Heart bread roll not distinctive enough, says EUIPO Board of Appeal

 

With decision of 6 July 2023 (original German text and English machine translation) the Board of Appeal of the EUIPO (BoA) stated that a 3D trade mark described as a “heart-based bread roll” is devoid of the necessary minimum degree of distinctive character.

Background

A German company (applicant) obtained in 2003 the registration of the 3D trade mark No. 002262327 representing a bread with a heart drawn on the top in relation to class 30 (bread, including bread rolls). The applicant claimed the light brown colour and the seniority of its German trade mark registration dating back to 2000. In 2020, a competitor bakery filed a nullity action. The nullity action was successful and the trade mark registration was cancelled due to several reasons. The applicant appealed the decision.

The decision

The BoA confirmed the decision by the Cancellation Division on the following grounds.

1) Examination standard to be applied

The BoA recalled the case law concerning 3D trade marks consisting of the appearance of the product itself (T 360-12, C-26/17 P). Since average consumers are not in the habit of making assumptions about the origin of products based on their shape or the shape of their packaging in the absence of any graphic or word element, it is more difficult to establish distinctive character in relation to 3D trade marks (C 456/01‑P, C 457/01, C 345/10‑P). According to the cited case law “only a mark that departs from the norm and customs of the sector” can be considered distinctive according to Article 7(1)(b) of the EUTMR.

2) Relevant public

As the goods are edible goods, the BoA referred to the general public that purchases this kind of foodstuff quickly and without paying a high level of attention.

3) (lack of) Distinctive character

Since the object of the 3D trade mark is a round, light bread roll with a heart-shaped decoration pressed in the middle and is known among the relevant public (limited to Germany, according to the evidence filed by the parties). Round wheat rolls of light colour are to be considered well known before 2001, while the heart symbol usually serves as an expression of affection and attachment, or a symbol of consent or enthusiasm. The heart is a simple geometric shape, usually devoid of any distinctive character (T 304/05 P,  T 499/09, T 159/10) and it is used on festive occasions of all kinds to express emotion and has a laudatory/promotional effect (T-658/20). The use of a heart in the bakery industry is customary in the market too.

Finally, the fact that there was no evidence of disclosure of similar bread prior to the filing of the trade mark application is not sufficient to justify distinctiveness.

Comment

This decision is a useful reminder that a 3D trade mark is likely to fulfil its original essential function as a badge of origin only if the sign at issue deviates, in a significant way, from the norm and customs of the sector. This decision also shows, once again, the difficulty of protecting 3D signs as trade marks. Protection of the shape of the product has been recently discussed, with regard to functionality, also in recent decisions of the Italian Supreme Court in the Tic Tac case (see the IPKat here) and the General Court (see the IPKat here).