Shape of a teddy bear registerable for jewellery?

What do you see when you look at this picture?

 

Whatever comes to your mind, is it a distinctive sign for jewellery? This is the question at the heart of the General Court’s judgment in Apart v EUIPO - S. Tous (Représentation d'un ours) (T-591/21).

Background

In 2009, S. Tous, SL (‘Tous’) filed for EU trade mark no. 8127128 for the figurative sign depicted above. It registered in 2010, inter alia for jewellery in class 14.

In 2017, Apart sp. z o.o. (‘Apart’), filed an application for a declaration of invalidity of Tous’ EU trade mark, arguing, among other things, that it lacks distinctiveness (Art. 7(1)(b) CTMR, now Art. 7(1)(b) EUTMR) and that it is a sign consisting exclusively of a shape that gives substantial value to the goods (Art. 7(1)(e)(iii) CTMR, now Art. 7(1)(e)(iii) EUTMR).

The Cancellation Division as well as the Board of Appeal of EUIPO (BoA) rejected Apart’s application. Apart appealed to the General Court.

The General Court’s decision

The General Court dismissed the appeal.

1. Distinctiveness (Art. 7(1)(b) CTMR, now Art. 7(1)(b) EUTMR)

In order to assess the distinctive character, the Court discussed how the sign is perceived by consumers. It conceded that jewellery can take the form of the contested trade mark. Therefore, the BoA applied the case law on signs consisting of the shape of a product, may they be two- or three-dimensional. According to this case law, the relevant public’s perception is not necessarily the same in the case of a two- or three-dimensional mark consisting of the shape of the product itself as it is in the case of a word or figurative mark consisting of a sign, which is independent from the appearance of the product. Average consumers are not in the habit of making assumptions regarding the origin of products on the basis of their shape. The more closely the sign resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of distinctive character. Only a mark, which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, has distinctive character.

The General Court remarked that the fact that items of jewellery may take the shape of a teddy bear is not sufficient to hold that the contested mark consists of a two-dimensional representation of the shape of the goods at issue. This would preclude any other use of the sign as a figurative mark, e.g., on packaging, labels or other advertising material in order to enable consumers to identify the commercial origin of the goods.

Therefore, the General Court held that the BoA’s finding that the contested mark is a figurative mark consisting of the two-dimensional representation of the goods at issue, resulting in the application of the case law referred to above, is erroneous. However, this mistake did not lead to the annulment of the BoA’s decision because the General Court found that it was correct to hold that the contested trade mark had distinctive character.

According to the judges, the contested mark could be interpreted as representing the outline of a teddy bear but also as a fantasy figure. The sign is merely evocative of the silhouette of a teddy bear and it will not necessarily be perceived as such by all consumers. The subtlety of the outline requires some imagination or fantasy in order to associate it with the figure of a teddy bear. Furthermore, the shape of a teddy bear does not, according to the Court, have a connection with items of jewellery.

The General Court turned to the assessment of distinctiveness. The judges held that jewellery covers a broad range of goods such as rings, earrings, necklaces or bracelets, that their appearance and stylisation may vary significantly and that a teddy bear or a fantasy figure has no connection with items of jewellery. The relevant public will not associate the motif of a bear with items such as rings, earrings, necklaces or bracelets. Rather, the shape of a teddy bear relates to toys for children, and it cannot, said the Court, be associated by consumers with jewellery.

2. Substantial value to the goods (Art. 7(1)(e)(iii) CTMR, now Art. 7(1)(e)(iii) EUTMR)

The General Court held that the contested mark does not represent a sign, which consists exclusively of the shape of the goods. Referring to its reasoning in the assessment of distinctiveness, the Court found that items of jewellery do not to take the shape of a bear. The judges concluded:

Consequently, the contested mark consists of a sign unrelated to the appearance of the goods it covers and not of a sign which consists exclusively of the shape of those goods.

Comment

The reasoning and the result of this decision seem debatable.

On the issue of distinctiveness, it is unclear why the case law on product shape marks should not apply, just because Tous’ trade mark can be used on packaging etc. This argument applies to potentially all two-dimensional signs, which show (a part of) the shape of the product. This has never stopped the General Court from applying the case law on product shape marks. One such example is Birkenstock’s application for the sign

for various fashion items in classes 18 and 25. It was rejected because it could be perceived as a surface pattern of the goods (T-579/14, discussed here). Should this trade mark not be registerable because it could be used on the packaging of the goods as an indicator of origin? The same question can be raised for the figurative marks from Pierre Balmain:

(T-331/19)

(T-332/19)

Could they not all be used as figurative marks separate from the shape of the goods, e.g., on labels, packaging or invoices? Would these uses not be practically significant in the meaning of the CJEU’s judgment Deutsches Patent- und Markenamt (#darferdas?) (discussed here). And if they are, what is the consequence? The #darferdas decision explicitly only answers the question, which uses may be taken into account in the assessment of distinctiveness but not the consequence in case some of the forms of use would be perceived as distinctive and some not. Do consumers have to perceive all forms of uses as distinctive? Or would it be sufficient to accept distinctiveness if one of the relevant forms of use could be perceived as distinctive?

Interestingly, in a parallel decision in case T-638/21, the General Court applied the case law on product shape marks to Tous’ following sign for ‘jewellery’ (at paras. 119 et seqq.):

Further, the fact that not all consumers might perceive the contested mark as the outline of a bear seems irrelevant given that an absolute ground of refusal applies if a non-negligible part of the public perceives the sign as non-distinctive (e.g. T-26/20 at para. 42).

It is also not easily understandable why the shape of a teddy bear supposedly has no connection to jewellery. An internet search for lockets and bears produces countless examples of lockets in the shape of a bear. Likewise, rings can have teddy bears as a motif. This was certainly also the case in 2009 when the contested mark was filed. How much more connection or what type of connection is necessary between the shape and the good for Art. 7(1)(b) EUTMR to apply?

The fact that the term ‘jewellery’ covers different goods does also not appear to be convincing in light of established case law holding that if a sign is non-distinctive for certain goods (e.g. lockets and rings), it is also non-distinctive for the broader category in which such goods fall (e.g. jewellery).

On the question whether the sign consists exclusively of a shape giving substantial value to the goods, it appears contradictory to state, in the beginning of the decision, that jewellery can take the form of the contested trade mark but to reject the application of Art. 7(1)(e)(iii) CTMR because “the contested mark consists of a sign unrelated to the appearance of the goods it covers”.

Finally, the simplicity of a sign (here a mere silhouette) has not prevented EUIPO and the EU courts from interpreting similar signs and rejecting them on absolute grounds. Quite famous in this respect are the decisions on the trade marks 

 

 

and 

 

 

 

(see here and here). They have been found to represent knife handles.