An imaginative sign for smart houses qualifies for EU trade mark registration

On 23 April, the Second Board of Appeal (BoA) of the EU Intellectual Property Office (EUIPO) allowed a figurative sign, which Open Home Foundation (applicant) had sought to register. The EUIPO Examiner had initially refused to register the sign under Article 7(1)(b) of the EU Trade Mark Regulation (EUTMR) due to lack of distinctiveness, but the BoA reversed the decision.

Background

On 18 March 2024, the applicant filed an application to the EUIPO to register the following sign as an EU figurative mark in Classes 9 and 42 of the Nice Classification.

On 7 October 2024, the EUIPO Examiner refused registration due to lack of distinctiveness under Article 7(1)(b) EUTMR. The Examiner argued inter alia that the relevant sign could not convey a trade mark message as it (i) was simply a banal figurative element which did not diverge significantly from how the intended goods and services – specifically smart houses – are commonly depicted, and (ii) merely represented the common USB symbol, in a commonplace shape of a house.

The common USB symbol the Examiner referred to

The applicant appealed to the BoA.

BoA decision

According to the applicant, there are “clear and sufficient differences” between the sign at hand and the common illustration of the USB symbol. More specifically, the applicant emphasised that the USB symbol has a centreline with inclined lines on both sides, and at the end of all three lines there either is a circle, a triangle, or a square. By contrast, its sign has a centreline with straight lines attached to both sides which all end with circles. The Board agreed with the applicant’s stance, making the same comparison and further stating that the applicant’s sign resembles “stylised tree branches”, rather than the common USB symbol.

Moreover, the applicant referred to some other, arguably simpler, signs that had previously been registered as EU trade marks fort smart houses, and claimed that registering those while refusing registration of the sign at hand would be in breach of the principle of equal treatment.

Some of the registered EU trade marks for smart houses that the applicant referred to in its appeal

Finally, the applicant considered that, although its sign does not exhibit a “particularly high degree of artistic creativity or imagination”, it is nonetheless “imaginative and catchy”, which renders it distinctive – at least to a minimum degree – and thus eligible for registration as an EU trade mark.

The BoA first highlighted that excessively simple signs which merely feature geometric figures or lines are not capable of distinguishing the goods and services of one undertaking from those of another, and therefore it must be demonstrated that such signs have acquired distinctiveness through use in the EU in order to be registered as trade marks. The Board also noted that the relevant criteria for assessing the distinctiveness of a sign include an evaluation of whether the relevant public – which, in this case, consists of both the general public and professional consumer with specialised knowledge of smart houses – can recall the sign and associate it with the relevant undertaking upon seeing it on the relevant goods or services.

Interestingly, however, after emphasising these points and giving the impression that it would side with the Examiner, the BoA ultimately concluded that the sign at hand meets the minimum degree of distinctiveness required for registration. In reaching this decision, the Board focused primarily on other smart house providers’ signs and trade marks, and found that they use sufficiently different representations. As such, it determined that there is no “uniform symbol” commonly used to depict smart houses.

The Board also underlined that, even if the applicant’s sign did consist of a common, banal representation that has become a customary sign in the smart house market, this should have been dealt with under Article 7(1)(d) EUTMR, rather than Article 7(1)(b).

In light of all these, the Board decided that the sign should be allowed registration as an EU trade mark as it contains features that allow the relevant public to “memorise it as a trade mark” when encountered in relation to the relevant goods and services – instead of perceiving it as a banal, non-distinctive USB symbol placed within a commonplace house shape. Accordingly, the case was remitted to the Examiner to continue the registration procedure.

Comment

A Kat in her smart house

This Kat agrees with the decision of the BoA: trade marks do not need to be original, creative, interesting, or even “catchy”. Sometimes banal, meaningless words, simple colour combinations, or drawings consisting of a few lines do qualify for registration.

The Board also rightly distinguished Article 7(1)(d) EUTMR from Article 7(1)(b). Since the Examiner’s justifications were primarily focused on the common use of highly similar signs in relation to smart houses, it would have been more appropriate – and perhaps even more persuasive – if the Examiner had refused registration on the grounds of the customary nature of the applicant’s sign under Article 7(1)(d), rather than attempting to demonstrate its non-distinctive nature.

Image credit: Imagen 3