[Guest post] 3D trade mark application refused due to lack of distinctiveness: Applicant must pull up stakes (tents) at EUIPO

The IPKat has received and is pleased to host the following guest contribution by Victoria Thüsing (Stockholm University) on a recent decision of the EUIPO Fifth Board of Appeal concerning an application to register, as a shape mark, the design of a tent. Here’s what Victoria writes:

3D trade mark application refused due to lack of distinctiveness: Applicant must pull up stakes (tents) at EUIPO

by Victoria Thüsing

On 4 January 2024, the Fifth Board of Appeal (BoA) ruled on the appeal R 1934/2023-5 concerning EU trade mark application No. 18 821 025 (only available in the original German version). Despite the applicant's argument that the shape mark had unique features and differed substantially from conventional shapes, the Board dismissed the appeal. In doing so, it upheld the decision of the EUIPO examiner who had refused the shape mark application for some of the goods on the basis that the mark lacked sufficient distinctiveness.

Let's take a closer look at the proceedings.

Application for 3D mark

In 2023, German company Winch Industry GmbH filed an application for a 3D trade mark for various goods in Class 22. The sign consists of a car roof tent from different perspectives, as shown below:

Objection and partial refusal

On the basis of Art. 7 (1) (b) EUTMR (lack of distinctive character), the EUIPO examiner objected to the application for part of the goods claimed.

However, the applicant maintained its application, submitting that the shape of the mark applied for would differ significantly from the basic shapes of tents in trade. Therefore, the public already recognised that the shape was special and associated it with a particular undertaking, so that the sign was inherently distinctive.

These arguments did not seem to convince the examiner. By decision of 12 July 2023, he refused the application on the ground that it was not distinctive in relation to the goods “Tarpaulins, awnings, tents, and unfitted coverings and liners; Tents [awnings] for vehicles; Tents [awnings] for caravans”.

Appeal

Two months later, the applicant filed an appeal against the examiner's decision and requested that the decision on the application be reversed.

The applicant maintained its previous arguments. The distinctiveness of the 3D mark would be derived from a number of features, in particular the shape of the upper part of the tent, the opening mechanism and the two side windows which protrude like the wings of an insect. In addition, conventional tents have typical shapes such as triangles, curves, tunnels, squares or pyramids when open. The unequal trapezoid of the sign was unique and therefore easily capable of indicating origin.

BoA decision: Confirmation of lack of (inherent) distinctiveness

The BoA upheld the examiner's decision.

First, the Board set out the substantive criteria for examination. Since the sign applied for appeared to blend in with the appearance of the respective products, the decisive factor was whether the shape deviated significantly from what is customary in the tent sector. The fact that such a 3D mark is not necessarily perceived by the average consumer in the same way as a word or figurative mark consisting of a sign independent of the appearance of the claimed goods also had to be taken into account. In the absence of graphic or word elements, the average consumer will not, in general, readily deduce the origin of the goods from their shape.

Applying that standard, the Board concluded that the general public would not perceive the sign as an indication of origin for the disputed goods. Contrary to the applicant's argument, the sign does not deviate significantly from what is customary for tents. Rather, it would be perceived by the public merely as a variant of the shapes of the claimed goods.

Camping inside
a registered trade mark or mere tent?

In particular, the features highlighted by the applicant could only be regarded as functional elements of tents and not as an indication of origin. The sign as a whole is a combination of various design elements common to tents and their components.

In the overall impression, that combination is not sufficiently striking either to be remembered as an indication of origin. Any differences between the sign applied for and the shapes commonly used for car roof tents were limited to minor or not easily perceptible details which could not have a decisive impact on the assessment.

The Board was also not convinced by the argument concerning the particular shape of an unequal trapezoid. In view of the large number of tent shapes and variants available, the relevant public would not perceive minor geometric differences such as those in a trapezoidal tent as an indication of origin compared to an unequal trapezoidal tent. Similarly, the consumer would not understand the windows protruding as insect wings and would not see this as an indication of origin.

In relation to “tarpaulins and awnings”, the Board found them to be used as components of tents and that the sign applied for could therefore also be used for parts of those tents. Consequently, the sign is not distinctive for those goods.

Comment

In my view, the BoA was right to uphold the decision of the EUIPO examiner.

The applicant argued that the examiner had not shown the elements of the sign applied for to be identical to car roof tents commonly found on the market. However, identity is not necessary to exclude distinctiveness. As the examiner and the Board rightly observed, the similarity between the sign applied for and the common shape is already sufficient to rule out distinctiveness. Inherent distinctiveness only subsists if the sign represents a significant departure from the norm, which cannot plausibly be assumed in the present case.

In this context, it is worth recalling the cases decided not too long ago concerning the registration of the Birkenstock sole pattern (GC, T-365/20) and the shape of the Moon Boot (GC, T-483/20), and – more recently – the Prada triangle pattern (R 827/2023-2). In all these cases, the trade mark applications were refused because they were not sufficiently different from the relevant industry standard.

In the present case, the use of word or figurative elements in the shape mark would probably have had a positive effect on the assessment of distinctiveness. For example, the applicant could have added to the sign applied for the word/figurative mark under which the goods are sold, as is the case with the actual product.