Samsonite fails in getting 3D EU trade mark registration for tablet cases due to lack of distinctiveness

Kids these days are savvy: being used to iPads and iPhones, just throwing a book into their laps and expecting them to be entertained might not always do the trick. Kids demand a lot from the products they use and love and this also applies to … iPad/tablet cases.

The quest for practical and entertaining cases often raises various dilemmas with companies: they are forced to come up with new and quirky solutions in an ever-growing competitive market where children are also in focus. In all this, it is no surprise that new and quirky designs require effective IP protection to retain their goodwill and reputation, as well as competitive advantage.

All the above was probably at the basis of an attempt, on the side of luggage manufacturer Samsonite, to obtain a 3D EU trade mark (EUTM) registration for the shape of the tablet case pictured below. 

Unfortunately for this American company, things did not play out in its favour.

In 2019, Samsonite indeed attempted to register the shape of an iPad/tablet case as an EUTM. After an unsuccessful attempt with the EUIPO examination division and a subsequent appeal to the EUIPO Second Board of Appeal (the board), earlier this summer this held (Speculative Product Design LLC V EUIPO, R 503/2021-2), among other things, that the mark was devoid of any distinctive character. This was because the shape at hand did not depart sufficiently and even less so ‘significantly’ from the norm and customs of the relevant sector.

The decision is interesting since it highlights (once again) the difficulties in surfing on current technological trends as well as the difficulties that unconventional trade marks present.

Background

In 2019, Samsonite IP Holdings (the applicant) sought to register the following 3D mark as an EUTM:

Registration would concern goods in Class 9 (cases for laptops, tablets, and smartphones) of the Nice Classification.

In 2019, the EUIPO examiner issued a refusal in respect of all the goods, considering that the mark did not depart significantly from the norms and customs of the relevant sector, pursuant to Article 7(1)(b) of Regulation 2017/1001 (EUTMR).

The applicant maintained its request for registration. Following an exchange of communications between the Office and the applicant, in March 2021, the application was refused again, pursuant to Articles 7(1)(e)(ii) and 7(2) EUTMR. In particular, the most important elements of the sign, constituting its essential characteristics, were all functional and all of the essential elements of the shape of the mark (and thereby the shape of the mark as a whole) were necessary to obtain a technical result.

The applicant subsequently appealed to the EUIPO Second Board of Appeal. The analysis that follows below concerns only the aspect related to the distinctive character pursuant to Article 7(1)(b) EUTMR, since the board dismissed the appeal by only undertaking (lack of) distinctiveness considerations.

The board’s decision

According to settled case law, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details.

In the board’s prior communication, the Rapporteur observed that the evidence submitted by the applicant showed a variety of shapes for tablet cases. Some of them, apart from the rectangular space that is required for a tablet to fit in, also had additional decorative elements, such as ears, eyes, and handles and supports or stands that may resemble legs:

The examples demonstrated a diversity of designs for cases for electronic devices with touch screens such as tablets. These had been circulating on the market since, at least, 2017.

The board highlighted two products, namely:

and

The two products above shared similar characteristics with the applicant’s mark and they also had a quirky and eccentric designs which resembled a cartoon figure, the addition of arms as lateral handles, and legs for standing.

The applicant claimed that its 3D shape would be perceived by children as a ‘mini friend’ or ‘companion’. However, it was not clear why such a perception could not be also created in relation to the above two examples.

The board then proceeded to provide further examples to discuss the wide variety of shapes of cases for electronic devices with touch screens (for kids) which are available on the market. In turn, these numerous examples showed that consumers would be accustomed to seeing products with characteristics such as legs and arms.

The board then referred to various Registered Community Designs for cases concerning tables which also showed that there are numerous variations, already protected under design rights.

According to the board, the examples taken together show that the products were put on the market before the filing of the applicant’s mark. Even if it was assumed that the public would pay greater attention to the aesthetic details in the applicant’s mark, that fact in itself did not automatically imply that the public would perceive it as functioning as a badge of origin.

The applicant attempted to argue that the only cases that were identified by the Rapporteur as being similar in appearance intended to ride on the coattails of the reputation enjoyed by the applicant’s mark.

However, the board noted that the fact that similar or identical shapes in the marked could represent counterfeits of the shape of the applicant’s mark was irrelevant to the question of how the public would perceive the shape. Additionally, it would be irrelevant whether or to what extent other competitors already use identical or similar cases for electronic devices. The assessment of the registrability of a sign does not depend on whether and to what extent the same or a similar sign is used on the market.

As regards the ‘arms’ and ‘legs’ in the applicant’s sign, the board noted that these features had the function of allowing children to hold the device or to stand freely. They are functional in nature and purpose, and they would be associated by the target consumer merely with that specific function and not as an indicator of origin.

Taken as a whole, the applicant’s mark did not depart sufficiently and even less so ‘significantly’ from the norm and customs of the relevant sector. The differences between the shape in the present case and the shapes that already existed on the market had the consequence that the applicant’s shape would simply be regarded as a variant of the geometrical filter shapes.

The board therefore considered that the applicant’s sign was devoid of distinctive character.

Comment

The present case confirms once again a well-known fact [also discussed earlier this summer in this Katpost here]: the registration of shape marks as EU trade marks remains challenging for companies and the “significant departure” test a difficult one to pass.