Bejewelled Eagle Head not a 3D trade mark, says EUIPO

 

By decision of 28 May 2024 (R 173/2024) the Board of Appeal of EUIPO (BoA) rejected a 3D trade mark for jewellery constituted by the representation of a bejewelled eagle.

Fact of the case

On February 8, 2023, Kurt Geiger Limited (the Applicant) applied for the registration of 3D trade mark no. 18833400, among the others, for classes 9 (downloadable virtual products, namely jewellery; downloadable virtual products, namely computer programs featuring jewellery; downloadable image and video files containing jewellery) and class 14 (jewellery and costume jewellery; cufflinks; key ring pendants; ornamental pins; scarf rings).

Here are some products of the Applicant.

On November 27, 2023, the examiner issued a decision rejecting the requested trade mark under Article 7(1)(e)(iii) and Article 7(1)(b) in conjunction with Article 7(2) of the EUTMR essentially on the basis that:

a) the mark is simply a combination of presentation features, with an upper view shape and a realistic flat lower surface with feathers, eyes, and beams, which consumers would perceive as typical of the products in question;

b) the shape does not significantly differ from common basic shapes used in commerce for these products and is merely a variant.

 

The Applicant appealed.

 

The decision

The BoA confirmed the contested decision by adding the following.

The evaluation of distinctive character involves considering the nature of the goods or services and the perception of the relevant public. For 3D trade marks, which often consist of the product’s shape, consumer perception is critical. Typically, consumers do not assume the origin of products based solely on shape unless it deviates significantly from industry norms. In the case of the bejewelled eagle head, the application was for virtual goods in Class 9 and physical jewellery in Class 14. Both class of products are meant for the general public and professionals, with varying degrees of attention depending on the product’s sophistication and price.

The BoA noted that the jewellery market is characterized by multiple shapes and designs, including animal representations (R 1414/2022, T-564/22; see The IPKat here, T-331/19). Therefore, the mere presence of an eagle head, even if bejewelled, is perceived as an aesthetic variation rather than a specific badge of origin.

Comment

The decision underlines the importance, particularly for 3D trade marks, of distinctive character intrinsic to the shape of the product itself. It serves as a reminder that, while creativity in design is valuable, it must also meet the legal criteria of distinctiveness to gain trade mark protection. Consequently, obtaining a  3D trade mark in the jewellery sector can be challenging.

In another recent decision of 9 April 2024 (R 2465/2023), the BoA rejected the registration of the following figurative trade mark for class 14:

The BoA made it clear that it is not possible to circumvent the 3D trade mark regime by filing a figurative trade mark application and clarified that, to overcome the absolute grounds for refusal, it would have been necessary to include additional graphic, word and/or colour components to confer the necessary distinctiveness to the sign applied for.

To address this challenge in the jewellery sector, especially when there is intense use in the market, secondary meaning is frequently relied upon. Nonetheless, it is important to recognize the significant difficulty involved in proving secondary meaning for a shape.

For example, back in 2014, Van Cleef & Arpels applied for the registration of the 3D trade mark in China for the well-known 3D graphics composed of four-leaf clover patterns.

At first instance, the Beijing Intellectual Property Court determined that the disputed trade mark was recognizable to ordinary consumers as merely the shape and model of the jewellery, rather than an indicator of its source. On appeal, the Beijing Higher People’s Court additionally noted that the widespread use of the four-leaf clover design in the jewellery industry has made it a common decorative element, thus diluting its ability to serve as a trade mark indicating the origin of the product.

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