Tangfastic news! EUIPO rules on distinctiveness of gummy bears (R 872/2023-4)

In a recent decision (R 872/2023-4), which is reassuring for rightsholders in 2D and 3D figurative marks, the Fourth Board of Appeal (the Board) of the European Union Intellectual Property Office (EUIPO) found that the figurative mark consisting of an image of a gummy bear met the minimum degree of distinctive character required for it to be protected as a trade mark in the EU.

Background

Rigo Trading S.A. (Rigo) is the Luxembourg-based IP holding company for the HARIBO group of companies, responsible for delicious treats such as Tangfastics and Starmix, which have powered this Kat through many a day of IP law advising. 

In October 2021, Rigo filed an application (the Application) for an International Registration (IR) pursuant to the Madrid Protocol in respect of the following figurative mark (the Mark) for a wide variety of goods and services, including classes 9, 14, 16, 28, 20, 21, 24, 25, 26, 27 and 28:

The 'home' territory for the Application was Benelux, with a number of other designated territories, including the EU, the US, the UK, Germany, Canada, Japan and others. 

In June 2022, the examiner assigned to the Application's designation for the EU (the Examiner) issued a provisional partial refusal of the Application, on the grounds that the Mark was ineligible for registration, pursuant to Article 7(1)(b) of the EU Trade Mark Regulation 2017/0001 (EUTMR), because it was devoid of distinctive character for a large part of the goods applied for, namely those in classes 9, 14, 16, 18, 20, 21, 24, 25, 26, 27 and 28. 

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

• The appearance of the Mark does not depart significantly from the norm or customs of the relevant sector and the consumer normally pays more attention to a label or name of a product than to its shape, packaging or decorative elements; and
• The true to life portrayal of a gummy bear is commonly used for decorative, artistic or aesthetic purposes, and therefore the Mark is merely a variation of decorative elements/packing commonly used for the goods/services applied for.

To illustrate its reasoning, the Examiner made reference to several practical examples other gummy bear shaped/decorated products within the same classes as those applied for - including the following in respect of classes 9 (phone case), 14 (jewellery) and 25 (slightly terrifying inflatable costumes): 

Despite Rigo maintaining its request for designation despite the Examiner's provisional refusal (putting forward further arguments and claiming acquired distinctiveness), the Examiner issued a decision in April 2023 reiterating its partial refusal of the Application, supplementing its rationale with the following points: 

• the relevant consumers' level of attention is average;
• the categories of goods refused are those whose shape or packaging can commonly be extended to shape of a gummy bear, or to include the depiction of a gummy bear. The opposite applies for the goods allowed - e.g. brief cases in class 18, which do not usually contain the depiction of a gummy bear as they are directed as professionals, and watch chains in class 14, which do not have the necessary surface to attach a decorative motif;  
• the unique features of the Mark will not be perceived as unusual in comparison with other gummy bears on the market; and 
• the fact that the Mark was not applied for in respect of gummy bears does not, per se, make it distinctive. 

Further, the Examiner considered that the fact the Mark had registered in the Benelux was irrelevant. Rigo appealed.

The Board's decision

Rigo's grounds of appeal were, in summary:

• The Mark is purely figurative, and purely figurative marks can only be found to be non-distinctive in exceptional cases - e.g. where they depict simple geometric devices or commonplace symbols; 
• The Mark is characterised by a number of distinctive elements which set it apart from gummy bear sweets from competitors which try to imitate the round appearance of a real bear; 
• The internet examples provided by the Examiner did not refer to the iconic HARIBO Goldbear device, which was invented by HARIBO in 1978;
• There are a number of EUTMs showing the depiction of a stylised animal or geometric shape, including the outlines of various guitar shapes, the Snapchat ghost, and the shape of an Oreo cookie;  
• Further, it is common for the depiction of an animal to be used as a source identifier on products - including, for example, the Lacoste crocodile. 

Article 7(1)(b) EUTMR

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 applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings' (Vorsprung durch Technik, C-398/08 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. In respect of the relevant public, the Board agreed with the Examiner that the goods applied for were directed at the average consumer with an average degree of attention. 

Further, because the Mark is a figurative sign without any word elements, the perception of the public in the entire EU territory must be considered (Glaverbel, T-141/06).

Distinctive character of the Mark

The Board noted that average consumers do not typically see the shape of goods or their packaging as denoting their origin in the absence of any graphic or word elements, and it is therefore more difficult to establish distinctiveness for three-dimensional marks (Bonbonverpackung, C-25/05 P). The more closely the mark applied for resembles the likely shape of the product applied for, the less likely it is that it will meet the threshold of distinctive character. 

In respect of the Mark, however, the Board found that the goods applied for could be found in a variety of shapes, and it could not be established that - simply because some of such goods may take the shape of a gummy bear - that the relevant public would associate the motif of a gummy bear with these goods, as they are totally unrelated (DEVICE OF THE OUTLINE OF A BEAR, T-591/21). 

Further the Board found that the public would know that gummy bears are generally not larger than 2cm (apparently this is for ease of consumption), which is smaller than most of the contested goods, and made of gum or gelatin, substances which one would not normally associate with items such as jewellery, mirrors or hair pins. 

Candy worth getting scratched for..?

Photo: Mike Mekinda

The examples provided by the Examiner of gummy bears being used decoratively on products, did not mean that the Mark could not also act a source identifier, as established by the General Court in Cross on the side of a Sports Shoe (T-117/21). 

Since the Mark does not resemble the shape the contested goods are most likely to take, nor is the representation of a gummy bear commonly featured on such goods (which were entirely unrelated to confectionery), it had to be held that the Mark did have at least the minimum degree of distinctive character to be protected as an EUTM. The appeal therefore succeeded.  

Comment

In this Kat's view, the Board's decision was the right one, as it is a long-established principle that marks can serve a dual purpose as decorative elements and source identifiers. It would be also be a slightly surprising outcome for certain figurative signs to be considered as completely devoid of distinctive character simply because similar signs have, at times, been used as the shape of, or to decorate products which are entirely different to that depicted in the sign.