EUIPO shoots down application to register virtual firearm as a trade mark

In a recent decision (R 275/2023-4), which is particularly meaningful to anyone wondering about trade mark protection in virtual worlds, the Fourth Board of Appeal (the Board) of the European Union Intellectual Property Office (EUIPO) found that the figurative representation of a virtual firearm lacked the requisite distinctive character to be a registered as a trade mark.

Background

Colt CZ Group SE (Colt) is a Czech holding company which in 2021 acquired Colt's Manufacturing Company LLC, the well-known American firearms manufacturer.

In February 2022, Colt filed an application (the Application) to register the following mark (the Mark) as a European Union trade mark (EUTM):

The classes applied for were classes 9, 35 and 41, primarily in respect of virtual goods and services providing online virtual firearms for virtual use. 

In December 2022, following several exchanges of correspondence with Colt, the examiner assigned to the Application (the Examiner) issued a decision rejecting the Application on the grounds that the Mark failed to satisfy the requirement of intrinsic distinctive character pursuant to Article 7(1)(b) of the EU Trade Mark Regulation 2017/0001 (EUTMR). 

The grounds given by the Examiner for rejecting the Application were, summarily, as follows: 

• The Mark is a faithful image of a (virtual) automatic firearm which does not depart significantly from how it can and is generally represented, and the relevant public would therefore simply perceive it as the representation of such an object, which is unable to convey the commercial communication of a trade mark. 
• The level of attention of the relevant consumer will be at an average to high level, as the widespread use of IT means it is likely that the goods and services in question would be used by persons without detailed individual knowledge of firearms. 
• The fact that the relevant public might be partly specialised, does not have an influence on the legal criteria used to assess distinctive character, nor does any prior use of the Mark affect its registrability. 
• Therefore the Mark is devoid of distinctive character. 

Colt consequently lodged an appeal to the Board. 

The Board's decision

Colt's grounds of appeal were, in summary:

• The Examiner did not take into account the specificities of the Application, namely that the Mark is an image of a weapon which deviates significantly from the normal representation of a firearm. The Mark shows the assault rifle 'CZ BREN 2', which has a complex shape which will be distinguishable by any consumers even slightly interested in weapons.  
• The overall appearance of the Mark gives it a unique appearance which will be obvious to the relevant consumer (which was incorrectly defined by the Examiner), and also contains the word element 'CZ BREN 2'.
• Although the virtual world is increasingly popular, the services and products applied for in the Application are not as widely accessible as the Examiner suggested, and the relevant public will be those interested in firearms or virtual firearms. 
• The fact that the shape of the 'CZ BREN 2' rifle is also registered as a Community Design is indicative of its individual character. 

The Board began by noting that 'distinctive character', for the purposes of Article 7(1)(b) EUTMR means that the mark applied for must 'serve to identify the goods or services for which registration is sought as originating from a particular undertaking and thus distinguishing the goods or services from those of other undertakings' (applying the decisions of the Court of Justice of the European Union (CJEU) in Torches, C-136/02,  Das Prinzip der Bequemlichkeit C-64/02, and others).

The 'distinctive character' of a Mark must be assessed first in light of the goods and services applied for, and secondly, in the perception of the relevant public (Vorsprung durch Technik, C-398/08). 

Relevant public

The Board addressed first whether the Examiner had correctly assessed the relevant public for the purposes of determining the Application. 

The Board considered that the relevant public for the goods and services in question is primarily the general public, and noted that the average consumer's level of attention varies according to the category of goods or services concerned (Mundipharma, T-256/04). Whereas it could not be excluded that some of the relevant public will include persons with a wider knowledge of weapons (and virtual weapons), it would not be appropriate the define the relevant public as being only that narrowly defined group. 

The Board considered this to be particularly the case given that, whereas the purchase of actual firearms is constrained by certain limiting factors (e.g. age restrictions), such factors did not necessarily apply to virtual products, making them much more widely accessible - particularly given the increasing availability of IT products. 

The Board therefore held that the relevant consumer for the goods and services in Classes 9, 35 and 41 applied for may not necessarily be a virtual weapon specialist, and the Examiner was correct in deciding that the level of attention of such consumers would be average to high. 

Distinctive character

As for the distinctive character of the Mark, the Board looked particularly at two elements of Colt's grounds of appeal, namely: (a) the fact that the Mark contained the verbal element 'CZ BREN 2'; and (b) Colt's contention that the Mark is a representation of a weapon but not a common/ordinary weapon. 

1. Verbal element 

The Board noted that whereas it is usually sufficient for a non-distinctive sign to contain distinctive verbal (and/or figurative) elements for the sign as a whole to be distinctive, this principle does not apply if those elements are negligible (CLIPPER, T-580/15). 

This applied to the present case, in which the verbal element 'CZ BREN 2' was a completely negligible element of the Mark given its size (taken into account within the context of the already miniature size of the Mark) and the lack of contrast between the verbal element and their background. the Board found that a significant proportion of the general public would not be able to identify the word element without significant effort, and (in accordance with settled case-law in respect of absolute refusals pursuant to Article 7(1)(b) EUTMR) it was not necessary to examine distinctiveness for other consumers within that same public. 

2. Visual representation 

As for the visual representation of the Mark, the Board found that Colt had 'not demonstrated in any way that it would not be a sign which, naturally and automatically, without any further thought, is a typical representation of a rifle, whether virtual or real, by consumers'. 

Following an assessment of the various elements of the Mark, the Board did not consider that the Mark departed in any significant way from the 'norms and customs of the relevant market sector' (which was the test established in Shape of chocolate box, T 440/13), and contained all of the essential elements which ordinary consumers might expect from a virtual firearm in the market. 

Kat thinking about guns on the interwebs... 

Conclusion

In concluding, the Board found that the Mark constituted a banal representation of the object which is the essence of the goods and services claimed for, and did not therefore put the relevant consumer public in a position to determine the commercial source of such goods and services. The Examiner's decision was therefore correct and Colt's appeal dismissed. 

Comment

This decision provides a helpful first insight into how the EUIPO might treat applications for virtual goods and services. It is particularly worth noting that, even though a particular product or service may be more niche in 'real life' (e.g. firearms), the relevant consumer for the virtual counterpart of such product or service is likely to be comprised of a wider pool with a lower level of attention / expertise.