Position mark consisting of grey tread and outer portion of a tyre devoid of distinctive character for tyres, says EUIPO Board of Appeal

Adding to the increasingly abundant case law on unconventional EU trade marks (EUTMs), in the following decision (Case R 197/2021-5) from August this year, the EUIPO Fifth Board of Appeal found that the position mark below, comprising of a tread and outer portion of a tyre in light grey, could not be registered as an EUTM for goods in class 12 due to lack of distinctive character:

The mark applied for was described as follows: “The trade mark comprises the tread and outer portion of a tyre in colour light grey ("Pantone 7527 C") depicted in the area outside the outer broken line, as shown in the attached representation.”

The Board reasoned that, having regard to the multitude of wheels with a light grey exterior available on the market, (i) a single colour like the one of the mark applied for and (ii) the technical function of the tread and outer portion in light grey, would fail to render the sign at issue something that the average consumer would consider as an indicator of commercial origin. As such, the prohibition of Article 7(1)(b) of Regulation 2017/1001 (EUTMR) would apply.

Background

In 2020, Blake Holdings LLC (the applicant) sought to register the above unconventional mark comprising of the tread and outer portion of a tyre in light grey, as an EUTM for goods in class 12.

In 2021, the EUIPO Examiner issued a refusal in respect of all the goods by considering that the mark would not depart significantly from the norms and customs of the relevant sector, pursuant to Article 7(1)(b) EUTMR.

In response, the applicant requested to restrict its goods in Class 12 so that they would comprise of “Off road tires used with construction, industrial and agricultural equipment; none of the aforesaid being off road tires for forklift trucks”.

All this was not enough, as the Office refused to register the mark, stating that it would lack distinctiveness. It was also considered that the absolute ground concerning technical functionality (Article 7(1)(e)(ii) EUTMR) would render the mark unregistrable as well.

At this point, the applicant appealed to the EUIPO 5th Board of Appeal.

The board’s decision

Article 7(1)(b) of the EUTMR

Even though the standard of distinctiveness is the same for all types of marks, for less conventional signs the test is that a sign shall be distinctive only if it departs significantly from the norm or customs of the relevant sector. This is necessary so that the relevant public could recognise the sign applied for as originating from a particular undertaking and thus distinguish the applicant’s goods from those of other undertakings. This benchmark also applies to signs which are only applicable to a component or an element of the appearance of the product, in the case at hand the tread and outer portion of a tyre (T-390/06, Pallet, EU:T:2008:427).

i) Relevant public and degree of attention

The board observed that the goods were mainly aimed at a professional public displaying a high level of attention. In addition, the board also considered that even the non-professional public would display a rather high level of attention, as buying a new set of tyres is an important decision because it makes a significant impact on the overall handling and performance of one’s own vehicle.

ii) Distinctiveness

The main ground of appeal was that the Examiner had allegedly failed to establish a norm in relation to the appearance of the relevant goods. Therefore, having regard to the relevant goods, the board considered that consumers would not perceive the sign as a trade mark. This was because, first, despite the fact that the Examiner put forth examples of tyres having identical tread and outer portion, it was not required to do so, but merely examine whether the sector concerned was characterised by a significant variety of appearances.

Secondly, as to the light grey colour of the tread and outer portion of a tyre, it was true, as the applicant argued, that the criteria applied to colour marks should not be stricter than those applied to any other category of signs. However, the perception of the public is not the same as in the case of word marks, and the public will not instantly perceive a single colour, or a coloured element which forms part of the external appearance of the goods as a reference to the commercial origin of the goods. Therefore, in light of the internet searches that were carried out by the Examiner, both the claimed light grey colour and its particular position on the tread and outer portion of the off road tyre were far from being ‘distinct’ or unique. Taken as a whole, they would be perceived only as variants of similar part of off road tyres existing on the market.

The board then further recalled that the difference between the sign applied for and the norms or customs of the sector must be significant. In this sense, a feature displayed in a sign which was functional cannot confer distinctiveness on that mark. Since the tread and outer portion of a tyre in light grey could also be seen as having a certain functionality, i.e., not to leave black marks on floors during operations, it could not be considered as departing significantly from the appearance of tyres already found on the market.

Since the applicant’s mark fell within the prohibition of Article 7(1)(b) of the EUTMR, there was no need to assess whether the other grounds for refusal mentioned in Article 7(1)(e)(ii) EUTMR also applicable in the present case. The appeal was therefore dismissed.

Comment

Position marks are marks consisting of the specific way in which a mark is placed on or affixed to the goods. The present decision confirms that, in practice, a finding of distinctiveness may be indeed difficult to achieve. On the point of colours, the decision also confirms that potential applicants must bear in mind that (i) a single colour does not necessarily serve to reference a particular commercial origin and that (ii) certain colours can be considered commonplace in the reference sector (see of instance T-547/08, Strumpf, EU:T:2010:235).