EUIPO Board of Appeal holds numeric pattern insufficiently distinctive to be a trade mark

In a decision issued earlier this month, the EUIPO First Board of Appeal (the Board) held that a mark comprising of the sequence of numbers from 0 to 23 could not be registered as an EU trade mark (EUTM), since it would be perceived as a listing of the product or an article number. The decision, which concerned Maison Margiela’s Magic Numbers, confirms that a pattern – whether numerical or something else – must be capable of indicating the commercial origin of the goods and/or services in question in order to be eligible for trade mark registration.

Background

In 2021, famous French luxury fashion house, Maison Margiela (the Applicant), applied to register the following figurative mark as an EUTM:

The application concerned goods and services in Classes 4 (candles), 11 (lighting apparatus and air fresheners), 21 (household utensils and containers), and 35 (retail and wholesale services in connection with: bleaching preparations and other substances for laundry use, perfumery products, hair spray, shampoos etc) of the Nice Classification.

In 2022, the EUIPO Examiner refused the application in its entirety and maintained that the application lacked distinctive character pursuant to Article 7(1)(b) of Regulation 2017/1001 (EUTMR). This was because the relevant consumers would perceive the mark as a listing of the product or an article number sold by the Applicant, not as something indicative of commercial origin.

The Applicant appealed to the Board. It argued, amongst other things, that according to case law, signs composed exclusively of numerals with no graphic modifications may be registered as trade marks.

The Board’s decision

The Board considered that the sequence of numbers from 0 to 23, in three lines when applied to the goods and services for which protection was sought, would not easily and instantly be recalled by the relevant public as a distinctive sign. Instead, it would be most likely perceived by the relevant public as one (or three) non-distinctive sequence(s) of numbers.

Moreover, unlike when ordering a product by reference to a specific product number or referring to a company for administrative purposes, the relevant public would not pronounce the full sequence(s) of numbers of the sign applied for, e.g., when orally recommending or advertising the goods or services at issue.

The fact that the relevant public is not used to seeing long sequences of numbers as a badge of commercial origin could not be an argument in favour of distinctiveness; consumers are used to seeing long sequences of numbers on internal code tags on goods, and on invoices, letter heads and catalogues, which do not serve to provide any information as to the commercial origin of the goods and services, but would be merely perceived as some internal tagging of the goods or administrative code for the undertaking providing the services.

The Board therefore concluded that the applicant’s mark would be devoid of any distinctive character pursuant to Article 7(1)(b) EUTMR.

Comment

The Board essentially confirmed that a sequence of numbers, in general, has no characteristic element or any memorable eye-catching feature which is likely to confer a minimum degree of distinctive character to be registered as an EUTM.

From a fashion law perspective, the decision indicates that marks comprising of patterns, in order to be regarded as distinctive, must contain some memorable or eye-catching feature to enable consumers to perceive it as anything other than a mere decorative element, or as in the present case, a mere internal tagging of the goods or administrative code.

Furthermore, EUTM applicants and designers must keep in mind that the complexity and fancifulness of the pattern may also be insufficient to establish distinctiveness. Instead, what matters is that the pattern is capable of indicating the commercial origin of the goods and/or services in question. This is usually demonstrated when the pattern at issue is a significant departure from the norm or customs of the sector. As seen recently in a case concerning Louis Vuitton’s Damier Azur pattern [IPKat here], also proving acquired distinctiveness is by no means straightforward.