved V-shape on the bonnet with the circular headlights on each side” (paragraph 26).

The BoA further held that the figurative and word elements in Pinball’s mark were “(visually) co-dominant” (paragraph 28), and that the front view of Volkswagen’s marks was “almost identically reproduced in the figurative element of the contested sign” with the differences residing in “the small peace symbol, which is hardly noticeable, and the colour in the contested sign” (paragraph 29). Disagreeing with the Opposition Division that there was merely a low degree of similarity, and taking into account the principle of imperfect recollection, the BoA concluded that the marks were visually similar.

As such, the BoA held that there was a likelihood of confusion, opining that:

“faced with the image of the mark applied for, the relevant English-speaking public in the EU will perceive that mark as another version of the earlier marks, rather than as a separate trade mark with a different commercial origin” (paragraph 39).

Comment

This case demonstrates that it is possible to rely on 3D marks in an opposition context. Interestingly, the BoA conducted the assessment on the basis of inherent distinctiveness alone. This indicates that the “norms of the sector” test is still at the forefront of the court’s mind, providing proprietors with some hope for enforcement and the possibility of successfully riding off into the sunset...



Picture on top middle is by Riana Harvey, who grants permission for its use.

Pictures of marks are in the public domain.

Picture on lower middle is by Francis Helminski and is licensed under the Creative Commons Attribution-Share Alike 4.0 International license.