EUIPO rules in favour of Mercedes-Benz in radiator grille EUTM appeal (R 2316/2024-1)

A recent decision of the First Board of Appeal (the Board) of the EU Intellectual Property Office (EUIPO) found that a sign depicting a radiator grille was sufficiently distinctive to be registered as a trade mark in the EU. 

Background

In 2023, Mercedes-Benz (Mercedes), the well known car manufacturer, applied (the Application) to register the following figurative mark (the Mark) as a European Union trade mark (EUTM) in Class 12 (including "radiator grills of metal for vehicles") and Class 28 (toys and games): 

The Application was partially refused by the EUIPO examiner, who found that the Mark lacked distinctive character in relation to the radiator grilles in Class 12, and therefore fell foul of Article 7(1)(b) of the European Union Trade Mark Regulation (EUTMR).

The examiner considered that the sign merely depicted the appearance of the product in question and did not depart significantly from common radiator grille designs in the automotive sector. As such, it was unlikely to be perceived by the relevant public as an indication of commercial origin.

Mercedes appealed on the following grounds: 

1. The relevant public for vehicle parts (particularly professionals and vehicle enthusiasts) pays a high degree of attention and is accustomed to recognising brand origin through design elements.
2. Previous case law (notably T-128/01, 6/3/2003 on radiator grilles and T-260/23, 26/6/2024 on headlamp shapes) has established that individual design elements of vehicles can function as trade marks.
3. The applied-for sign includes a unique star-patterned mesh (referred to in the market as the "diamond grille"), distinct from the sector norms such as trellis or honeycomb designs. 
4. The circular element and tapering bar form a distinctive overall composition which contributes to brand recognition.

The Board's Decision

In quite a concise decision, the Board actually agreed with Mercedes that its appeal was well-founded, for the following reasons. 

In order for the Mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to indicate the goods and services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings (29/04/2004, C-456/01, EU:C:2004:258). There is no requirement, however for a specific level of artistic creativity or imagination - even a minimum degree of distinctive character is sufficient (19/09/2001, T-335/99, EU:T:2001:219).

In this case, the relevant consumers of the radiator grilles being sold by Mercedes are specialists, and particularly motor vehicle workshops, whose level of attention is increased on account of their knowledge and professional experience, and account must be taken of consumers across the whole EU given that the Mark does not contain any word elements (08/07/2009, T-28/08, Bounty-Riegel, EU:T:2009:253).

Because the Mark consists of a depiction of the product itself, it could only be registered if it departs significantly from the norms or customs of the sector (13/09/2018, T-184/17, EU:T:2018:537).

The Mark shows the stylised representation of a radiator grille consisting of a mesh similar structure in the form of an elongated rectangle with oblique narrow sides, and a circular element, which is placed centrally on this structure and inserted into a central strip, the ends of which tapers towards the outside. The Board considered that although individual elements of the Mark's design may not be distinctive on their own, the specific combination in this case (a mesh grille structure, central circular emblem area, and a uniquely shaped central bar) creates a distinctive overall impression, and the totality of the Mark may still be perceived by consumers as indicating commercial origin. 

The Board concluded that the mark met the required threshold of distinctiveness and annulled the examiner's refusal. 

It's GRILLE Kat, not GRILL!

Comment

This decision reaffirms the nuanced approach taken by EUIPO bodies when assessing product shape marks and design-driven signs. It also highlights that in sectors such as automotive, where consumers may develop strong associations between specific design elements and particular manufacturers, the threshold for distinctiveness can be met even in the absence of overt logos or text.

While the Board declined to consider the alternative claim of acquired distinctiveness (under Article 7(3) EUTMR), its finding that the mark possessed inherent distinctiveness will be welcomed by applicants seeking to protect design elements that play a key role in brand identity.